FREE SPEECH
Te 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. Tat dilution is more oſten 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. Te poster depicted the dromedary with a cigarette producing smoke in the shape of a skull saying:“Te smoke is worse than crossing the desert.”
Te 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.
Te cases of Esso and Areva (again in France) are noteworthy. To denounce their environmental policies, Greenpeace reproduced the Areva
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trademark with the shadow of a skull and modified the Esso mark to include dollar signs (E$$O). In both cases, the lower courts decided against Greenpeace. Te Supreme Court, however, overturned the rulings and upheld the argument of free speech.
Tese cases bring out one of the most crucial questions that the courts face whilst negotiating between proprietary trademark rights and the right to freedom of expression. Much depends on whether the use in parody/satire is commercial or not. To illustrate, Greenpeace’s use of the mark ‘E$$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. Te 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 non- commercial 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.
Tis issue has also vexed courts in disputes involving ‘gripe sites’—webpages set up to voice discontent against the products or policies of corporations. Te 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. Te court held that disparagement did not qualify for free speech protection in the absence of humour or irony.
More oſten 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-
commercial (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 four- headed, 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. Te 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. Tey 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’. Aſter 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
Gunjan Chauhan is an attorney with Remfry & Sagar. She holds degrees in history and law from the University of Delhi and joined the firm not long aſter graduating in 2009. Her main area of work is trademarks prosecution and she has a keen interest in contemporary issues in trademarks and copyright.
World Intellectual Property Review September/October 2010
37
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