Applying trade mark and copyright laws to tackle ‘brand jamming’

As a result, litigation asserting intellectual property rights against the proponents of such campaigns has taken place in many countries, including the US, UK, Australia and South Africa.

United States

Despite being a highly litigious jurisdiction, it seems that brand jamming cases rarely make it to US courts. This is likely due to copyright law providing a favourable landscape for “brand jammers” through the fair use defence to copyright infringement – and constitutional protection of freedom of speech.

In 1972, Coca-Cola successfully obtained a preliminary injunction preventing further production of posters depicting its trademark, with alterations made to the letters so that the poster read “Enjoy Cocaine”. The posters were found to infringe Coca-Cola’s trademark rights after it produced evidence that some persons of apparently average intelligence did attribute sponsorship of the posters to the beverage company. Although the company behind the posters, Gemini Rising Inc, had included its name in small lettering on the poster, this was not sufficient to outweigh the proof of confusion.

In 2003 however, Mattel was unsuccessful in its claim for copyright, trademark and trade dress infringement against Walking Mountain Productions for a series of photographs it produced containing the toy manufacturer’s Barbie doll. Many of the relevant photographs portrayed the doll nude and in various humorous positions such as being in danger of being attacked by vintage household appliances as a critique of the objectification of women.

The court applied a first amendment ‘balancing test’, which permits application of trademark legislation only where the public interest in avoiding consumer confusion outweighs the public interest in free expression. It ruled that the public interest in free and artistic expression greatly outweighed the potential consumer confusion about Mattel’s sponsorship of the photos.

United Kingdom

There are very few reported judgments in the UK relating to brand-jamming. This could be because UK law makes it difficult for brand owners to prove that brand jamming activity amounts to infringement of their trade marks. Additionally, until relatively recently, the extent to which copyright law tolerated brand-jamming - known as ‘parody’ in the UK – was unclear.

The main piece of trade mark legislation in the UK, the 1994 Trade Marks Act, makes no reference to brand jamming whatsoever. A brand owner’s best hope is to show that the activity amounts to an infringement of their trade marks under s10(3) of the Act. This requires a brand owner to show, among other things, that the defendant’s activities took unfair advantage of their mark or was detrimental to its distinctive character or reputation.

Use of a brand’s trade mark by the defendant must be in the “course of trade” – meaning commercial use for the purpose of furthering the sale of the defendant’s goods or services, which is not usually the case in brand jamming. In addition, the use must be “without due cause”, and there is at least the risk in some instances that a court would conclude that the protection of political expression trumps trademark rights. 

Fair dealing with a work for the purposes of parody is a defence to copyright infringement in the UK. This defence was introduced as recently as 2014 and was untested until a High Court decision in June 2022. That case concerned characters in a well-known television comedy show in the UK, which the defendants were found to have copied in live performances as part of an interactive dining experience.

The defendant’s parody defence failed, and the High Court held that a parody must not merely imitate an existing work but must also be used as a “weapon” by targeting the work itself, or a political or other cause entirely separate from it, with a view to mocking, criticising or otherwise expressing an opinion on it.

This clarity around the scope of the parody defence is welcome but, as currently interpreted, is unlikely to be helpful to brand owners in cases of brand jamming that seek to make genuine social comment. The High Court’s decision is likely to be appealed.

Australia

In Australia a trademark can only be infringed if it is used in the course of trade, and to distinguish the user’s goods or services. Two key decisions, however, prove that this requirement is often fatal to claims of brand jamming – and demonstrate that while the limits of the defence are not easily defined, the parody defence to copyright will also assist an alleged infringer who has used a protected logo in a parodic campaign.

In 2019, the National Roads and Motorists Association (NRMA) brought proceedings against the Construction, Forestry, Maritime, Mining and Energy Union after the unions ran a campaign which featured an image of a sinking ship with the letters NRMA accompanied by the words “Don’t let wages sink to the bottom of Sydney Harbour”. The NRMA brought claims of trademark infringement, misleading and deceptive conduct, and injurious falsehood in relation to use of the NRMA lettering.

Although the use of the NRMA lettering was found to be deceptively similar to a number of the NRMA’s registered trademarks, the use was not found to be use as a trademark as the unions were not providing a service to its members through the campaign and were not providing the same class of services.

The court said the use of the marks in relation to different goods or services may still infringe where the fame of the registered mark is such that a connection is likely to be drawn between the allegedly offending use and the registered trademark owner. But it said no likelihood was found that a connection would be drawn between the goods and services for which the unions used the mark and the NRMA, given that the unions had used the mark in a derogatory way.

The court found the use of the logo was not in trade or commerce and the context of the use made it unlikely that a reasonable person would be misled into thinking the NRMA had approved the unions’ use of the logo.

In 2021, Australian energy company AGL sued Greenpeace for its use of AGL’s logo and branding in a campaign titled “Australia’s Greatest Liability”. Greenpeace largely escaped liability by relying on the parody and satire defence to copyright infringement, where a satirical feel was adopted by creating a “corporate look”, mimicking AGL’s branding guidelines. Any use of copyright work for parody or satire must still be fair based on factors set out in the statute.

The court found that the use was fair, being for an uncommercial purpose, and given Greenpeace was not a market competitor of AGL. Greenpeace also did not infringe AGL’s trade mark rights as it was not using AGL’s logo “as a trademark” because Greenpeace was not using the logo to promote any goods or services, let alone the services for which AGL’s marks were registered. The court considered that it would be clear to consumers that Greenpeace was using the mark to identify AGL as the subject of criticism.

South Africa

In 2005, activist company Laugh it Off Promotions produced and sold t-shirts which featured corruptions of well-known trademarks. One example included use of the trademark “CARLING BLACK LABEL BEER” by substituting the original words with “BLACK LABOUR WHITE GUILT”.

South African Breweries (SAB) brought a claim under anti-dilution provisions. In response, Laugh it Off argued that there was no likelihood of detriment to the reputation of the marks and further that it was exercising its constitutional freedom of expression. In order to succeed in the claim of trademark dilution, SAB needed to show unauthorised use of the mark in the course of trade in relation to any goods or services, where the mark is identical or similar to a well-known mark and that the use would take unfair advantage of that reputation or be detrimental to the repute of the mark.

In the lower courts, SAB was successful in its argument that the t-shirts would be detrimental to the reputation of its mark, and by selling t-shirts, Laugh it Off was using the similar mark in the course of trade. However, the Constitutional Court found that SAB needed to prove likelihood of economic or material harm, relevantly an impact on the brand’s selling power as opposed to just its dignity, which it did not do.

As there was no defence of parody to infringement under South African law, the parodic nature of the t-shirts was considered in the context of the freedom of expression defence. Balancing the importance of protecting intellectual property rights with the freedom of expression, the Constitutional Court emphasised in obiter that permitting trademark dilution to be used against non-competitor parody artists would allow it to act as a defamation statute and chill public discourse by encouraging censorship.

Observations

Based on these examples, businesses have had limited only success against brand jamming.  An important take away is that firms should gather evidence to prove copyright ownership in addition to trademark rights to ensure standing. The examples also make clear that copyright infringement laws internationally, often in combination with constitutional free speech protections, allow for successful defences for those engaged in social comment.

A version of this article was first published in World Trademark Review in July 2022.  The article was co-written by Odette Gourley and Grace Griffiths of Corrs Chambers Westgarth with Gill Dennis and Tom Nener contributing the UK section.