With the recent expansion of Trademark Rights and the increased protection of speech, including commercial expression, there are a growing number of potential conflicts between laws prohibiting unauthorized use of another’s mark and the right to freedom of expression.
Artists and other creators of expressive works often incorporate trademarks and trademarked products as part of their works. They do so for multiple reasons, including light-hearted humor, critical cultural commentary, parody, or even simply to shock. In instances where such use is both unauthorized and perceived as disparaging to the mark owner or the trademarked product, owners have attempted to sue under Trademark Law to enjoin the expressive use. However, there is not much clarity on how such situations are handled by various authorities. The balancing of public interest in freedom of expression on one side and the business owner’s right to use and prevent his trademark from unauthorized use on the other can be challenging.
Many states protect the free flow of information and ideas from restriction by the government. Freedom of expression is acknowledged by some countries as a fundamental right in their constitutions, such as in the United States Bill of Rights. Other nations, such as New Zealand, the United Kingdom, and Australia, have no constitutional free speech right but still recognize the right to freedom of expression in statutes or cases. At the same time, few people argue that trademark owners have property rights in their trademarks and note that property rights are also protected by national constitutions and some human rights treaties, such as the European Convention on Human Rights. Few countries provide robust protection for trademarks and speech interests in their trademark statutes and court decisions.
In a recent case before the European Court of Human Rights involving the mark ‘Budweiser’ for beer, the Court agreed that trademarks could be regarded as property rights for purposes of human rights analysis. Regardless of whether trademarks are property rights, states must balance trademark rights against the right of free speech.
In the United States, the federal trademark law provides significant protection for trademarks, including dilution protection for famous marks. Yet the United States also protects free speech values by exempting from dilution liability the fair use of another’s mark “other than as a designation of source” in comparative advertising, parody, criticism, and commentary; news reporting and news commentary; and non-commercial uses of a mark. The US Trademark Law also shelters speech interests by requiring distinctiveness of trademarks for protection and a likelihood of confusion for infringement claims and permitting the fair use of descriptive terms to describe the qualities or characteristics of goods or services. In addition, the US courts also create and apply speech-protective trademark laws, such as a balancing test used in infringement cases involving unauthorized use of marks in the titles or content of songs (such as Barbie Girl), films (such as Ginger & Fred), and other types of literary or artistic expressions. Free speech rights override trademark rights unless the use of the mark is not artistically relevant or it explicitly misleads as to the source of the content of the work. The US courts have also held that the First Amendment prohibits the application of trademark dilution law to uses of marks in non-commercial speech and have declined to find infringement or dilution of a trademark even in a commercial context when the mark is used in a successful parody, such as the ‘Chewy Vuitton’ dog toy parodies of the Louis Vuitton handbags and trademarks.
The Australian Trademark Law currently requires an allegedly infringing mark to be used as a mark for trademark liability and does not contain a cause of action for dilution. The Australian Trade Marks Office found that certain uses of marks in parodies were not deceptively similar when trademark owners filed oppositions to applications for Trademark Registration, such as for ‘Tenfolds Grunge’ for wine (a ‘cheeky reference’ or parody of ‘Penfolds Grange’ wine), ‘Dogue’ for dog gifts (a parody of ‘Vogue’ magazine).
The Constitutional Court of South Africa narrowly construed its trademark laws to protect speech interests in a case involving the unauthorized use of the mark ‘Carling Black Label’ and related marks for beer in the parody ‘Black Labour’ beer label displayed on the front of T-shirts sold for profit.
Citing the defendant’s constitutional right to freedom of expression, a French court allowed the non-profit environmental group, Greenpeace, to use a parody of the logo of an oil company, Esso, on a website to criticize the company and its industrial activities. For similar reasons, the German Federal Court of Justice rejected a trademark claim by the distributor of Marlboro cigarettes and its request for an injunction to prevent an anti-smoking organization from using the Marlboro marks in a parody of a Marlboro advertisement.
TRIPS’ Take on Free Speech
Article 17, which allows limited exceptions to trademark rights, is sufficiently wide to allow members to incorporate free speech values into their national trademark laws.
Among other things, member states may:
- Refuse to protect trademark rights in descriptive terms;
- Implement a commercial use or trademark use requirement for prima facie trademark liability;
- Refuse to enact a trademark dilution cause of action; and/or
- Specifically exempt from trademark liability uses of marks in political expression, news reporting, literary and artistic works, comparative advertising, parody, satire, criticism, and other commentaries.
Speech protective national trademark laws do not violate international obligations to protect trademarks in the Paris Convention and the TRIPS Agreement. In fact, TRIPS enable the states to protect the right to freedom of expression in their domestic trademark laws by excluding some specific terms or other ‘signs’ from the protectable subject matter, limiting the scope of rights conferred by a trademark, implementing limited exceptions to trademark rights, and tailoring the remedies imposed in trademark disputes to protect speech interests.
Countries may protect speech interests by excluding some specific signs from protectable trademark subject matter, narrowly defining the rights conferred by a trademark, and allowing certain exceptions to trademark rights. The enforcement provisions of the TRIPS Agreement also permit national courts to tailor trademark remedies to protect expressions. The international trademark obligations outlined in the agreements are narrower than many national trademark laws today; therefore, members can scale back strong national trademark rights to protect speech without violating the Paris Convention or TRIPS. For avoiding conflict between free speech and trademark rights, countries should adopt speech-friendly trademark laws at the national level and evaluate whether these domestic laws properly balance trademark and free speech rights. Ultimately, the balance between trademark rights and freedom of expression is therefore struck by international trademark law itself, which provides clear exceptions to the exclusivity of the sign in the form of political expression, parody, criticism, literary and artistic works, etc.