A Counterintuitive Approach to the Interaction Between Trade Marks

A Counterintuitive Approach to the Interaction Between Trade marks and Freedom of Expression in Europe and the US: A Two-Way Relationship Speaker: Dr. Mora Date: Mar 6, 2024 Research Aims - By focusing on one subset of interaction cases at a time, our current understanding of the interaction between trade marks and freedom of expression is incomplete - Adopting a more holistic approach to the diverse set of instances in which marks and speech interact allows for a more sophisticated understanding of the interests at stake in interaction cases - In particular, it allows challenging the conventional wisdom that their interaction is unidirectional, in the sense that freedom of expression limits trade mark rights - A taxonomical study of the instances where marks and speech interact reveals that this interaction is best understood as a two-way street, where speech both limits and validates trade mark rights STRUCTURE 1. Trade Marks as Expressive Artefacts 2. How Trade Marks and Speech Interact a. Conventional Wisdom b. A Counterintuitive Approach 3. Implications of the Proposed Approach 4. Q & A HOW IS MEANING IN TMS CREATED? - Trade marks are signs. - Signs are units of language. They convey information and, through their use, enable communication between two or more people. - Depending on how it is used (for what purpose and in what context), a sign can develop so as to convey not only a plurality of meanings depending on context, but also quite sophisticated meanings. This is also true of trade marks. TRADE MARK FUNCTIONS - As signs, the meaning of which can evolve over time, trade marks are able to convey a wide range of messages beyond source- identification. This allows them to fulfil a wide range of functions, notably: • Origin/Source-Identification • Quality (mark as a guarantee of quality) • Advertising (inform and persuade consumers) • Investment (use of the mark to acquire/preserve reputation) • Communication (use of a mark to express preferences, lifestyle choices or values) THE EXPRESSIVE FUNCTION OF TRADE MARKS - Commercial origin: Apple, Inc. - Quality & reputation: - • Reliability • Sleek design • High quality • Innovative Values & lifestyle/identity preferences: • Sophisticated • Hip • Creative • Design-conscious • Stylish HOW TRADE MARKS & SPEECH INTERACT INFRINGEMENT LITIGATION - Speech operates as a defense against an infringement claim in cases of unauthorized uses of marks for expressive purposes (art/parody/commentary) - Speech is thus mobilized to curtail the exclusive rights granted to trade mark owners, especially in light of the gradual expansion of the protection afforded by marks under anti-dilution statutes - Emphasis on the interaction between trade marks and speech in infringement litigation has led to the conventional wisdom that freedom of expression limits trade mark rights INFRINGEMENT LITIGATION: USE NOT PERMITTED - Mut. of Omaha Ins. Co. v. Novak, 648 F. Supp. 905, 911 (D. Neb 1986) (USA) • "[Plaintiff's] trademarks are property rights, and as such "need not yield to the exercise of First Amendment rights under circumstances where adequate alternative avenues of communication exist." [...] There are numerous ways in which [defendant] may express his aversion to nuclear war without infringing upon a trademark in the process. Just as [defendant] may not hold an antinuclear rally in his neighbor's backyard without permission, neither may he voice his concerns through the improper use of [plaintiff's] registered trademark. Under these facts, the First Amendment provides no defense." - Hard Rock Cafe Licensing Corp. v. Pac. Graphics, Inc., 776 F. Supp. 1454 (W.D. Wash. 1991) (USA) • "In this case, the defendant's attempt at parody was not sufficient to destroy the potential for consumer confusion. [...] [Defendant's] wholesale copying of the HARD ROCK CAFE logo cannot be explained or excused by parody. [...] The only difference between the first HARD RAIN CAFE design and the classic HARD ROCK CAFE T-shirt is the three letters in the second word of the mark: the graphics are indistinguishable. [...] In some cases, courts have found no likelihood of confusion where the degree of copying of the plaintiff's trademark is slight. That is not the case here. [...] Courts have also found no likelihood of confusion on the basis of parody where the subject matter concerns social commentary. That is not the case here." - Cour d'Appel [CA] [regional court of appeal] Rennes, 2 ch., Apr. 27, 2010, 09/00413 (France) • "However, in this case, [the defendant and its distributors] market products for profit that misappropriate the 'PETIT NAVIRE' marks with the aim of evoking, through puns, fuel spills in which the [claimant] company has in no way been involved. This results in an association between the products designated by these marks and maritime oil pollution that is purely arbitrary and cannot be justified on the basis of the fundamental right to freedom of expression." - Nadia Plesner v Louis Vuitton (2011) case LJN BQ3525 (The Hague District Court) (The Netherlands) • "The interest of [defendant] to (continue to) be able to express her (artistic) opinion through [her] work [...] should outweigh the interest of Louis Vuitton in the peaceful enjoyment of its possession" - Mattel Inc v MCA Records Inc 296 F3rd 894 (9th Cir 2002) (USA) • "Were we to ignore the expressive value that some marks assume, trademark rights would grow to encroach upon the zone protected by the First Amendment." • "The trademark owner does not have the right to control public discourse whenever the public imbues his mark with a meaning beyond its source identifying function." • Confusion claim: "the [US Trade Marks] Act should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression." (from Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989)) • Dilution claim: "If speech is not "purely commercial"-that is, if it does more than propose a commercial transaction-then it is entitled to full First Amendment protection." - Louis Vuitton Malletier S.A. v. Haute Diggity Dog L.L.C., 507 F.3d 252 (4th Cir. 2007) (USA) • "while a defendant's use of a parody as a mark does not support a "fair use" defense, it may be considered in determining whether the plaintiff-owner of a famous mark has proved its claim that the defendant's use of a parody mark is likely to impair the distinctiveness of the famous mark." • "[t]he facts impose on Louis Vuitton an increased burden to demonstrate that the distinctiveness of its famous marks is likely to be impaired by a successful parody. Even as (defendant's) parody mimics the famous mark, it communicates simultaneously that it is not the famous mark, but is only satirizing it. And because the famous mark is particularly strong and distinctive, it becomes more likely that a parody will not impair the distinctiveness of the mark." - Jack Daniel's Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023) (Supreme Court) (USA) • "When an alleged infringer uses a trademark as a designation of source for the infringer's own goods, the Rogers test does not apply. When a mark is used as a source identifier, the First Amendment does not demand a threshold inquiry." • Although VIP's effort to parody Jack Daniel's does not justify use of the Rogers test, it may make a difference in the standard trademark analysis. This Court remands that issue [...]. • The Lanham Act's exclusion from dilution liability for "[a]ny noncommerical use of a mark," §1125(c)(3)(C), does not shield parody, criticism, or commentary when an alleged diluter uses a mark as a designation of source for its own goods." [...] parody is exempt from liability only if not used to designate source. A COUNTERINTUITIVE APPROACH - Trademarks and speech interact in instances other than infringement litigation - The undue emphasis placed on one form of interaction has led to an incomplete understanding of this interaction, whereby it is understood as being unidirectional - Adopting a taxonomical approach to the interaction between trade marks and speech allows us to conceptualize of this interaction as a two-way street, whereby speech both limits and validates trade mark rights TRADE MARK REGISTRATION: PERMITTED - Matal v. Tam, 137 S. Ct. 1744 (2017) (Supreme Court) (USA) • "trademarks often have an expressive content. Companies spend huge amounts to create and publicize trademarks that convey a message. It is true that the necessary brevity of trademarks limits what they can say. But powerful messages can sometimes be conveyed in just a few words. Trademarks are private, not government, speech." • "[...] a fundamental principle of the First Amendment is that the government may not punish or suppress speech based on disapproval of the ideas or perspectives the speech conveys. [...] Here, the [statutory] clause [prohibiting the registration of signs that may disparage] "persons, living or dead, institutions, beliefs, or national symbols," [...]; and within that category, an applicant may register a positive or benign mark but not a derogatory one. The law thus reflects the Government's disapproval of a subset of messages it finds offensive [...]." - Lancu v. Brunetti, 139 S. Ct. 2294 (2019) (Supreme Court) (USA) • "The "immoral or scandalous" bar similarly discriminates on the basis of viewpoint and so collides with this Court's First Amendment doctrine. Expressive material is "immoral" when it is "inconsistent with rectitude, purity, or good morals"; "wicked"; or "vicious." So the [US Trade Marks] Act permits registration of marks that champion society's sense of rectitude and morality, but not marks that denigrate those concepts. And material is "scandalous" when it "gives] offense to the conscience or moral feelings"; "excite[s] reprobation"; or "call[s] out condemnation." So the [US Trade Marks] allows registration of marks when their messages accord with, but not when their messages defy, society's sense of decency or propriety." - Case C-240/18, Constantin Film Produktion v. EUIPO, ECLI:EU:C:2019:553 (Feb. 27, 2019) (EU) • "In order to come within the scope of [prohibition of registration as trade marks of signs that are contrary to morality], it is not sufficient for the sign concerned to be regarded as being in bad taste. It must [...] be perceived by the relevant public as contrary to the fundamental moral values and standards of society as they exist at that time." • "The examination to be carried out cannot be confined to an abstract assessment of the mark applied for, or even of certain components of it, but it must be established [...] that the use of that mark in the concrete and current social context would indeed be perceived by that public as being contrary to the fundamental moral values and standards of society." RESTRICTIONS ON TRADE MARK USE - Advertising bans • Prohibit any, and in some cases all, forms of advertising (e.g., advertising on billboards, newspapers, television, internet, point of sale, or even sponsorships) - Health warnings • Require trade mark owners to give up a (increasingly higher) percentage of their package space to allow for messages warning consumers of the health risks associated with consuming unhealthy goods - Plain packaging • Prohibits the use of marks consisting of logos and shapes, and severely restricts the manner in which word marks can be used. It also imposes additional requirements, notably: (a) the external appearance of the package cannot be embellished; and (b) all packages must conform to certain requirements of size and shape, have a matt finish and feature a drab dark brown color; and (c) is often couple with enlarged health warnings. IMPLICATIONS OF THE PROPOSED APPROACH 1. Allows for a better understanding of the interaction between marks and speech. This, in turn, can lead to a more refined understanding of the opposing interests at stake in interaction cases. This could result in better balanced, fairer adjudication 2. The parallels identified in American and European approaches to the interaction between marks and speech can lead to more fruitful exchange between both jurisdictions in this area of law 3. The interpretative tools employed, and outcomes reached, in one form of interaction between marks and speech will inform how we ought to approach the other forms of interaction 4. It opens the door to reconceptualizing the interaction between trade marks and speech as conflicting forms of speech