Trademarks and free speech

Trademarks have taken on new roles in recent years. No longer restricted to identifying the source of goods and services, they act as navigation tools on the Internet and as metaphors in common parlance, they feature in lyrical compositions, they are icons of style and culture, and sometimes objects of parody, and are often subject to critical comparison in advertising.

In fact, the function of identification has almost been overtaken by that of appeal and selling power. A corresponding change in the nature of legal protection for trademarks is only natural. To this end, old remedies—infringement and passingoff— have been combined with new—dilution, initial interest and post-sale confusion—to equip proprietors with stronger and broader safeguards.

However, enhanced levels of protection have, in turn, raised the possibility of the potential overreach of trademark laws. It is precisely here that the relationship between trademarks and expressive freedom comes into the picture, a relationship that has been characterised by much unease and confrontation.

Breaking it down

The tension may be summarised as follows. Registration of generic or plainly descriptive words such as ‘linoleum’ or ‘pilates’ as trademarks could discourage their use in everyday conversation and in commercial speech. This would cripple expressive freedom.

Popular phrases used in marketing campaigns reinforce the same point. For instance, based on its trademarked slogan ‘Fair and Balanced’, Fox News objected to a book entitled Lies and the Lying Liars Who Tell Them: A Fair and Balanced Look at the Right, which critiqued its reporting standards. However, the judge opined that the case was wholly without merit and suggested that Fox News’s trademark could be invalid.

The other concern for trademark holders is the threat of ‘dilution’, which might blur or tarnish the image of the mark. In recent years, instances of dilution and actions to check them have become routine. Toymaker Mattel was amongst the first to use the argument of dilution to record its objection to the hit song Barbie Girl.

As humorously put by Judge Kozinski: “If this were a sci-fi melodrama, it might be called Speech-Zilla meets Trademark Kong.” Mattel argued that the song lampooned the doll. While rejecting Mattel’s claim on the grounds of exception of nominative use and protecting the song as a parody, the court did comment that the use of the trademark was potentially dilutive.

In India, dilution actions are usually on a strong footing if the well-known character of a mark is clearly established. However, there are many who contend that whilst offering protection against ‘free-riding’, dilution without proof of confusion undermines the utilitarian theory (maximising net social welfare) of IP protection.

That dilution is more often a theoretical problem, rather than an actual one, favours this approach. Ironically, Mattel subsequently embraced the ‘Barbie song’ and licensed it for its promotions (albeit with modified lyrics!). In this way, supposedly unauthorised use of the ‘Barbie’ mark actually ended up strengthening the brand (and indirectly, reinforcing the arguments of the free speech proponents as well).

As satires and parodies become more commonplace, trademark holders have also stepped up efforts to curb criticism, though with inconsistent success. Recently, a French organisation, the CNMRT, used the symbol of a camel (synonymous with the Camel brand) in its anti-smoking campaign.

The poster depicted the dromedary with a cigarette producing smoke in the shape of a skull saying:“The smoke is worse than crossing the desert.” The Paris Court of Appeals held that Camel’s rights were infringed.

In its opinion, while the campaign pursued a legitimate public health objective, its reference to a specific brand, even in the form of parody, had the effect of discrediting one manufacturer in relation to others whose image was not used. However, the Supreme Court thought otherwise and held that the use of trademarks for purposes of criticism was covered by the constitutional principle of freedom of expression.

The cases of Esso and Areva (again in France) are noteworthy. To denounce their environmental policies, Greenpeace reproduced the Areva trademark with the shadow of a skull and modified the Esso mark to include dollar signs (E$$O). In both cases, the lower courts decided against Greenpeace. The Supreme Court, however, overturned the rulings and upheld the argument of free speech.

"Clearly, this distinction between commercial and noncommercial use is a matter of interpretation and therefore variable in its outcome."

These cases bring out one of the most crucial questions that the courts face whilst negotiating between proprietary trademark rights and the right to freedom of expression. Much depends on whether the use in parody/satire is commercial or not.

To illustrate, Greenpeace’s use of the mark ‘E$$O’ could not be shown to have any commercial interest to the organisation, although Esso did try to argue (unsuccessfully) that Greenpeace’s T-shirt sales had risen. The fact that the use was ideological and free of commercial taint was a deciding factor. Most US courts too have held that a trademark cannot be diluted by unauthorised use unless the use is commercial.

Having said that, the distinction is difficult, particularly as most parodies are likely to mix commercial and non-commercial use. In fact, an act may be dressed up as a parody and actually take unfair advantage of a mark. Clearly, this distinction between commercial and noncommercial use is a matter of interpretation and therefore variable in its outcome.

Moreover, if the potential overreach of trademarks is dangerous and reeks of private censorship, the abuse of freedom of speech is also to be condemned.

In Areva v. Greenpeace, while Areva’s trademark was ultimately found to have not been infringed, the trial court did observe that Areva had been discredited. Perhaps companies could consider defamation actions in such a scenario. This issue has also vexed courts in disputes involving ‘gripe sites’—webpages set up to voice discontent against the products or policies of corporations.

The domain names of such sites typically feature the target company’s trademark/ name, a case in point being the website www. jeboycottedanone.com. In this instance, food company Danone approached the French courts to close down the website, but once again came up (unsuccessfully) against the free speech argument.

Conversely, Deutsche Telekom was able to block a site denigrating its trademark ‘T-Online’, in Germany. The court held that disparagement did not qualify for free speech protection in the absence of humour or irony. More often than not, domain name disputes are resolved through arbitration under the aegis of ICAAN’s Uniform Dispute Resolution Policy, where decisions tend to favour the complainant.

However, if a trademark is used on a legitimate protest site and use is strictly non noncommercial (no goods for sale or rent, no links to competitors’ websites), it ought to fall within the ambit of free speech.

In India, Greenpeace has recently run into trouble with Tata—one of the country’s largest businesses—over its campaign highlighting the environmental impact on turtles of Tata’s deepwater port in Orissa. At issue is a game called ‘Turtle vs Tata’, which is modelled on the popular game ‘Pacman’.

It features fourheaded, ball-like creatures with Tata insignias embossed on them, trying to catch a helpless turtle attempting to escape. Tata has alleged defamation, disparagement and infringement.

Greenpeace asserts that its game is merely an awareness-creating exercise that seeks to compel the government and corporate houses to come up with environmentally friendly projects. The matter has garnered a lot of attention and is scheduled to be heard in mid-August.

The road ahead

Trademark holders are right to carefully guard their monopolies. They possess immense marketing power, which is vulnerable to erosion. However, curtailing the right to free speech in the name of preserving monopolies in trade is an undesirable outcome. And if such concerns are being raised increasingly, it ought to give rights holders and trademark practitioners some pause.

What is required is a proper construction of trademark rights and demarcation of the line between ‘use in the course of trade’ and any ‘other non-commercial use’. After all, intellectual property is, in essence, all about fostering creativity rather than curtailing it.

Gunjan Chauhan is an attorney at Remfry & Sagar. She can be contacted at: remfry-sagar@remfry.com