When Bill Lawson decided to name his Burnaby metal shop Metallica Manufacturing, he had no idea it would lead to years of legal headaches involving the heavy metal band with the same name.
"It was a very innocent choosing of such a name from a 12-year-old kid," Lawson said, amidst the loud clanging in his Burnaby metal shop.
According to Lawson, the company chose the name in the late 1990s, when the bookkeeper's young niece suggested the name Metallica. The heavy metal band with the same name was already around at that point, but "Metallica" seemed fitting for the Burnaby shop, which does custom metal work. The shop operated under the name for four or five years, Lawson said, but the legal troubles started when they tried to register a domain name online. That's when the band's lawyers started lobbying the shop to change its name.
"They just didn't want us to use the name," Lawson said.
After several years of this, Metallica (the metal shop) filed a trademark application for the word Metallica on Aug. 9, 2008, seeking to use the name with the following services: custom metal fabrications, welding and machining. On July 9, 2009, Metallica (the band) started an opposition proceeding in the Canadian Intellectual Property Office, in an attempt to stop the metal shop from registering its Canadian trademark on multiple grounds - mainly that the name would be confused with the band's trademark. According to Dean Palmer IP Law, the firm representing Lawson, the Canadian Intellectual Property Office reviewed evidence from both sides and concluded that there was no likelihood of confusion between trademarks for the metal shop and the metal band. More than three years later, on Sept. 25, 2012, the office rejected the band's opposition, leaving Metallica, the local shop, free to continue pursuing its trademark application.
It's a partial victory for Lawson but he's not boasting, he just wants to work in peace.
"This is not a gloating issue," he said. "We just want to be left alone."
Lawson's lawyer Dean Palmer, who specializes in intellectual property rights, said the firm sometimes gets these "David and Goliath cases."
"The band, they've been around a long time, as a heavy metal band I guess from the early '80s. They are very clever at merchandising, so I guess you could say assertive if not aggressive with their intellectual property rights," Palmer said.
According to Palmer, copyright is a "big issue" because the Canadian government recently brought in the Copyright Modernization Act, which he said tends to mirror U.S. copyright laws, giving plaintiffs a bit more power.
"The band has been pretty big on this, and they've been threatening this little Metallica Manufacturing workshop for many years, before I came onto the case," he said.
Lawson estimated he's spent thousands on legal bills during the past 10 years or so.
"We just want to be able to carry on and use the name. The whole city knows us," he said.
Lawson, originally from Australia, is handing the shop over to his 24-year-old son Dan, who was young when the name Metallica was chosen. Later in life, Dan started listening to the band and has attended their concerts.
"I appreciate the music and what they do, but at the same time do they even know about them actually coming after us or is it their team of lawyers?" Dan asked. "The lawyers we are dealing with are Canadian lawyers, and those lawyers are based in Toronto, and it could be that the band knows very little about what's going on. Up until this last decision, this was a major decision, to let this tin-pot company win this verdict across the country. Now if that's the case, surely that news would have gone back to the band."
The NOW tried contacting the band's legal representatives, but calls were not returned by press time.
Republished from the Burnaby NOW
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