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This entry was posted in Joel Osteen Bio and History on July 30, 2005 by Admin.
HOUSTON -- America's largest church celebrated its move into the former arena for the Houston Rockets with a capacity crowd of 16,000, an upbeat sermon from its televangelist pastor and a spirited welcome from the governor of Texas.
"How do you like our new home?" Lakewood Church pastor Joel Osteen asked to thunderous applause. "It looks pretty good doesn't it? This is a dream come true."
The new home for the nondenominational Christian church is the former Compaq Center, once home to the Rockets.
There were no vacant spots in the arena as Lakewood, which recently became the first church in the United States to average more than 30,000 worshippers weekly, held its first service there Saturday night. The service also was televised live.
Gov. Rick Perry praised the church's new look and told the crowd, "As lawmakers we do a lot of things, but only the church can teach people to love.
"This is nothing short of amazing," Perry said. "It is so great to look across this crowd and see the wonderful diversity of this great state we call Texas."
It took more than 15 months and $75 million to complete the renovations - which included adding five stories to make more room.
"I couldn't believe how beautiful it was," Osteen said afterward when asked to describe how he felt when he first entered what he called the "Texas-sized" sanctuary. "It almost felt surreal."
Video clips playing on three gigantic screens showcased the building and recounted the history of the church. One video recalled the church's humble beginnings in an abandoned feed store in 1959 and traced Osteen's rise to the pulpit after his father and church founder, John Osteen, died 40 years later.
Osteen took over the church in 1999 and has increased the size of the congregation almost five-fold since then. His book, "Your Best Life Now: 7 Steps to Living Your Full Potential" has sold almost 3 million copies.
The service was highlighted by a 25-minute sermon by Osteen, who told the crowd that he and his wife, Victoria, went on their first date in the arena 19 years ago.
The crowd roared with approval throughout the message and was often brought to its feet as Osteen spoke in front of a large golden-colored globe that rotated slowly.
Members of the choir swayed happily, belting out several different songs below pictures of a crisp blue sky with puffy white clouds.
While collection plates were passed, video messages from people around the world, including Pastor T.D. Jakes of the Potter's House in Dallas, welcomed Lakewood to its new location.
"It is overwhelming, unbelievable, fantastic," Ann Bell, one of the church's original members, said after the service. "Words can't even describe it."
This entry was posted in Joel Osteen News Items on July 26, 2005 by Admin.
because, you know what, God deserves the best."
hopes to soon save souls.
For the full Joel Osteen story with pictures.
This entry was posted in Joel Osteen News Items on July 22, 2005 by Admin.
Is Joel Osteen A Fake?
So is the smiling preacher Joel Osteen a fake? Tough call on what constitutes fakery.
Does he have an "agenda" to convert everyone to Christianity?
Does he want to impose his religious views on everyone else, a type of religious imperialism?
Is it his goal to build a religious empire?
Is he in it just for the money?
Is his laid back approach some kind of front to appeal to the more secular audience?
Does he preach one thing and act another way off camera?
To paraphrase a line from his interview with Larry King -- I really don't know what's in his heart. That's between him and his big "G" god. If Joel Osteen is a fake then that's his problem and he'll get the whammy at some point. Heh, now that's my non-Christian view.
In my opinion, I do believe he is sincere in what he preaches. At least that's the vibe I get from him. All the other religious TV screamers seem to be these thin-lipped, glossy-eyed, grinning mechanoid zealots who give me the jeebies. Joel is really laid back. That's cool.
I've been watching Joel on TV for about a year now and I wanted to see what he was like at one of his rolling preacher shows.
more and step back again.
forceful enough to condemn other religions. And for that he gets slammed so he has to issue an apology.
I don't think Joel Osteen is a fake. I just think he's a nice guy.
This entry was posted in Joel Osteen Impressions, Larry King Interview on July 19, 2005 by Admin.
Here is a letter that was posted on the JoelOsteen.com site after the Larry King interview.
Jesus declared in John 14; I am the way, the truth and the life. No one comes to the Father but by me. I believe that Jesus Christ alone is the only way to salvation. However, it wasn't until I had the opportunity to review the transcript of the interview that I realize I had not clearly stated that having a personal relationship with Jesus is the only way to heaven. It's about the individual's choice to follow Him.
This entry was posted in Larry King Interview on July 13, 2005 by Admin.
Here is a transcript of the interview originally aired June 20, 2005.
and wait until you hear what he had to overcome to do it. Pastor Joel Osteen is here for the hour. We'll take your calls. It's next on LARRY KING LIVE.
published called "Your Best Life Now Journal," a guide to reaching that full potential. Joel Osteen is pastor of Lakewood Church in Houston, Texas. His father before him. He has been called the smiling preacher. We met.
KING: Long ago with your father.
OSTEEN: We did. We met at a charity event for the Heart Association down there with Dr. DeBakey, I believe, or Dr. Cooley (ph).
KING: Dr. Cooley -- about seven, eight years ago.
just made his day. We didn't meet for 10 seconds, but he loved you.
my father died, I just knew -- I don't know how to explain it, it sounds kind of odd, but I just knew down to here I was supposed to step up to the plate and pastor the church. And it was odd because I had never preached before. But I just knew I was supposed to do it.
KING: Did it come easily?
OSTEEN: It did. It came -- it came somewhat easily. I had to study. I was nervous. Still get nervous. But it did. I believe God gives you the grace to do what you need to do. And the great thing about it is the people were so loyal to my father. They wanted one of his sons to take over. And daddy had never really necessarily raised anybody up under him.
KING: What do the other sons do?
OSTEEN: Well, my brother Paul is a surgeon and he works with us there at the church. He gave up his practice to work with us and I have other sisters and brothers that work, as well.
KING: Is -- have you always believed?
OSTEEN: I have always believed. I grew up, you know, my parents were a good Christian people. They showed us love in the home. My parents were the same in the pulpit as they were at home. I think that's where a lot of preachers' kids get off base sometimes. Because they don't see the same things at both places. But I've always believed. I saw it through my parents. And I just grew up believing.
lot more of that. But, you know, I just -- I don't believe in that. I don't believe -- maybe it was for a time. But I don't have it in my heart to condemn people. I'm there to encourage them. I see myself more as a coach, as a motivator to help them experience the life God has for us.
KING: But don't you think if people don't believe as you believe, they're somehow condemned?
there is condemnation but I don't feel that's my place.
KING: You've been criticized for that, haven't you?
OSTEEN: I have. I have. Because I don't know.
KING: Where were you ordained? OSTEEN: I was ordained from the church there, Lakewood, under my dad's ministry.
KING: So you didn't go to seminary?
OSTEEN: No, sir, I didn't.
KING: That's kind of an easy way in.
KING: Are you a pastor? A reverend? Legally what are you?
OSTEEN: I'm a reverend and a pastor. A pastor of the church. I go by usually pastor.
KING: You can marry people?
KING: So the church in a sense ordained you?
OSTEEN: Right. And then you're ordained through the State of Texas.
KING: How'd it grow so much?
OSTEEN: I don't know, Larry. I don't know if there was one thing. I think part of it was my dad had such a great foundation. Then all of a sudden here comes somebody 40 years younger, just new energy. New life.
You know. I think one thing is my dad had a television ministry to start with. So all of a sudden here I was 36 years old and I was on television. Well, most young men that age, they're building a congregation and it costs a lot of money to be on television and all that. So all of a sudden there was a young minister across America. So I don't know if it's part of that. I think part of it is the message of hope and that I'm for people.
OSTEEN: We are, we are.
OSTEEN: He was Southern Baptist. But he left that way back in the early '60s. And then he just started Lakewood Church. And we've always been independent and just for everybody.
KING: Many evangelists feel that the church, the church itself, the religion, has failed. You share that view? OSTEEN: Well, I think in a sense when you see certain things in society you would think that. But in another sense I see faith in America. Faith in the world. At an all-time high today. When I was growing up it was a big deal to have a church of 1,000. Now there's churches of 10,000. So many of them. So I think in one sense I can agree with that point. But in another sense I see a real spiritual awakening taking place.
KING: How many people come to your church?
OSTEEN: We have about 30,000 each weekend.
KING: How do you hold them?
OSTEEN: We have multiple services. It holds 8,000. But we're about to move into a new facility. But we just do a lot of services.
KING: You work all day Sunday?
OSTEEN: We do. And Saturday. We do one Saturday night and then four -- three Sunday and one Spanish. So it's a lot of work.
KING: You write all your own?
OSTEEN: I do. I do all my own research and do all my own service.
KING: And when are you on television?
OSTEEN: We're on different times. We're in the top 25 markets on one of the network stations.
OSTEEN: Yes, sir. Usually Sundays.
KING: Are you asking for money?
OSTEEN: We never have. Never have. Since my dad started. I started a television ministry for my father back in '83. That was one decision we made. We just don't ask for money. We never have, we never will. You know, it's -- I don't criticize people that do. Some of them have to. But I just, I don't want anything to pull away from the message.
KING: How do you get the money to get the time on television?
OSTEEN: The church supports it.
KING: How does the church get the money?
OSTEEN: Well, they just give. There are just a lot of them, they're faithful, they're loyal people, they believe in giving. And the other thing too, what's interesting, Larry, we don't ask for money on television. But people see your heart. People send in money like you wouldn't imagine to underwrite it. KING: Really? Without your ever saying order this medal?
OSTEEN: Exactly. It's a testament to, you know, I think if people can see your heart is right. I'm certainly not the only one. But I don't get on there and beg for money. People send it in. You'd be amazed.
KING: Do you think there's too much of that, send in this, my new book is out?
sometimes I think, you know. I would -- I think people get on and they have to make the television audience underwrite it. And then they spend their time doing that.
KING: So it's self-fulfilling. Billy Graham was here last Thursday.
KING: Might have been his last interview. Is he a hero to the evangelists?
OSTEEN: He is a hero to us all. His life of integrity. Somebody that can stick with for that long and just stick with his message. What I love about Dr. Graham is he stayed on course. He didn't get sidetracked. That's what happens to so many people today. It's a good lesson for me, a good example for me to say, you know what, Joel, you may have a lot now but I want to be here 40 years from now sitting with you.
KING: Do you share Billy's beliefs of life after death in a sense of going somewhere?
OSTEEN: I do. I do. We probably agree on 99 percent. I do. I believe there's a heaven you know. Afterwards, there's, you know, a place called hell. And I believe it's when we have a relationship with God and his son Jesus and that's what the Bible teaches us. I believe it.
KING: Our guest is Joel Osteen. The senior pastor for Lakewood Church in Houston, the author of "Your Best Life Now," amazing bestseller. We'll be right back.
you do than from what you say. Like that old saying, I'd rather see a sermon than hear one anyday.
And when you are tempted to compromise and just take the easy way out, I challenge you to think generationally. Know that every right choice you make you are making it a little bit easier on those that come after you.
KING: Our guest, Joel Osteen. Why do you think "Your Best Life Now" did as well as it did?
KING: There's a lot of books about improving yourself.
our society today. There's so much negative. Most of my book is about how you can live a good life today in spite of all that. So I think that had a big part of it.
KING: But it doesn't quote a lot of biblical passages until the back of the book, right?
of the scriptures that talk about that. But same principal in the book.
OSTEEN: We do have rules. But the main rule to me is to honor God with your life. To life a life of integrity. Not be selfish. You know, help others. But that's really the essence of the Christian faith.
OSTEEN: I don't know. What do you mean by that?
done in your life, you ain't.
KING: The Senate apologized last week for slavery. You think the Southern Baptists and a lot of the churches in the South owe some apology, too?
OSTEEN: I've never thought about it. Because I just didn't -- wasn't raised in it.
KING: But you know its history.
OSTEEN: Oh, absolutely. I think that it would never hurt; anything we could do to make amends, the better it can be. That's what I love about our church. It's made up of all different races. That's what life should all be about. That's what God wants it to be.
OSTEEN: Yeah, absolutely bothers me. It's not right. It's a shame, and I don't know how they could do it with a pure heart to God but, you know what? It happened.
OSTEEN: I think the prosperity gospel in general is -- well I don't know. I hear it too. I don't know. I think what sometimes you see is it's just all about money. That's not what I believe. It's the attitude of your heart, and so you know, we believe -- but I do believe this, that God wants us to be blessed. He wants us to be able to send our kids to college, excel in our careers. But prosperity to me, Larry, is not just money, it's having health. What good is money if you don't have health?
KING: Also many in the Christian belief are wary of too much material, aren't they?
OSTEEN: Yeah, I think some of them are. But to me, you know, I hope people get blessed if they can handle it right. Because it takes money to do good. You know to do things for people. To spread the good news. So I think it's all a matter of your heart.
KING: You think other preachers are envious of you?
OSTEEN: If they are, I don't feel it. I've got so many good friends. And the ones I know are encouraging me. I don't hear anything but good things from them. I hope they're not. Because we're all in it together.
KING: You want to do this the rest of your life?
OSTEEN: I do. I do. I know it's what I'm called to do. I feel like this is why I was born. Even though I never dreamed I'd be doing it. But I know now I never dreamed I'd be able to get to help people like this. I never dreamed it was in me. I didn't know I could get up to speak in front of people and impact people's lives. I didn't know I could do that. I was shy.
KING: We'll get to those seven steps in a minute. We'll be taking your calls, as well. Don't go away.
KING: We're back with Joel Osteen. The book "Your Best Life Now" a major bestseller. "Seven steps to living at your full potential." The new one "Your Best Life Now, A Journal." It's a guide for the earlier book, right? You used it as a compendium, in a sense. OSTEEN: That's exactly right. It's just something to put your notes in. Kind of help you get along there.
KING: Don't you ever doubt?
OSTEEN: No. I don't -- I wouldn't say that I do. I guess I do and I don't think about it too much.
KING: Didn't you say what? Why?
KING: The people in the building didn't have free will.
KING: But don't you want to know, why would an omnipotent -- assuming he is omnipotent -- God permit that?
OSTEEN: I don't know, Larry. I don't know it all.
KING: A deformed baby had nothing to do with free will.
tell people that have lost a child or that have gone through some kind of tragedy, you've got to have a file in your mind called and I don't understand it file. And you've got to put it in there and not try to figure it out and not let it ruin the rest of your life and not get bitter. And that's what we see so many people do.
KING: But you're not asking for blind faith. Don't you want people to question?
OSTEEN: Oh, I do. I think you do at a certain point. But I don't think you can let something ruin -- I've seen too many people angry at God and they live the rest of their life that way. You've got to say God, I don't understand why this happened to me but I'm going to move on. The worst thing we can do is wallow around in self- pity. I talk in the book, too, about letting go of the past. I know it's hard. I'm making it sound easy, it's not. But sometimes you've got to say I don't understand it. We were all praying for my dad. He was 77 when he died. You'd think we've got a church full of people praying but I don't know. It was probably his time to go, obviously. But I don't understand until (ph) some of the others.
KING: Do you ever involve politics in the sermons?
KING: Never mention President Bush?
difference in your life. So I don't go down the road of condemning.
KING: Noah had an ark and Adam and Eve?
OSTEEN: I do. I do. I believe that. I believe it all.
OSTEEN: It is. But it's also hard, too, to look at our bodies and say, my brother's a surgeon, how could our bodies be made like this? We couldn't have just come from something. It's just hard, when my child was born I thought seeing him in the little sonogram I thought look at that. He's got eyes. How is that developing? It's just, I don't know. I look at it like that.
KING: The book describes seven steps to living at full potential. I want to ask you about -- Choose to be happy. Now, how the heck do you do that?
OSTEEN: Well, I think, Larry. It's just an attitude we've got to get up and make a decision every single day. I mean, what so many people today do, they focus on what they don't have instead of what they do have.
a tough situation, but this is where God has me and I'm going to make the most of it. And I think that that's where so many of us miss it today. We're waiting to be happy one day.
KING: How about the Eastern philosophy that says you're not entitled to today. Today is a gift. So -- it doesn't matter if it's raining. It's a beautiful gift today.
OSTEEN: I've not heard it. But I'd degree with it.
KING: You aren't entitled to today.
waste you know, just because I don't get my way or something happens.
KING: Another seven steps -- one of the seven steps is live to give, charity is, in the Talmud, the greatest thing of all.
OSTEEN: Yeah. I believe it is. I believe that's the whole spirit of Christianity is, you know, having a lifestyle of giving. Not giving at Christmas, not giving every once in awhile but having an attitude to give. I've always said this, if you'll get up and make it your business to make somebody else's day, God will make your own day.
or thinking about how I get ahead in my career. And certainly we want to do some of that. But we need to get up and focus on others.
KING: Find strength through adversity. Bad is good.
OSTEEN: Well, I think the way I believe that god won't let something come into your life unless he's going to use it for your good. Now you've got to keep the right attitude for that to happen. But that helps us in our struggles to, say you know what? God's going to get something good out of this. This is a tough time but I'm just going to believe, I'm going to trust. I may not see it for a year or five years but I believe it's going to turn around. And a great example is in my dad's death. My dad and I were best friends. Worked with him for 17 years. I told before my wife I don't know what I'm going to do when my dad dies. I loved him. We were good friends. But when my father died the darkest hour of my life is when I felt that stinging here, that I was supposed to step up and preach.
So I see how in my darkest hour something new was born. I believe that God always opens up a new door.
KING: Do you know you're getting through to people? Billy Graham used to know it because they came down and gave themselves to Christ. How do you know?
OSTEEN: I feel the same way. I can see it there in the church when I see my book do what it did. And when we go to arenas across the country and every one of them's been sold out. Its just, you know, we get thousands of letters and stuff. And you know, I feel like we are, you know. I feel like we're making a difference.
KING: We'll be right back. We'll include your phone calls for Joel Osteen, senior pastor of the Lakewood Church in Houston. Reportedly the largest, fastest growing congregation in the United States and the author of "Your Best Life Now" and now "Your Best Life Now Journal." Don't go away.
OSTEEN: And there's nothing the enemy would love any more than for you to go around thinking about your faults and weaknesses, all the mistakes you made last week and all the times you messed up last month.
you used to be. And we all make mistakes. But you know what? You need to learn to just be quick to repent. Say God, I'm sorry, forgive me. Help me to do better next time.
KING: We're back with Joel Osteen, the pastor of the Lakewood Church in Houston. The author of "The New York Times" best-seller "Your Best Life Now." He's been called the smiling preacher. You like that?
OSTEEN: It doesn't bother me. I like it.
KING: You do smile a lot.
Fontana, California. Hello. CALLER: Yes -- Joel?
CALLER: I have a question for you. We're a small congregational church here and we'd like to come and see you next month, but you charge to get in and we're a very poor congregation. Why do you charge to get in to your appearances?
KING: You charge at the church?
OSTEEN: No, no, never. Never.
The only reason we did is because when we went New York to Madison Square Garden they wouldn't let us do an event without doing a ticketed event because of the crowds. We sold it out two nights and we turned so many people away in Anaheim and Atlanta, it was just a shame to do that.
Hey, you know, you need to write the church, because we'll make a way that anybody can get in to those events. I don't like charging.
KING: To Milford, Delaware. Hello.
CALLER: OK. I heard years ago that your mother was healed of cancer. Do you know why it's not God's will that everyone is healed of cancer?
KING: Do you wonder, though?
KING: So, you've never had an answer to why he lives and he dies.
that same mercy on their lives and we've seen it happen. And you know there are others that don't.
KING: How do you balance the personal appearances with the church?
KING: Are you out every week?
OSTEEN: No. We went -- we're out 20 weeks this -- or 20 dates this year, but like 15 weeks.
KING: Like concert tours dates?
OSTEEN: Exactly. Just like that.
KING: You're in big arenas?
OSTEEN: Big arenas. Big arenas.
of a thousand, or 5,000 or 10,000 and finally I said, "Let's get a basketball arena and we'll turn off the top, you know, the top lights if nobody shows up. We did it in Atlanta and the building was filled up, you know, an hour before and hey had to shut it down. So, you know, God's blessed us.
KING: Do you get a lot of young people?
OSTEEN: Yes, lots of young people. It's good. A lot of young people.
KING: Studio City, California. Hello.
CALLER: Hi, my name is Tricia (ph), Joel. How are you?
OSTEEN: Good, thank you. CALLER: Good, thank you. I was just interested in finding out: You're such a busy man, how do you juggle family and your personal life and what do you like to do for fun?
life. I don't -- it's a big church but I have a good staff. I don't -- unfortunately I don't do the weddings and the funerals and a lot of things that a pastor of a smaller church does.
So, I just -- you know, I made a decision that I don't want my kids to grow up and not know me just because I'm so busy and on Dr. Graham talks about that -- I just I stay at home.
KING: How have you handled fame?
OSTEEN: You know, I never think about it. I never think about it. I don't feel like I changed at all. I haven't changed my routine. I haven't, you know, I don't -- I guess the main thing: I feel a bigger responsibility. I spend plenty of quiet time in the morning searching my heart, staying on the right course and just staying humble before God.
KING: Not let it get to you?
OSTEEN: Not let it get to your head.
Because I've seen too many.
They've been where I am and way past and they've come falling down.
KING: Many people have been calling here telling me -- asking about your schedule. Is it printed anywhere? You know, when you're appearing?
OSTEEN: Yes. It can be on -- it's on the Web site.
OSTEEN: That is JoelOsteen.com. I guess just my name dot-com, I think.
KING: OK. You just go to JoelOsteen.com.
OSTEEN: Yes. They can get it.
KING: And you get the schedule.
OSTEEN: Exactly. We're going to be in Anaheim and back to Madison Square Garden. We have quite a few more dates this year. Love to have people come out.
KING: Do you ever use a show business term: Bomb? In other words, do you ever not connect? Are you ever speaking and like a third of the way in saying, "I don't have 'em?"
OSTEEN: I think so. I think so.
KING: Can't be perfect all the time.
and say, "Man, that was great today."
And sometimes, you know, you're looking for a little bit of feedback and if you don't get -- but I just try to stay focused, say, "you know what, I believe this is what I'm supposed to be doing." I'm not perfect.
KING: What do you wonder about the most? Now, I mean, you accept things as they are: He gets cancer, she doesn't. What do you -- what though, boggles your mind about this world?
OSTEEN: What do I wonder about? You know what, Larry?
KING: There's no great searching?
KING: Or on going problem?
KING: Let's take depression, it affects over 20 million people.
times, it's an attitude and it's that we've gotten so focused on, like I said, ourselves and things like that. So, I don't know, Larry. I don't have any great wonderment.
KING: "Let Go of the past," is another one of your seven steps.
That's not easy to do, since the only thing we have right to this minute is our past.
KING: You think we choose to be angry? OSTEEN: I think we do. I think we do and over time it becomes a habit and all of a sudden, you know, we think that's just who I am.
No. That's who we've developed into being, because I don't think we have to be like that.
KING: Back with more of Joel Osteen.
More of your phone calls right after this.
day and they rushed to the pearly gates and they said, "St. Peter please tell us: Is Jesus white or black? we've been arguing our whole lifetime."
About that time Jesus walked up and said, "Buenos dias."
that you can wear. You wonder why Victoria and I have a great relationship? It's called Victoria's Secret.
KING: Good line. Houston, Texas, hello.
CALLER: I was just wondering what Joel -- hi, Joel. I just finished your book on Saturday. Actually it was audio that my sister sent me two weeks ago and I think it's the best thing I've ever listened to in my life, and I just wanted to thank you. But my question was, I was wondering how old you were?
OSTEEN: I'm 42 years old.
people? And do you get nervous?
KING: It's only been six years, though?
KING: Grand Forks, North Dakota, hello.
CALLER: Hey, I was calling -- I'm Jerry Lundabee (ph). I attend Bible Baptist Church in Grand Forks, North Dakota, and one of my -- I have a few questions here. I wonder if you might entertain all of them. My first question was -- is, do you believe that the bible is God's inspired word? I haven't heard you answer that question yet.
KING: And your second question is what?
CALLER: My second question would be -- I don't know -- I heard him talking a little bit ago about how he sees faith getting stronger in America and across the world, and I believe that it's the opposite, that -- we're seeing higher rates of divorce, higher rates of drug and alcohol use among young people, and old, and with abductions, and things like that getting worse and worse.
KING: What do you think, Joel? First, inspired word.
that seats 16,000 people? I mean, people are hungry for hope and encouragement.
KING: But there's never been more division than now in the United States, politically, certainly.
KING: You're a glass-half-full, right?
OSTEEN: I am. I see, like I said, you look back 10 years ago, there was, you know, not that many churches that had over 1,000 or 5,000 people. It's a different day today.
KING: We'll be back with more, and later, in a little while, we'll met Mrs. Osteen. Don't go away.
ever sink down to their level. Don't try to argue. Don't try to pay somebody back. Don't give them the cold shoulder. Be the bigger person. Overlook their faults. Walk in love. Learn to even bless your enemies.
Somebody's talking about you. Somebody's doing you wrong. Just bless them and move on anyway. Let me tell you, in the long run, crows can't hang with eagles. You do that and you'll rise above all that junk.
KING: Hillsboro, Wisconsin with Joel Osteen. Hello.
friend recently, and he said he believed that Lucifer was going to be the last one to enter heaven after the rapture because he believed that God is a forgiving god, and even Lucifer will be forgiven. And that just blew me away. And I wondered what your thought would be on that.
KING: I asked Reverend Graham if god loves the devil. Didn't -- couldn't -- he'd never been asked it before.
OSTEEN: I never thought of it either. I don't know.
OSTEEN: I don't know. I'll leave that for Dr. Graham.
look at your heart, and only god knows that.
KING: You believe there's a place called heaven?
OSTEEN: I believe there is. Yes. You know, you've had a lot of the near-death experiences and things like that. Some of that is very, to me, not that you need that as proof, but it shows you these little kids seeing the angels and things like that.
KING: We'll take a break, and when we come back, the better half, Victoria, will join us. Don't go away.
treating them. If you will begin to treat them differently, then you will get a different response. In other words, say your spouse isn't giving you enough love. They're ignoring you. They're not being kind and considerate to you.
Well, see, human nature is to give them a taste of their own medicine, to treat them the same way. But when we do that, we're just going to continue to reap what we're sowing.
(COMMERCIAL BREAK) KING: Joining us now in our remaining moments -- the screen obviously improves -- Victoria Osteen, Joel's wife. How'd you two meet?
V. OSTEEN: In my family's jewelry store. He came in to buy a watch battery. And I sold him a watch. And he says, I've been taking his money ever since.
KING: When did you get into the preaching business? We saw that clip of you?
V. OSTEEN: Well, when Joel went through the transition after his father died, I just -- he wanted me to take part in every service. So I do. I take part in every service. I do just a little encouraging piece. And then, this is my fourth Mother's Day message to bring. So that was on Mother's Day.
KING: Why do you want her in?
OSTEEN: Well, one, she's fantastic. And you know, she just has so much to give. And two, I think it increases our whole reach, to be a team, to do it together. I mean, here's some young people that are excited about God, and you know, there's not a lot of women in the, you know, ministry.
KING: Were you always a believer?
V. OSTEEN: Yes, I was raised as a believer, yes.
KING: What happens when you -- do you two disagree?
V. OSTEEN: Sure. We agree to disagree sometimes, you know.
KING: You ever disagree on biblical philosophy?
V. OSTEEN: We've been married 18 years.
KING: He looks 15 and you look 22.
V. OSTEEN: Oh, OK. Golly, you're younger than me. I'm going to have to do something about that. What I was going to say was, what he speaks every week is exactly the way he lives. It's the way he's always lived.
KING: There's no phony here?
KING: I'll bet you do sometimes.
V. OSTEEN: Well, you know what? I've gotten better. I've gotten better living with him. You can't do a whole lot of judging around our house. You'll get in trouble.
KING: (INAUDIBLE) drive you crazy? He's nice. I like him. He wasn't so bad. Don't hang up. He's nice.
V. OSTEEN: He's nice. He's real nice. And he always is nice, but I'm getting nicer. And I like myself better.
KING: What did you think about the Victoria's Secret sermon?
V. OSTEEN: I thought it was probably we all needed to hear that. We can all do better.
KING: Did you think twice before saying go to Victoria's Secret, to prop up the marriage?
OSTEEN: I thought about it, because I write my sermons, and I knew I'd get some letters. But I thought it kind of made the point. And I liked it. And I don't know if it was worth all the heat, but it was fun.
KING: Was there a hush in the crowd?
OSTEEN: No, they laughed. They were dying with me, so.
KING: The natural scheme of life is temptation. It's in front of you every day.
KING: Have you ever been tempted?
OSTEEN: Absolutely. I think we all are, you know. But you have to resist, and you have to keep your mind and your thoughts pure. But I think we all are. And the Bible talks about, you've got to pray to not enter into temptation. It doesn't say to pray that you won't be tempted. We all are.
KING: Had a near slip?
KING: You get tempted to?
V. OSTEEN: Yeah. I eat that pie when I know I shouldn't.
KING: I'm not talking about that kind of temptation.
V. OSTEEN: No, no. Sexual temptation?
V. OSTEEN: No, no. I don't. I don't put things in me which, you know, like a lot of times you can watch a lot of things and you can put things in your mind as a seed, and they can give birth to that kind of thing. But we really try to guard what we watch. We guard what we -- what we allow to come in. And you know, I think that's a lot of it. You have to guard your mind.
KING: Do you think your children have pressure on them to growing up with a famous pastor?
OSTEEN: I don't think so. I mean, maybe they do.
KING: Do you want them to be in the church?
OSTEEN: Oh, I would love them to do something. But I don't know what. Maybe they'll sing. Maybe they'll make movies. Maybe they'll do something -- maybe they'll be a minister. I don't know. But my father never pressured me, and we don't pressure ours. But I do like to expose them to it. Because to me, it's such an opportunity, and we just have such a heritage.
KING: Would you like to do some sermons, just you?
KING: Take a rest one week and why don't you do it?
OSTEEN: As often as she could. She is more than welcome. And she's great at it. And she does those (INAUDIBLE).
V. OSTEEN: He's so good, though, you know. I like to sit and watch him.
KING: All right, what makes a good evangelist?
has grown is because we've changed with the times. I mean, the music is upbeat. My message is what's going to help you during the week and things like that.
KING: What makes a good evangelist's wife?
V. OSTEEN: Helping him keep his focus. Complimenting him.
V. OSTEEN: I don't criticize, but I make suggestions.
KING: No, you don't know what he's going to say?
KING: You ever get tired of repeating it?
OSTEEN: It gets -- it's -- yeah. It's tiring physically.
KING: You do it five times?
OSTEEN: Yeah, it's physically tiring. But you know what, you just see the people out there, and it's like you said earlier, I realize this is the first time they've come this week. I've got to give it all I've got.
KING: What do you worry about the most?
V. OSTEEN: Probably my children. My children. I don't -- I'm concerned, you know. Because I'm a mother. And I want the best for them.
KING: It's not easy growing up.
V. OSTEEN: It's not. But you know, you have to trust. But I fight that. I fight, you know, not being so fearful, and I just -- but yeah, that's -- my kids.
KING: Do you have a doubt?
V. OSTEEN: I fight doubt, I do, sure. But I resist it. I try to change my thinking. Because it's kind of like this, Larry, you know, Joel says we can choose this. Well, it just makes you aware that there is another way. It makes you aware that there is a possibility. You know, if you've had a tragedy in your life, and you have someone like Joel telling you, you know, you can get over this, and this is how you can do it, you know, it just opens you up to see another way. And unless someone gives you another way to think, you'll never know. So I think that's where it comes, the choosing comes. It's to say, there is another option out there.
KING: You're going to win the award as the happiest people ever to be on this program.
OSTEEN: God bless you, Larry. My pleasure.
Preacher. And you can see why. And his number one "New York Times" best-seller "Your Best Life Now: Seven Steps to Living at Your Full Potential." The companion now published, "Your Best Life Now Journal," and Victoria Osteen, as well.
This entry was posted in Larry King Interview on July 12, 2005 by Admin.
I was channel surfing about a year ago when I happened to catch a glimpse of Joel Osteen on one of the local religious stations.
The first time I saw him I just zipped by the channel without giving it much thought. Just another one of those tele-evangelists pounding their view into us no good sinners. Nothing like a nice cheerful pick-me-up after a hard day of loafing about.
He reminded me a little of the fake faith healer Peter Popoff who years ago was deposed by magician James "The Amazing" Randi who used about $20,000 worth of electronic scanning equipment to catch Peter Popoff in the act of receiving "secret" information through a hidden earpiece. I thought that maybe Joel was Peter's son.
I remember making a remark about him to a co-worker. "Hey did you see there's another evangelist on TV? Some skinny guy with a southern accent. Just what we need."
From time to time I would see Joel as I clicked through the stations. I'd hear a few snippets of Jesus-this and Praise-God-that. Ho-hum. Then one day when I was clicking past the station I happened to hear the audience laughing. So I stayed on the station a little longer and heard Joel telling a couple of jokes. Not great jokes, mind you. Still, I was a little surprised since most of the TV evangelists seem to be angry and want to shout their views down your throat.
So I kind of hung around the station and found that Joel was pretty easy listening, even to a Secular like myself. He seemed to be more of a you-can-do-it sort of speaker, with a little bit of Scripture thrown in here and there. Not enough to make me roll my eyes -- just enough bible-talk to qualify him as an evangelist, I guess.
Overall I really enjoy his style of speaking -- very positive and uplifting without the fire and brimstone.
This entry was posted in Joel Osteen Impressions on July 11, 2005 by Admin.

matches: V. V. V. V. V. V. V. V. V. V. V. V. V. V. V. V. V. V.


Kirkbi AG and Lego Canada Inc.
McLachlin C.J. and Major, Bastarache, Binnie, LeBel, Deschamps, Fish, Abella and Charron JJ.
Constitutional law – Distribution of legislative powers – Trade and commerce – Trade-marks – Whether provision creating statutory action of passing off in federal trade-mark legislation ultra vires Parliament – Whether federal trade-marks legislation valid exercise of Parliament’s general trade and commerce power – Constitution Act, 1867, s. 91(2) – Trade-marks Act, R.S.C. 1985, c. T-13, s. 7(b).
Trade-marks – Unfair competition – Passing-off action – Unregistered trade-marks – Doctrine of functionality – Toy manufacturer asserting unregistered trade-mark in LEGO blocks consisting of distinctive orthogonal pattern of raised studs distributed on top of each block – Whether unregistered functional mark can form basis of action claiming passing off under s. 7(b) of Trade-marks Act – Whether doctrine of functionality applicable only to registered trade-marks – Trade-marks Act, R.S.C. 1985, c. T-13, s. 7(b).
Torts – Passing off – Conditions to establish liability.
K held the patents for LEGO construction sets. When the patents expired in Canada, R, a Canadian toy manufacturer, began manufacturing and selling bricks interchangeable with LEGO. K tried to assert a trade-mark in the “LEGO indicia”: the upper surface of the block with eight studs distributed in a regular geometric pattern. When the Registrar of Trade-marks refused registration, K claimed the LEGO indicia as an unregistered mark and sought a declaration that it had been infringed by R pursuant to s. 7(b) of the Trade-marks Act and the common law doctrine of passing off. It requested a permanent injunction to prevent R from marketing infringing products and sought damages. The trial judge found that purely functional features, such as the LEGO indicia, could not become the basis of a trade-mark, whether registered and unregistered. The majority of the Court of Appeal upheld the decision. In this Court, R challenged the constitutionality of s. 7(b), arguing that the provision is ultra vires the legislative competence of Parliament under s. 91(2) of the Constitution Act, 1867.
Applied:General Motors of Canada Ltd. v. City National Leasing,  1 S.C.R. 641; Kitkatla Band v. British Columbia (Minister of Small Business, Tourism and Culture),  2 S.C.R. 146, 2002 SCC 31; referred to:Citizens Insurance Co. of Canada v. Parsons (1881), 7 App. Cas. 96; Attorney General of Canada v. Canadian National Transportation, Ltd.,  2 S.C.R. 206; MacDonald v. Vapor Canada Ltd.,  2 S.C.R. 134; Attorney-General for Ontario v. Attorney-General for Canada,  A.C. 405; Good Humor Corp. of America v. Good Humor Food Products Ltd.,  Ex. C.R. 61; Royal Doulton Tableware Ltd. v. Cassidy’s Ltd.,  1 F.C. 357; Asbjorn Horgard A/S v. Gibbs/Nortac Industries Ltd. (1986), 8 C.I.P.R. 232, rev’d in part  3 F.C. 544; Harvard College v. Canada (Commissioner of Patents),  4 S.C.R. 45, 2002 SCC 76; Monsanto Canada Inc. v. Schmeiser,  1 S.C.R. 902, 2004 SCC 34; Free World Trust v. Électro Santé Inc.,  2 S.C.R. 1024, 2000 SCC 66; Whirlpool Corp. v. Camco Inc.,  2 S.C.R. 1067, 2000 SCC 67; Parke, Davis & Co. v. Empire Laboratories Ltd.,  S.C.R. 351; Remington Rand Corp. v. Philips Electronics N.V. (1995), 64 C.P.R. (3d) 467; Pizza Pizza Ltd. v. Canada (Registrar of Trade Marks),  3 F.C. 379; Thomas & Betts, Ltd. v. Panduit Corp.,  3 F.C. 3; Imperial Tobacco Co. of Canada v. Registrar of Trade Marks,  Ex. C.R. 141; Elgin Handles Ltd. v. Welland Vale Manufacturing Co. (1964), 43 C.P.R. 20; TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001); Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000); Koninklijke Philips Electronics NV v. Remington Consumer Products Ltd., C-299/99,  E.C.R. I-5475; Cancellation Division of the Office for Harmonization in the Internal Market (Trade-marks and Designs), 63 C 107029/1 “LEGO brick” (3D), July 30, 2004; INTERLEGO AG’s Trade Mark Applications,  R.P.C. 69; Paris, October 18, 2000, D. 2001.Jur.850; Ciba-Geigy Canada Ltd. v. Apotex Inc.,  3 S.C.R. 120; Singer Manufacturing Co. v. Loog (1882), 8 App. Cas. 15, aff’g (1880), 18 Ch. D. 395; Erven Warnink B.V. v. J. Townend & Sons (Hull) Ltd.,  A.C. 731; Reckitt & Colman Products Ltd. v. Borden Inc.,  1 All E.R. 873; Oxford Pendaflex Canada Ltd. v. Korr Marketing Ltd.,  1 S.C.R. 494; Consumers Distributing Co. v. Seiko Time Canada Ltd.,  1 S.C.R. 583.
Constitution Act, 1867, ss. 91(2), (22), (23), 92(13).
Lanham Trade-Mark Act, 15 U.S.C.A. § 1052(e)(5).
Trade-marks Act, R.S.C. 1985, c. T-13, ss. 2 “distinguishing guise”, “trade-mark”, 6, 7, 13(2), 19, 20.
Unfair Competition Act, 1932, S.C. 1932, c. 38, s. 2(d).
Bently, Lionel, and Brad Sherman. Intellectual Property Law, 2nd ed. Oxford:Oxford University Press, 2004.
Cornish, William Rodolph. Intellectual Property:Omnipresent, Distracting, Irrelevant?Oxford:Oxford University Press, 2004.
Cornish, William Rodolph, and David Llewelyn. Intellectual Property:Patents, Copyright, Trade Marks and Allied Rights, 5th ed. London:Sweet & Maxwell, 2003.
Gill, A. Kelly, and R. Scott Jolliffe. Fox on Canadian Law of Trade-marks and Unfair Competition, 4th ed. Toronto:Carswell, 2002 (loose-leaf).
Jolliffe, R. Scott. “The Common Law Doctrine of Passing Off”, in Gordon F. Henderson, ed., Trade-Marks Law of Canada. Scarborough, Ont.:Carswell, 1993, 197.
Vaver, David. Intellectual Property Law:Copyright, Patents, Trade-marks. Concord, Ont.: Irwin Law, 1997.
Vivant, Michel. “La fantastique explosion de la propriété intellectuelle:Une rationalité sous le big bang?”, dans Mélanges Victor Nabhan. Cowansville, Qué.:Yvon Blais, 2004, 393.
European Communities. First Council Directive 89/104/EEC of 21 December 1988 to Approximate Laws Relating to Trade Marks,  O.J. L. 40/1, art. 3(1)(e).
APPEAL from a judgment of the Federal Court of Appeal (Rothstein, Sexton and Pelletier JJ.A.),  2 F.C.R. 241, 228 D.L.R. (4th) 297, 26 C.P.R. (4th) 1, 308 N.R. 1,  F.C.J. No. 1112 (QL), 2003 FCA 297, upholding a decision of Gibson J. (2002), 220 F.T.R. 161, 20 C.P.R. (4th) 224,  F.C.J. No. 793 (QL), 2002 FCT 585. Appeal dismissed.
Robert H. C. MacFarlane, Michael E. Charles, Peter W. Hogg, Q.C., Christine Pallotta and Catherine Beagan Flood, for the appellants.
Ronald E. Dimock, Bruce Ryder, Bruce W. Stratton and Henry Lue, for the respondent.
Peter Southey, for the intervener the Attorney General of Canada.
1 For many years, Kirkbi AG (“Kirkbi”) has been a well-known and successful manufacturer of construction sets for children, and at times, for their parents too. The construction sets consist of standardized small plastic bricks, held together by a pattern of interlocking studs and tubes. Patent protection of this locking system has now expired in Canada and in several other countries. Kirkbi now attempts to protect its market share and goodwill against the inroads of competitors by invoking other forms of intellectual property rights. In particular, it is engaged in a long-running dispute with the respondent Mega Bloks Inc., formerly Ritvik Holdings Inc./Gestions Ritvik Inc. (“Ritvik”), a Canadian toy manufacturer. After the expiry of the last LEGO patents in Canada, the respondent began manufacturing and selling similar bricks, using the same locking method.
2 Kirkbi is now relying on an unregistered trade-mark, the “LEGO indicia”, which consists of the well-known geometrical pattern of raised studs on the top of the bricks as the basis for a claim of passing off under s. 7(b) of the Trade-marks Act, R.S.C. 1985, c. T-13. Kirkbi seeks to prevent Ritvik from marketing its competing products without a proper disclaimer that its building blocks are not LEGO bricks and are not supplied by Kirkbi. Absent such a warning to consumers, the appellant argues, confusion arises and there are grounds for a passing-off action under s. 7(b). In this Court, for the first time in these proceedings, Ritvik challenged the constitutionality of s. 7(b) and argued that it is ultra vires the legislative competence of the Parliament of Canada.
3 Although I hold that s. 7(b) is a valid exercise of the federal power over trade and commerce, I agree that the action should be dismissed and that the majority judgment of the Federal Court of Appeal should be upheld. A purely functional design may not be the basis of a trade-mark, registered or unregistered. The tort of passing off is not made out. The law of passing off and of trade-marks may not be used to perpetuate monopoly rights enjoyed under now-expired patents. The market for these products is now open, free and competitive.
4 The LEGO toy business was founded in 1932. In 1949, Kirkbi produced its first toy building blocks. Those blocks were derived from a British product, the Kiddicraft blocks, which used a system of interlocking blocks. Kirkbi bought the patents covering the Kiddicraft system a few years later. Kirkbi then introduced significant improvements to the blocks. It added tubes underneath the blocks which coupled with the studs on top. This clever locking system increased the friction between the bricks and enhanced their “clutch power”, although children could still easily disassemble them. The current LEGO block was thus designed and marketed some 50 years ago. The same pattern of studs on the top of the block with tubes underneath remains in use. The only change was the addition of the mark “LEGO” on the top of each stud in tiny script. Kirkbi managed to keep patent protection of its technology in place for many years. But, in Canada, as elsewhere, patent protection came to an end. In Canada, the last patent expired in 1988. By that time, the quality and originality of its products had earned LEGO bricks a well-deserved reputation amongst parents and children. LEGO toys acquired generations of devoted clients and users in Canada as in many other countries.
5 After the expiry of Kirkbi’s patents, clouds gathered on the horizon. New competitors appeared and attempted to market similar if not identical products. The most aggressive was the respondent, a Montreal toy manufacturer now known as Ritvik. Ritvik had begun manufacturing toys in the 1960s. Later, in the 1980s, it developed and marketed a line of large-size building blocks. Finally, after the expiry of the last LEGO patents in Canada, it decided to use the traditional LEGO technology. It brought to market a line of small blocks, identical in size to LEGO blocks, which used the same geometrical pattern of stubs on top coupled with tubes underneath. They were sold under the name “MICRO MEGA BLOKS”. Ritvik sold its new line in Canada and exported them to several other countries. Over the last 10 years, it has become a significant global competitor to Kirkbi.
6 Facing new competition and now deprived of patent protection, Kirkbi attempted to protect its market position, employing a highly creative and aggressive use of the law of intellectual property and unfair competition, in several different legal systems throughout the world. This ongoing effort led to a substantial amount of litigation in several countries. For example, at times, Kirkbi tried to register its pattern of studs as a trade-mark or a design. Those attempts generally failed. In Canada, after the Registrar of Trade-marks rejected an application to register the pattern as a trade-mark, the appellant resorted to a more subtle and creative use of the resources of the law of intellectual property. This attempt led directly to the present litigation.
7 Kirkbi asserted unregistered trade-mark rights in respect of its use of the “LEGO indicia”. This mark consists of its distinctive orthogonal pattern of raised studs distributed on the top of each toy-building brick. These LEGO indicia are thus the upper surface of the block, with eight studs distributed in a regular geometric pattern (see Sexton J.A.,  2 F.C.R. 241, 2003 FCA 297, at para. 11). It alleged that the marketing by Ritvik of its MICRO and MINI lines of small bricks using the same pattern caused confusion with its unregistered trade-mark. It claimed relief under s. 7(b) of the Trade-marks Act and under the common law doctrine of passing off. In a statement of claim filed in the Federal Court, Trial Division, it claimed ownership of this unregistered mark and sought a declaration that it had been infringed. It requested a permanent injunction to prevent the marketing of the MICRO and MINI lines of MEGA BLOKS and damages.
8 Ritvik mounted a strong defence. It denied that s. 7(b) of the Trade-marks Act had been breached and that the tort of passing off had been made out. In counterclaim, it sought a declaration that it was entitled to continue selling its MICRO and MINI lines of bricks. At that stage, it did not raise the issue of the constitutionality of s. 7(b) of the Trade-marks Act.
9 Gibson J. dismissed Kirkbi’s claim. He accepted the key argument raised by Ritvik that purely functional features, such as the LEGO indicia, could not become the basis of a trade-mark and affirmed that this principle was still a part of Canadian trade-mark law. The rule of functionality applied both to registered and unregistered marks. Although he observed that this conclusion was dispositive of the claim, he went on to consider the issue of passing off. Gibson J. noted that the subject matter at issue had been claimed and disclosed in expired patents. In his view, Kirkbi was indirectly attempting to extend its patent protection, contrary to the principles of the patent system. The trial judge then reviewed the elements of the tort of passing off at common law. He recognized that, given the history of the marketing of its product, Kirkbi had acquired goodwill in the particular configuration of its bricks. He then found that it had to be shown that this goodwill was put in peril by confusion amounting to a deception of the public due to a misrepresentation. He was satisfied that Kirkbi had established a likelihood of confusion or even actual confusion, between the LEGO bricks and the Ritvik blocks, based on the LEGO indicia. But Gibson J. held that the claimant needed to prove that the confusion had arisen from an intentionalmisrepresentation by Ritvik, and he concluded that in this case Kirkbi had failed to do so. On that basis, he would have dismissed the claim of passing off, although he acknowledged that Ritvik’s entry into the market had caused damages to the appellant. Kirkbi appealed this judgment to the Federal Court of Appeal.
10 Writing for the majority, Sexton J.A. dismissed the appeal. In his view, the doctrine of functionality applied to all trade-marks, registered or unregistered, and had remained a fundamental principle of the law of trade-marks. The distinguishing guise solely consisting of the so-called “LEGO indicia” was purely functional. For this reason, it was invalid and could not form the basis of an infringement action under s. 7(b) of the Trade-marks Act.Kirkbi was attempting to extend the life and application of its expired patents through an improper use of trade-mark law. Given his conclusion on the issue of functionality and the validity of the mark, Sexton J.A. did not comment on the questions of confusion and the elements of the tort of passing off.
11 Pelletier J.A. disagreed and would have allowed the appeal and the action. In dissent, he held that, although the LEGO mark was primarily functional, it could be the basis of a passing-off claim under s. 7(b). An unregistered trade-mark did not confer any exclusivity but its owner had the right to prevent competitors from causing confusion in the marketing of competing products. LEGO was entitled to protection against the confusing use of its unregistered mark. In addition, Pelletier J.A. stated that the doctrine of functionality was no longer part of the law of trade-marks in Canada in respect of unregistered marks, by reason of the changes brought about by the adoption of the present Trade-marks Act. He also found that the elements of passing off had been made out. In particular, even though no deliberate strategy to deceive had been established, confusion in the market between Kirkbi and Ritvik products had been proved.
1. Is s. 7(b) of the Trade-marks Act, R.S.C. 1985, c. T-13, as amended, either in whole or in part within the legislative competence of the Parliament of Canada under s. 91(2) of the Constitution Act, 1867?
13 I will address the constitutional question first. I will then turn to the issues raised by the infringement action under s. 7(b). I will consider the application of the doctrine of functionality. Does it apply to unregistered trade-marks or to registered trade-marks only?May an unregistered functional mark form the basis of an action claiming passing off under s. 7(b) of the Trade-marks Act?Last, given the uncertainty in the courts below, I will review and discuss some aspects of the tort of passing off at common law.
14 In this appeal, the constitutional validity of s. 7(b) of the Trade-marks Act arises in the particular context of an unregistered trade-mark. The respondent challenges the constitutional validity of the impugned provision and submits that s. 7(b) of the Trade-marks Act is ultra vires the legislative competence of the Parliament of Canada because it is not linked or connected in any way to the trade-mark registration scheme in the Act.
15 The grant of legislative authority to the Parliament of Canada listed in s. 91 of the Constitution Act, 1867 does not specify that trade-marks are a component of the federal government’s power to legislate. Patents and copyrights are explicitly allocated to federal legislative power (s. 91(22) and (23)). Pursuant to s. 91(2), the federal government has exclusive jurisdiction in relation to trade and commerce. In Citizens Insurance Co. of Canada v. Parsons (1881), 7 App. Cas. 96, the Judicial Committee of the Privy Council distinguished two branches of federal power under s. 91(2): (1) the power over international and interprovincial trade and commerce, and (2) the power over general trade and commerce affecting Canada as a whole (“general trade and commerce”). This interpretation of s. 91(2), which limits the scope of the federal trade and commerce power to these two branches, is intended to ensure a proper constitutional balance between the otherwise overlapping federal power over trade and commerce (s. 91(2)) and the provincial power over property and civil rights in the province (s. 92(13)): see A. K. Gill and R. S. Jolliffe, Fox on Canadian Law of Trade-marks and Unfair Competition (4th ed. (loose-leaf)), at p. 2-4.
16 The “general trade and commerce” category requires an assessment of the relative importance of an activity to the national economy as well as an inquiry into whether an activity should be regulated by Parliament as opposed to the provinces. To determine whether a particular issue requires national rather than local regulation, this Court has set out five criteria to be considered. These criteria are integrated into an assessment of whether federal legislation can be supported on the basis of Parliament’s authority over general trade and commerce. They reflect principles which help distinguishthe federal trade and commerce power from the provincial property and civil rights power. In two comprehensive decisions dealing with the second branch of s. 91(2) (Attorney General of Canada v. Canadian National Transportation, Ltd.,  2 S.C.R. 206; General Motors of Canada Ltd. v. City National Leasing,  1 S.C.R. 641), Dickson C.J. adopted and extended the three indicia initially set out by Laskin C.J. in MacDonald v. Vapor Canada Ltd.,  2 S.C.R. 134. These requirements “serve to ensure that federal legislation does not upset the balance of power between federal and provincial governments” (City National Leasing, at p. 662).
The above does not purport to be an exhaustive list, nor is the presence of any or all of these indicia necessarily decisive. The proper approach to the characterization is still the one suggested in Parsons, a careful case by case assessment. Nevertheless, the presence of such factors does at least make it far more probable that what is being addressed in a federal enactment is genuinely a national economic concern and not just a collection of local ones.
On any occasion where the general trade and commerce power is advanced as a ground of constitutional validity, a careful case by case analysis remains appropriate. The five factors articulated in Canadian National Transportation merely represent a principled way to begin the difficult task of distinguishing between matters relating to trade and commerce and those of a more local nature.
No one has challenged the competence of the Dominion to pass such legislation. If challenged one obvious source of authority would appear to be the class of subjects enumerated in s. 91(2), the Regulation of trade and commerce, referred to by the Chief Justice. There could hardly be a more appropriate form of the exercise of this power than the creation and regulation of a uniform law of trade marks.
See also Good Humor Corp. of America v. Good Humor Food Products Ltd.,  Ex. C.R. 61, at pp. 75-76. More recently in Royal Doulton Tableware Ltd. v. Cassidy’s Ltd.,  1 F.C. 357, the Federal Court, Trial Division stated in obiter that “[t]he jurisdiction of Parliament with respect to trade marks has long since been recognized …. [I]t may well be that the jurisdiction of Parliament over trade marks, depending as it does on federal authority over ‘the regulation of trade and commerce’ (see Attorney-General for Ontario v. Attorney-General for Canada, supra) is intrinsically broader than is Parliament’s jurisdiction over ‘patents of invention and discovery’” (pp. 374-75).
19 The constitutionality of specific provisions of the Trade-marks Act has been challenged but the validity of the Act as a whole has never been conclusively determined. The courts have implicitly recognized the validity of this federal legislation in several decisions: see, e.g., Vapor Canada; City National Leasing; Asbjorn Horgard A/S v. Gibbs/Nortac Industries Ltd. (1986), 8 C.I.P.R. 232 (F.C.T.D.), rev’d in part  3 F.C. 544 (C.A.). The constitutionality of the Trade-marks Act as a whole is not challenged on this appeal. I will return to the issue of the constitutional foundation for federal trade-mark legislation and will consider the five criteria outlined by Dickson C.J. further below.
20 In City National Leasing, Dickson C.J. set out the proper framework for analysis to determine the characterization of an impugned provision for constitutional purposes. He stressed that the mere fact that a provision codifies a civil cause of action does not necessarily make it ultra vires the federal government. Although the creation of civil causes of action is generally a matter of property or civil rights in the province, a finding that a provision standing alone, in its pith and substance, intrudes on provincial powers does not determine its ultimate constitutional validity. At the same time, a provision will not be valid merely because the main provisions of an Act are valid. It is necessary to consider both the impugned provision and the Act as a whole when undertaking constitutional analysis. The nature of the relationship between a provision and the statute determines the extent to which the provision is integrated into otherwise valid legislation. If the legislation is valid and the provision is sufficiently integrated within the scheme, it can be upheld by virtue of that relationship:a provision may take on a valid constitutional cast by the context and association in which it is fixed as complementary provision serving to reinforce other admittedly valid provisions (Vapor Canada, at pp. 158-59, per Laskin C.J.).
1. Does the impugned provision intrude into a provincial head of power, and to what extent?
2. If the impugned provision intrudes into a provincial head of power, is it nevertheless part of a valid federal legislative scheme?
3. If the impugned provision is part of a valid federal scheme, is it sufficiently integrated with that scheme?
(e) do any other act or adopt any other business practice contrary to honest industrial or commercial usage in Canada.
In this section I will apply the analytical framework set out above to determine the constitutional validity of s. 7(b).
(a) Characterization of the Impugned Provision: Does Section 7(b) Encroach on Provincial Powers?
23 The first stage of the analysis requires a characterization of the impugned provision in isolation from the rest of the statute. We look to its purpose and its effect to determine whether the provision encroaches on provincial powers, and if so, to what extent: City National Leasing, at p. 674; Kitkatla, at para. 59. Section 7(b) creates a civil cause of action that essentially codifies the common law tort of passing off: Vapor Canada, at p. 147; Asbjorn Horgard A/S (F.C.T.D.), at p. 241. Standing alone it appears to encroach on provincial power, namely property and civil rights in the province (s. 92(13)). As Dickson C.J. noted in City National Leasing: “This provincial power over civil rights is a significant power and one that is not lightly encroached upon” (pp. 672-73). As explained above, if s. 7(b) is sufficiently integrated into the scheme of the Trade-marks Act as a whole, then it will nonetheless be intra vires Parliament.
24 In City National Leasing, this Court found that the intrusion of s. 31.1 of the Combines Investigation Act, R.S.C. 1970, c. C-23, into provincial jurisdiction was minimal. In coming to this conclusion Dickson C.J. highlighted the following three factors:(i) the provision was remedial and was not in itself a substantive part of the Act; the provision did not create a general cause of action; (ii) its application was limited by the provisions of the Act; and (iii) Parliament was not constitutionally precluded from creating rights of civil action where such measures are shown to be warranted (p. 673).
The tort of passing off is in many respects the equivalent cause of action for unregistered trade-marks as infringement [s. 20 of the Act] is to registered trade-marks. The overall legislative scheme of the Trade-marks Act is the protection, identification, and registration of trade-marks, whether registered or unregistered.
26 Second, the passing-off action protects unregistered trade-marks and goodwill enjoyed by the trade-marks. Section 7(b) is therefore limited by the provisions of the Trade-marks Act: it does not expand the federal jurisdiction in relation to trade-marks and trade-names but merely rounds out an otherwise incomplete trade-mark scheme (Asbjorn Horgard A/S (F.C.T.D.), at p. 237). Unlike s. 7(e), which was found to be ultra vires Parliament because it did not have any connection with the enforcement of trade-marks or trade-names (Asbjorn Horgard A/S (F.C.T.D.), at p. 242) and was significantly broader in application, the creation of a statutory action for passing off in s. 7(b) is limited in its application.
27 Finally, as regards federal statutory civil actions, Dickson C.J. reminds us in City National Leasing that “[i]t is also important to recognize that while the Court in Vapor Canada, supra, struck down one civil cause of action, the Court did not preclude other federally created private actions from being sustained under federal heads of power” (p. 693). Not only has this Court sustained federally created civil causes of action in a number of cases, but the test developed by this Court in City National Leasing and in Kitkatla (outlined above) makes clear that civil causes of action are intra vires Parliament if sufficiently integrated into valid federal legislation. In sum, although the impugned provision encroaches on an important provincial power, the intrusion is minimal. We must now determine whether the Trade-marks Act is valid and, if so, ascertain whether s. 7(b) is sufficiently integrated into the federal scheme of regulation to be sustained as an exercise of Parliament’s general trade and commerce power.
The parties do not dispute Parliament’s constitutional power to regulate registered trade-marks. Rather, it is Parliament’s right to create a civil remedy in relation to an unregistered trade-mark that is in issue. The respondent’s position is that the only regulatory scheme in the Trade-marks Act is the scheme governing registered trade-marks. In my view this is an incorrect characterization of the Act. The Trade-marks Act establishes a regulatory scheme for both registered and unregistered trade-marks.
29 The protection of unregistered trade-marks is integral to the legitimacy, legal standards and efficacy of registered trade-marks. The Trade-marks Act is clearly concerned with trade as a whole, as opposed to within a particular industry. There is no question that trade-marks apply across and between industries in different provinces. Divided provincial and federal jurisdiction could mean that the provincial law could be changed by each provincial legislature. This could result in unregistered trade-marks that were more strongly protected than registered trade-marks, undermining the efficacy and integrity of the federal Parliament’s Trade-marks Act. The lack of a civil remedy integrated into the scheme of the Act, applicable to all marks, registered or unregistered, might also lead to duplicative or conflicting and hence inefficient enforcement procedures.
At common law the right to a trade mark thus arose through the use of a mark by a business to identify its products to the public. There was no need for the business to register its mark in order to protect its right to use the trade mark and prevent the misuse of its trade mark by other businesses. The passing off action was the enforcement mechanism available for the protection of trade mark rights. Without the passing off action, common law trade mark rights would have little value.
The Canadian Act, as the statutory history set out by Laskin C.J.C. in the MacDonald case, supra, showed, has traditionally been concerned with the protection of unregistered as well as registered trade marks. In this it is like the Copyright Act [R.S.C. 1970, c. C-30], whose coverage is broader than registered copyright. In both Acts what registration does is to provide additional benefits over and above those available at common law.
Registration of a trade-mark gives the registrant the exclusive right to the use throughout Canada of the trade-mark and a right of action to remedy any infringement of that right: ss. 19-20. In addition, in order to exercise those rights, the existence of the mark itself does not have to be established. Registration is evidence enough. Nonetheless, marks remain marks, whether registered or unregistered, because their legal characteristics are the same.
31 There is no reason to believe that the registration regime under the Trade-marks Act was intended to create two separate enforcement regimes. The scheme set out in the Trade-marks Act regulates both registered and unregistered trade-marks. It regulates the adoption, use, transfer, and enforcement of rights in respect of all trade-marks. If trade-marks are intended to protect the goodwill or reputation associated with a particular business and to prevent confusion in the marketplace, then a comprehensive scheme dealing with both registered and unregistered trade-marks is necessary to ensure adequate protection. The inclusion of unregistered trade-marks in the regulatory scheme is necessary to ensure the protection of all trade-marks. The Trade-marks Act is more than simply a system of registration.
32 The final step in the analysis is to determine whether the provision is sufficiently integrated into the otherwise valid statute. The inquiry has two parts. First, it is necessary to determine the appropriate test of “fit”, namely “how well the provision is integrated into the scheme of the legislation and how important it is for the efficacy of the legislation” (City National Leasing, at p. 668). Once the correct standard is determined, the test is applied on a case-by-case basis. If the provision passes this integration test, it is intra vires Parliament as an exercise of the general trade and commerce power. If the provision is not sufficiently integrated into the scheme of regulation, it cannot be sustained under the second branch of s. 91(2). To determine the degree of integration required, it is necessary to consider the extent to which the provision encroaches on provincial powers: “The degree of relationship that is required is a function of the extent of the provision’s intrusion into provincial powers” (City National Leasing, at p. 683). If the encroachment is minimal, then a “functional relationship” is sufficient to sustain the constitutionality of the provision (p. 669). If the provision is highly intrusive, a stricter test is applied: the provision must be “truly necessary” or “integral” to the federal scheme (pp. 669 and 683). Consideration of the seriousness of the encroachment on provincial powers and of the proper standard for the relationship between a legislative provision and a valid federal scheme ensures that the balance of constitutional powers is maintained and focuses the analysis on the “pith and substance” of the provision.
33 As outlined above, s. 7(b) of the Act only minimally intrudes into provincial jurisdiction over property and civil rights. It is a remedial provision limited to trade-marks as defined in the Act (ss. 2 and 6). As this Court observed in Vapor Canada and the Federal Court of Appeal held in Asbjorn Hogard A/S, s. 7(b) “rounds out” the federal trade-marks scheme. In this regard s. 7(b) is, in its pith and substance, directly connected to the enforcement of trade-marks and trade-names in Canada because it is directed to avoiding confusion through use of trade-marks.
Section 7(e) could not be sustained on this basis because its subject matter was not related to or connected with the enforcement of trade-marks or trade-names. This connection was found to exist, however, in relation to s. 7(a), (b), and (d). The Court suggested that these subparagraphs did relate to and give effect to valid federal legislative subjects, namely trade-marks, patents and copyrights (p. 157).
35 The respondent submits that the civil action in s. 7(b) has no functional connection to the registered trade-mark scheme in the Trade-marks Act. Having concluded that the Act creates a scheme regulating both registered and unregistered trade-marks, the functional relation of s. 7(b) to the scheme in the Trade-marks Act is apparent. In its pith and substance, s. 7(b) is directly connected to the enforcement of trade-marks and trade-names in Canada: the civil remedy in s. 7(b) protects the goodwill associated with trade-marks and is directed to avoiding consumer confusion through use of trade-marks. As Gill and Jolliffe note: “No provision of s. 7 is more inextricably linked to the overall scheme of the Trade-marks Act than is s. 7(b)” (p. 2-22).
36 Unlike breach of confidence and appropriation of confidential information (s. 7(e)), the passing-off action plays a clear role in the federal scheme. Without this provision there would be a gap in the legislative protection of trade-marks. This would create inconsistencies in the protection of registered and unregistered trade-marks and lead to uncertainty. Section 7(b) is sufficiently integrated into the federal scheme and, in this respect, is significantly different from s. 7(e). I conclude that s. 7(b) lies within the federal government’s legislative competence. I will now turn to the issues of interpretation and application of the Act raised by the present appeal.
37 The vast and expanding domain of the law of intellectual property is going through a period of major and rapid changes. The pressures of globalization and technological change challenge its institutions, its classifications and sometimes settled doctrines (see M. Vivant, “La fantastique explosion de la propriété intellectuelle:Une rationalité sous le big bang?”, in Mélanges Victor Nabhan (2004), 393; see also W. R. Cornish, Intellectual Property: Omnipresent, Distracting, Irrelevant? (2004), at pp. 110-14). Jurisprudence attempts to address – sometimes with difficulty – the consequences of these broad social and economic trends. The state of patent law is evidence enough of the stresses on the process of jurisprudential development in a world where statute law itself struggles to catch up with the life of laboratories and markets (see, for example, Harvard College v. Canada (Commissioner of Patents),  4 S.C.R. 45, 2002 SCC 76; Monsanto Canada Inc. v. Schmeiser,  1 S.C.R. 902, 2004 SCC 34). The economic value of intellectual property rights arouses the imagination and litigiousness of rights holders in their search for continuing protection of what they view as their rightful property. Such a search carries with it the risk of discarding basic and necessary distinctions between different forms of intellectual property and their legal and economic functions. The present appeal is a case in point. It involves the distinction between patents and trade-marks. In order to understand the role and relevance of the doctrine of functionality in the law of trade-marks, some comments on the nature and function of patents and trade-marks will be useful.
Patent protection rests on a concept of a bargain between the inventor and the public. In return for disclosure of the invention to the public, the inventor acquires for a limited time the exclusive right to exploit it.
Patent rights focus on the patented product or process. The patent holder enjoys temporary exclusivity and is protected against the unauthorized use of the subject matter of the patent, as long as the patent is in force.
At this point, we must then ask, can the mark be the product itself?Would this be consistent with the nature of marks and the underlying policies which structure intellectual property law?These issues are raised in Kirkbi’s claims. The foundation of a trade-mark is distinctiveness because only a distinctive mark will allow the consumer to identify the source of the goods (see D. Vaver, Intellectual Property Law: Copyright, Patents, Trade-marks (1997), at p. 190; Gill and Jolliffe, at p. 3-19). Although trade-marks do not protect the product as such, they may have huge economic value and rights arising out of marks may have immense importance to their holders. The operation of the market relies extensively on brands. The goodwill associated with them is considered to be a most valuable form of property. However, despite its connection with a product, a mark must not be confused with the product – it is something else, a symbol of a connection between a source of a product and the product itself. We will now briefly return to the facts relating to the mark claimed by Kirkbi.
40 The nature of the claim advanced by Kirkbi must be well understood. One must start from the problem the appellant faced when its patents expired. As mentioned above, the very cleverness and flexibility of LEGO technology, of the combination of studs on top of the brick and tubes under it, had almost turned “LEGO” into a household word. Source and product became identified. LEGO bricks, for many, came to designate these small colourful building blocks, with their clever locking system. But when the patents expired, the LEGO technology fell into the public domain. The LEGO name, whether on the product, on its packaging or in its advertising, remained protected, but the monopoly on the wares themselves was over. The monopoly had been the key to the building up and preservation of LEGO’s market share, and so Kirkbi employed a number of different means to protect it, one of which was the assertion of a trade-mark.
a rectilinear array of uniform, smooth-sided, flat-topped, cylindrical, co-planar protuberances, the proportions of height, diameter and center-to-center spacing of which are approximately 2 : 5 : 8. Where there is more than one row of protuberances, they are arranged in mutually orthogonal rows and columns.
On the facts, the trial judge found that the LEGO indicia and the asserted unregistered mark were purely functional. The mark was the product (see Gibson J., at para. 61). Those findings were accepted by the Federal Court of Appeal and were not challenged in our Court. These findings raised the issue of the application of the doctrine of functionality, which barred the claim of infringement under s. 7(b) of the Trade-marks Act, in the view of the trial judge and of the majority of the Court of Appeal.
(2) No registration of a distinguishing guise interferes with the use of any utilitarian feature embodied in the distinguishing guise.
43 In these few words, the Act clearly recognizes that it does not protect the utilitarian features of a distinguishing guise. In this manner, it acknowledges the existence and relevance of a doctrine of long standing in the law of trade-marks. This doctrine recognizes that trade-marks law is not intended to prevent the competitive use of utilitarian features of products, but that it fulfills a source-distinguishing function. This doctrine of functionality goes to the essence of what is a trade-mark.
44 In Canada, as in several other countries or regions of the world, this doctrine is a well-settled part of the law of trade-marks. In the law of intellectual property, it prevents abuses of monopoly positions in respect of products and processes. Once, for example, patents have expired, it discourages attempts to bring them back in another guise.
The law appears to be well settled that if what is sought to be registered as a trade mark has a functional use or characteristic, it cannot be the subject of a trade mark.
The distinguishing guise in the case at bar is in my opinion invalid as extending to the functional aspects of the Philip shaver. A mark which goes beyond distinguishing the wares of its owner to the functional structure of the wares themselves is transgressing the legitimate bounds of a trade mark.
This jurisprudence echoes earlier decisions of the Exchequer Court of Canada which applied the doctrine of functionality in respect of trade-marks, under an earlier statute. A combination of elements primarily designed to perform a function may not be the subject matter of a trade-mark (Imperial Tobacco Co. of Canada v. Registrar of Trade Marks,  Ex. C.R. 141, at p. 145; Elgin Handles Ltd. v. Welland Vale Manufacturing Co. (1964), 43 C.P.R. 20, at p. 24).
47 The Canadian jurisprudence is consistent with legislative and jurisprudential developments in other countries. Some of these jurisprudential developments arose out of the ongoing campaign of Kirkbi to protect its market position in many countries, by other legal means after the expiry of its patents.
48 In the United States, Congress recently incorporated the doctrine of functionality into the law of trade-marks. It is now a part of the Lanham Trade-Mark Act: see 15 U.S.C.A. § 1052(e)(5). The Supreme Court of the United States has also held that purely functional features may not become the basis of trade-marks (see, for example, TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001), at p. 34; Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000), at p. 211).
49 The European law of trade-marks also applies the doctrine of functionality. A directive of the Council of the European Communities does not allow the registration of purely functional trade-marks. It prohibits the registration as marks of signs which consist exclusively of a shape which is necessary to obtain a technical result (First Council Directive 89/104/EEC of 21 December 1988 to Approximate the Laws of the Members States relating to Trade Marks,  O.J. L. 40/1, art. 3(1)(e); see also L. Bently and B. Sherman, Intellectual Property Law (2nd ed. 2004), at pp. 794-96).
whose essential characteristics perform a technical function, with the result that the exclusivity inherent in the trade mark right would limit the possibility of competitors supplying a product incorporating such a function or at least limit their freedom of choice in regard to the technical solution they wish to adopt ….
51 Kirkbi had registered its indicia as a community trade-mark, under European law. Seized of an application for cancellation by Ritvik, the Cancellation Division of the Office for Harmonization in the Internal Market (Trade-marks and Designs) applied the principles set out in Philips Electronics, and voided the mark (63 C 107029/1 “LEGO brick” (3D), July 30, 2004). It found that it had a purely technical function and that the EEC directive barred its registration.
52 At the root of the functionality principle in European law, as in Canadian intellectual property law, lies a concern to avoid overextending monopoly rights on the products themselves and impeding competition, in respect of wares sharing the same technical characteristics. It is interesting to observe that, within two different legal systems, a judge of the English High Court and a French Court of Appeal raised the same concerns and came to similar conclusions, when they had to pass judgment on attempts by Kirkbi to protect its indicia by relying on trade-mark law, the tort of passing off or the delict of unfair competition in French law. In this manner, their judgments confirm the validity and broad relevance of the functionality principle as well as the doggedness of Kirkbi in its efforts to retain its market share by any means.
54 During the same period, the appellant had also engaged in a variety of legal proceedings to ward off Ritvik’s entry into the French market. It relied on various grounds, but, in the end, it appears that its efforts foundered on the same grounds as in Great Britain, namely that, in a free market, trade-marks should not be used to prolong monopolies on technical characteristics of products. Competition between products using the same technical processes or solutions, once patent rights are out of the way, is not unfair competition. It is simply the way the economy and the market are supposed to work in modern liberal societies.
[TRANSLATION] But whereas the simple fact of copying the product of the efforts of another does not as such constitute wrongful competition, the principle being that a product of the efforts of another to which no rights of intellectual property apply or to which such rights have ceased to apply may be freely reproduced; whereas the person who so reuses the product of the efforts of another necessarily makes savings that cannot in themselves be considered wrongful without draining of all substance the principle referred to above (which is itself closely linked to the fundamental principle of freedom of competition) ….
56 Kirkbi does not challenge the application of the functionality doctrine to registered marks in this Court. It raises a different argument. It submits that the doctrine does not apply to unregistered marks. In its view, such a mark does not grant its holder monopoly rights, but solely the right to be protected against confusion as to the source of the product. Moreover, it argues that legislative changes which occurred at the adoption of the present Trade-marks Act changed the previous law and limited the application of the functionality principle to registered trade-marks.
57 The first prong of the appellant’s argument concerns the nature of the rights granted by an unregistered trade-mark. In substance, the appellant advances the submission that unregistered trade-marks do not create exclusive property rights, but give rise to a right to be protected against confusion in the market. The appellant says that this right could be enforced against competitors causing confusion in the market place under s. 7(b) of the Trade-marks Act and by the tort of passing off.
58 As Sexton J.A. found for the majority in the Court of Appeal, this argument has no basis in law. Registration does not change the nature of the mark; it grants more effective rights against third parties. Nevertheless, registered or not, marks share common legal attributes. They grant exclusive rights to the use of a distinctive designation or guise (Ciba-Geigy Canada Ltd. v. Apotex Inc.,  3 S.C.R. 120, at p. 134; Gill and Jolliffe, at pp. 4-13 and 4-14). Indeed, the Trade-marks Act, by allowing for the assignment of unregistered trade-marks, recognizes the existence of goodwill created by these marks as well as the property interests in them. Registration just facilitates proof of title (Sexton J.A., at paras. 76, 77 and 81). Sexton J.A. rightly pointed out that the argument of Kirkbi appears to rest on a misreading of a 19th century judgment of the House of Lords, Singer Manufacturing Co. v. Loog (1882), 8 App. Cas. 15, aff’g (1880), 18 Ch. D. 395 (C.A.). This judgment stands only for the proposition that an unregistered trade-mark could be mentioned by competitors in comparative advertising, not that it failed to create exclusive rights to the name for the purpose of distinguishing the products. The functionality doctrine remains relevant, as the legal nature of the marks remains the same.
Kirkbi argues that the present law limits the application of the doctrine to registered marks only, under s. 13(2).
61 In the end, the appellant seems to complain about the existence of competition based on a product, which is now in the public domain. As “LEGO” and LEGO-style building blocks have come close to merging in the eyes of the public, it is not satisfied with distinctive packaging or names in the marketing operations of Ritvik. It seems that, in order to satisfy the appellant, the respondent would have to actively disclaim that it manufactures and sells LEGO bricks and that its wares are LEGO toys. The fact is, though, that the monopoly on the bricks is over, and MEGA BLOKS and LEGO bricks may be interchangeable in the bins of the playrooms of the nation – dragons, castles and knights may be designed with them, without any distinction. The marketing operations of Ritvik are legitimate and may not be challenged under s. 7(b). This is enough to dispose of the claim of the appellant, which had grounded its claim of passing off on the existence of a trade-mark. Nevertheless, given the discussion in the courts below, some comments on the common law action for passing off will be useful.
62 Remedies under the Trade-marks Act rely extensively on the historical development of the tort of passing off. In a broad sense, some of the remedies under s. 7, for example s. 7(c), explicitly target “passing off”. The legal action initiated by the appellant often called upon the elements of the tort of passing off, although it was based on s. 7(b) of the Act. In those circumstances, much of the discussion in the courts below and even before our Court turned at times on the tort of passing off and the conditions to establish liability on that basis. For this reason, I will briefly review the components of this tort, as it has now developed in Canadian law.
63 This tort has a long history. At a very early point in its development, the common law became concerned with the honesty and fairness of competition. For that reason, it sought to ensure that buyers knew what they were purchasing and from whom. It also sought to protect the interest of traders in their names and reputation. As far back as the 17th century, the courts started to intervene. Actions based at first on some form of deceit were allowed (see W. R. Cornish and D. Llewelyn, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights (5th ed. 2003), at pp. 573-76; see also R. S. Jolliffe, “The Common Law Doctrine of Passing Off”, in G. F. Henderson, ed., Trade-Marks Law of Canada (1993), 197, at pp. 199-201). The modern doctrine of passing off was built on these foundations and became a part of Canadian law. Its principles now inform both statute law and common law.
64 As can be seen in the decisions of the courts below, aspects of the doctrine appear to give rise to controversy. Disagreements arise in the case law about the components of the tort. Are there three, four or five?How should they be classified?A short review of the jurisprudence focusing on the decisions of our Court will hopefully shed a little more light on the contents of the doctrine, in respect of issues relevant to the present appeal.
65 In recent times, the House of Lords applied two different, but related, classifications in order to determine the conditions of liability under the passing-off doctrine. In Erven Warnink B.V. v. J. Townend & Sons (Hull) Ltd.,  A.C. 731, at p. 742, Lord Diplock identified five elements which were necessary to create a valid cause of action: (1) a misrepresentation, (2) made by a trader in the course of trade, (3) to his customers or to ultimate consumers of his product (4) which may, in a reasonably foreseeable way, injure the business or goodwill of a competitor and (5) which causes actual damage. A few years later, Lord Oliver reduced the classification to three components:goodwill, deception and damage (Reckitt & Colman Products Ltd. v. Borden Inc.,  1 All E.R. 873, at p. 880; see also Bently and Sherman, at pp. 707-9).
67 The first component is goodwill or reputation. The claimant must establish goodwill in respect of the distinctiveness of the product (Ciba-Geigy, at pp. 132-33; Oxford Pendaflex Canada Ltd. v. Korr Marketing Ltd.,  1 S.C.R. 494, at pp. 504 and 507, per Estey J.). Evidence of goodwill solely attached to the techniques and processes which create the product will not do. The doctrine of passing off did not develop to protect monopolies in respect of products but of guises, get-ups, names and symbols which identify the distinctiveness of a source.
68 The second component is misrepresentation creating confusion in the public. Misrepresentation may be wilful and may thus mean the same thing as deceit. But now the doctrine of passing off also covers negligent or careless misrepresentation by the trader (Ciba-Geigy, at p. 133; Consumers Distributing Co. v. Seiko Time Canada Ltd.,  1 S.C.R. 583, at p. 601, per Estey J.). In this respect, the trial judge’s interpretation of this component was too narrow and not consistent with the jurisprudence of our Court or the modern developments of the law of passing off. I will not comment on the third requirement, the proof of damages, which was not discussed in the present case.
69 Under the modern law of passing off, a passing-off action by the appellant was bound to fail. It would not have been able to meet the first condition of the action, namely that there be goodwill in respect of the distinctiveness of the product. The alleged distinctiveness of the product consisted precisely of the process and techniques which were now common to the trade. Again, Kirkbi could not overcome another form of the functionality problem. Granting such a claim in these circumstances would amount to recreating a monopoly contrary to basic policies of the laws and legal principles which inform the various forms of intellectual property in our legal system. The appellant is no longer entitled to protection against competition in respect of its product. It must now face the rigours of a free market and its process of creative destruction.
70 For these reasons, I would dismiss the appeal with costs.
Solicitors for the appellants: Bereskin & Parr, Toronto.
Solicitors for the respondent: Dimock Stratton, Toronto.
Solicitor for the intervener the Attorney General of Canada: Deputy Attorney General of Canada, Toronto.
Solicitor for the intervener the Attorney General of Quebec: Department of Justice, Québec.
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