Use of Third-Party Brands in Copyrighted Works
Published: July 27, 2022
Tom Carl NBCUniversal London, United Kingdom Subcommittee Chair, Copyright Committee—Fair Use in Copyright Subcommitte
ARIAS Ciudad de Guatemala, Guatemala Unfair Competition Committee—Advocacy Subcommittee
(Member of the Copyright Committee, 2020‒2021 Committee Term)
Janet Shih Hajek
Agilent Technologies, Inc. Denver, Colorado, USA In-House Practitioners Committee—Forms, Guides, and Checklists Subcommittee
(Member of the Copyright Committee, 2020‒2021 Committee Term)
Kenneth Ng Davies Collison Cave Pty Ltd. Memphis, Tennessee, USA Copyright Committee—Emerging Copyright Issues Subcommittee
IPSHRUB New Delhi, India Data Protection Committee—Legislation Subcommittee
(Member of the Copyright Committee, 2020‒2021 Committee Ter
Creators are increasingly using real-life brands in their creative works, such as artworks, films, and TV shows. In some cases, trademark owners may consider that these expressions of art infringe on their intellectual property rights.
This article analyzes when the use of brands in artwork may be considered infringement and when a defense of fair use may apply. It examines what factors trademark owners and practitioners should consider in applying a defense of fair use, and how a selection of jurisdictions—namely, Australia, the Benelux, Guatemala, India, the United Kingdom, and the United States—treat these issues.
Australia’s Trade Marks Act (TMA) does not include a specific defense for using brands in artwork. Threshold issues arise as to whether this can constitute “infringement” in the first place. These include the following questions:
- Can such an act be considered use of the trademark “as a trademark” (as required in TMA § 120)?
- If so, is it being used in relation to the goods/services for which the trademark is registered (infringement of TMA § 120(1)), goods/services “of the same description,” or “closely related” goods and services (infringement of TMA § 120(2))? Or is it use of a famous mark in relation to unrelated goods or services that would adversely affect the interests of the trademark owner (TMA § 120(3))?
- If there is otherwise an infringement of TMA Section 120(2), can the artist rely on the defense in this section (i.e., that using the sign in this manner is “not likely to deceive or cause confusion”)?
Issue One: Use “As a Trademark”
In Shell Co of Australia Ltd v. Esso Standard Oil (Australia) Ltd (1963) 1A IPR 484, the court held that the context in which the mark was used is “all-important” because “not every use of a mark which is identical with or deceptively similar to a registered trade mark infringes the right of property which the proprietor of the mark possesses.” Id. at 486. In that case, Shell’s use of an animated image of a “humanized oil-drop” that was constantly moving and changing in a TV advertisement for its petrol was found not to infringe Esso’s oilman trademark, despite briefly appearing to be deceptively similar to it in individual frames of the advertisement. This was because Shell was not using the oilman to distinguish its petrol from other petrol—that is, it was not using it as a trademark. Rather, the court found that Shell was using the humanized oil drop to describe desirable attributes of its petrol.
Following this reasoning, it could be argued that using a mark in artwork—even if it is substantially identical to the registered trademark—is not an infringement under the TMA, as it is not being used “as a trademark.”
[I]t could be argued that using a mark in artwork—even if it is substantially identical to the registered trademark—is not an infringement under the TMA [Australia’s Trade Marks Act], as it is not being used “as a trademark.
Issue 2: Goods/Services “Of the Same Description” or “Closely Related” Goods and Services
Alternatively, the creative art piece might not infringe the trademark holder’s rights because it is not “of the same description” or “closely related” to the goods/services for which the mark is registered (TMA §120(2)).
It is likely that the artwork and the goods for which the mark is registered will not be “of the same description” in that their physical characteristics will not be similar, they will not be produced by the same manufacturers or provided by the same retailers, and they will not be aimed at the same customers. Instead, they are likely to be different in character and designed to serve different purposes.
Issue 3: Section 120(2) “Defense”
Even if the creative art piece is “of the same description” or “closely related” to the goods/services for which the mark is registered, there may be a defense: a person does not infringe the trademark if they establish that using the sign in the manner they did “is not likely to deceive or cause confusion” (TMA § 120(2)). The artist will bear the onus of proving this.
In E&J Gallo Winery v. Lion Nathan Australia Pty Ltd (2008) 77 IPR 69, the court stated that, while the comparison of the two marks may give rise to a “deceptive similarity,” the circumstances and environment in which the defendant has used the mark could potentially remove such confusion. In that case, the “degree of segregation and separation” between wines and beers in stores—E&J Gallo’s mark for BAREFOOT was registered and used with respect to wines, whereas Lion Nathan used its BAREFOOT RADLER mark in relation to beer—and the different manner in which they are sold and consumed, “assist[ed] a conclusion that there is no likelihood of deception or confusion.” Id. At 88.
Following this reasoning, one could argue that even if the mark used in the creative art piece is “deceptively similar” to the registered mark, the different circumstances and environment in which it has been used means that this use is “not likely to deceive or cause confusion.” This could allow the artist to establish the Section 120(2) defense against infringement.
Some U.S. courts have determined that the intersection of free speech and claims of trademark infringement require a balancing that may favor free speech if certain factors are met. The reason for analyzing claims of trademark infringement differently in these types of trademark infringement cases was discussed in the landmark case Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), in which the U.S. Court of Appeals for the Second Circuit explained that expressive works should be treated differently than commercial speech because (1) expressive works trigger the rights of freedom of speech enshrined in the First Amendment, “which must be balanced against the public interest in avoiding consumer confusion; and (2) consumers are less likely to mistake the use of someone else’s mark in an expressive work for a sign of association, authorship or endorsement.” Twentieth Century Fox Television v. Empire Distr., Inc., 875 F.3d 1192, 1196 (9th Cir. 2017) (citing Rogers, 875 F.2d at 997‒1000; Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 900 (9th Cir. 2002)).
Some U.S. courts have determined that the intersection of free speech and claims of trademark infringement require a balancing that may favor free speech if certain factors are met.
In Empire, plaintiff Empire Distribution, a well-known record label, asserted that Fox Television’s naming of its television show Empire, which featured a fictional New York‒based music label company named “Empire Enterprises,” infringed upon Empire Distribution’s trademark rights in the “Empire” name.
The Ninth Circuit Court of Appeals affirmed the district court’s decision in favor of Fox, finding no trademark infringement because, in using the Rogers v. Grimaldi test: (1) “Fox used the common English word “Empire” for artistically relevant reasons” (e.g., to refer to the show’s fictional setting in New York, which is commonly known as the “Empire State” and also because of the common dictionary definition of “empire” to mean an “entertainment conglomerate”); and (2) when a mark is artistically relevant, then the Trademark (Lanham) Act does not apply “unless the title explicitly misleads as to the source or the content of the work.” 875 F.3d at 1196 (quoting Mattel, 296 F.3d at 902, and Rogers, 875 F.2d at 999).
Since there was no evidence of “explicit references to Empire Distribution,” the Ninth Circuit agreed with the lower court’s finding that there was no explicit misleading—a higher standard than simply likelihood of confusion. Note, however, that not all U.S. circuit courts have adopted this interpretation of trademark law (see, e.g., Stouffer v. National Geographic Partners, LLC, 460 F. Supp. 3d 1133 (D. Colo. 2020), currently on appeal to the U.S. Court of Appeals for the Tenth Circuit). Nevertheless, U.S. jurisprudence demonstrates that when trademarks are used in artistic expression, free speech considerations may be given great weight.
Section 30 of The Trade Marks Act, 1999 encapsulates the doctrine of fair use, provided that such use is in accordance with honest practices in industrial or commercial matters and is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trademark. Additionally, the courts, while dealing with cases involving free speech and trademark protection, have determined that in such cases the issue is not that of the limitation of a right, but is that of the balancing of competing rights.
[T]he courts [in India], while dealing with cases involving free speech and trademark protection, have determined that in such cases the issue is not that of the limitation of a right, but is that of the balancing of competing rights.
In Tata Sons Ltd. v. Greenpeace International, 178 (2011) DLT 705, Greenpeace asserted that Tata, by setting up a steel plant at a port in India, was purportedly endangering the lives of local endangered turtles. Greenpeace, in order to generate public awareness, launched an online game called Turtle v. Tata. Based on Pac-Man, the game featured yellow turtles and “demons” showcased as the T device, a trademark of Tata.
Tata filed a case for trademark infringement and defamation for use of the mark TATA and T device, thereby requesting an interim injunction. The court refused to grant an injunction and held that doing so would freeze the public debate on the effect of the port on the turtles. The court, recognizing the value of free speech and its catalyzing effect on public debate, opined that the use of a trademark as the object of a critical comment, or even an attack, does not necessarily result in infringement.
In Abhijeet Bhansali v. Marico Limited, 2020 (81) PTC 244 (Bom), Abhijeet Bhansali, a video blogger, reviewed Marico’s product under the trademark PARACHUTE on his YouTube channel. Marico alleged that the social media influencer, by posting a video and providing his opinion on its product, had tarnished the reputation of the mark. The Single Judge of the Bombay High Court held the video to be false and disparaging and passed an interim injunction, thereby allowing the video to be taken down.
The matter was appealed before the Division Bench of the Bombay High Court. The court, subject to certain edits to the language in the video, allowed it to be reinstated. The court opined that where a person asserts a matter of fact, “he cannot be restrained from expressing himself,” reasoning that if an expression of an opinion is based on disclosed non-defamatory facts, this does not support an action for disparagement, no matter how unreasonable or derogatory the opinion is. However, if the expression of opinion is based on undisclosed or implied facts, an action for disparagement shall depend on the understanding of the statement. If the recipient reasonably believes the truth of an undisclosed or implied defamatory fact, the speaker is liable for making a defamatory statement.
In the Benelux, the artist Cédric Peers created clothing and artwork featuring the DOM PÉRIGNON marks. Moët, the owner of the marks, sued Cédric Peers for trademark infringement before the Brussels Commercial Court. The court found trademark infringement regarding the use on clothing. With respect to the artwork, the court referred questions for a preliminary ruling to the Benelux Court of Justice regarding the interpretation of Article 2.20(1)(d) of the Benelux Convention on Intellectual Property (BCIP). (Moët Hennessy Champagne Services v. Cedric Art, Case A 2018/1.)
The provision allows a trademark owner to prevent a third party from using a sign for purposes other than those of distinguishing goods or services, if that use would, without due cause, take unfair advantage or be detrimental to the distinctive character or the reputation of the mark.
The court considered the question whether artistic freedom, which enjoys protection under Article 10 of the European Convention on Human Rights, could rise to the level of “due cause” under Article 2.20(1)(d) BCIP.
The Benelux Court of Justice concluded that artistic expression, as part of the freedom of expression, can indeed constitute “due cause” under Article 2.20(1)(d) BCIP. The ruling is considered as broadening the scope for applying the right to freedom of speech under the due cause exception.
The UK has no specific concept of “freedom of expression” or “fair use/dealing” under trademark law.
The UK has no specific concept of “freedom of expression” or “fair use/dealing” under trademark law. Indeed, in Comic Enterprises v. Twentieth Century Fox,  EWCA Civ 41, the English Court of Appeal found that: “A television series is a creative work. However, this point seems to me to have only modest significance.” In that case, the title of the popular Fox Television series Glee was held to infringe the registered logo mark THE GLEE CLUB of the comedy club Comic Enterprises, on the grounds that there was a “likelihood of confusion” and also “detriment to the distinctive character and repute” of the earlier mark.
However, the use of brands in artworks, films, and TV shows may nevertheless be permitted on a case-by-case basis in the UK under one or more of the following general trademark principles, if:
- It does not adversely affect the underlying functions of a trademark;
- There is no likelihood of confusion;
- The use does not take unfair advantage of or is not detrimental to a trademark with a reputation, without due cause; or
- The use is for the purpose of referring to the trademark, provided such use is in accordance with “honest practices.”
Although the UK has no specific concept of “freedom of expression” under trademark law, certain artistic or political forms of expression could engage the right to freedom of expression under Article 10 of the European Convention on Human Rights. Further, recitals 21 and 27 (respectively) of the recast EU Directive 2015/2436 approximating member state trademark laws and EU Regulation 2017/1001 on the EU trademark, provide that the use of a trademark for the purpose of artistic expression should be considered as being “fair” provided it is in accordance with “honest practices,” and that the legislation should be applied in a way that respects freedom of expression. Whether and to what extent the UK may diverge from these EU principles post-Brexit remains to be seen.
“Fair dealing” (i.e., “fair use”) under UK copyright law is limited to a “closed list” of permitted uses, including criticism, review, quotation, news reporting, caricature, parody, or pastiche. “Incidental inclusion” is also permitted (as a separate permitted act from “fair dealing”). Thus, to the extent that an artistic use does not fall within that closed list, the arguably broader range of permitted uses under UK trademark law could encompass a broader range of permitted artistic uses in certain cases. For example, it seems less likely that the type of use by the artist Cédric Peers in the Benelux DOM PÉRIGNON trademark case would fall within the permitted uses under UK copyright law. However, it seems there is a greater likelihood that it could fall within the permitted uses under UK trademark law.
Guatemala’s Industrial Property Law does not address this issue specifically. Article 35 stipulates that the trademark holder may oppose the use of identical or similar trademarks to identify the same or similar goods or services. Article 36 of the same law provides that limitations to trademark rights will be considered if the use is made in good faith and is not capable of causing confusion as to the origin of the products or services. Therefore, in a case similar to the one involving the DOM PÉRIGNON trademark in the artwork of Cédric Peers, Guatemalan courts are more likely to adopt the same criteria used by the Benelux Court of Justice: that use of a trademark or a similar sign other than for distinguishing goods or services is allowable where the artistic expression is the original result of a creative design process which does not aim to harm the trademark or the trademark holder.
Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.
© 2022 International Trademark Association
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