By Emmanuel Baud and Sandra Strittmatter (Paris)

Originally published October 3, 2004

The Paris Court of First Instance recently rendered two decisions in similar cases involving the non-profit organization Greenpeace and the petroleum industry company Esso (in the first case) and the nuclear industry company Areva (in the second case).

In both cases, Greenpeace had used word marks and altered representations of the pictorial or semi-pictorial marks owned by the plaintiffs to convey its polemic messages, with the result that Greenpeace were sued by both company for trademark infringement and tort liability (notably for disparagement).

Two constitutional principles were in conflict: the principle of freedom of expression and speech, and the principle of ownership over intangible assets such as a trademark on the second hand.

Background

Both proceedings were initiated pursuant to Article L. 716-6 of the French Intellectual Property Code (hereinafter the "FIPC"), a very specific summary proceeding, which allows a party that has brought an action on the merits for trademark infringement to seek an interim injunction against the defendant in order to restrain the allegedly infringing actions.

In the first case, Greenpeace used the word "ESSO" in red letters on a white background inside a blue oval and substituted the symbol "$" for each of the two "S" so as to form the word "E$$O". In his summary judgment rendered on July 8, 2002, the President of the Paris Court of First Instance, taking the view that no parody exception existed under French trademark law, ruled in favor of the plaintiff by enjoining Greenpeace to refrain from using the "ESSO" trademarks on its Web site.

In the second case, Greenpeace altered the "AREVA" logo composed of a capital "A" by associating it with a skull-like shadow and affixed the "A" logo in blood-red color on the body of a dead fish associated with the very explicit slogan "STOP PLUTONIUM—THE STOP IS OBVIOUS". In his summary judgment rendered on August 2, 2002, the President of the Paris Court of First Instance ruled in favor of Greenpeace by stating that trademark parody could be considered as a form of freedom of expression and rejected the plaintiff’s claims1.

An appeal was lodged in both cases and the Paris Court of Appeal, which had decided to hear both cases the same day so as to avoid potentially contradictory rulings, rendered two decisions on February 26, 20032, which state clearly that the exclusive rights of trademark owners may, under certain circumstances, be limited by the constitutional principle of freedom of expression.

In both decisions the Court of Appeal clearly stated that "the principle of the constitutional value of freedom of expression implies that, in accordance with its statutory purpose, the Greenpeace organization may, in its writings or on its Internet Web site, denounce, in the way it feels appropriate to the aims pursued, the damage to the environment and the risks caused to the human health through certain industrial activities; this freedom is not absolute but may only suffer the restrictions necessary to the defense of the rights of others".

In both decisions, the Court of Appeal ruled that trademark infringement was not a relevant cause of action in the cases in question since (i) there existed no likelihood of confusion in the mind of the public as to the origin of the polemic message, and (ii) Greenpeace’s acts fell outside the scope of the unauthorized use of a third party’s trademarks in the course of trade.

Accordingly, the Court of Appeal firstly stated that "Greenpeace clearly shows its intention to denounce the activities of the company which it criticizes for its impact on the environment, without misleading the public with respect to the identity of the author of the communication".

In the Esso case, the Court of Appeal decided that despite the fact that the "E$$O" sign refers to the trademarks belonging to the Esso company, it was "intended to illustrate the information delivered and the criticism developed in the campaign run by the organization" and "is obviously not directed at promoting the marketing of products and services in favour of Greenpeace but constitutes a polemical usage which is unrelated to the course of trade". The Court of Appeal proceeded in the same way in the Areva case by highlighting that the case was "extraneous to the course of trade and to the competition between commercial companies".

In the name of the principle of freedom of expression, the Court of Appeal reversed the decision of the President of the Paris Court of First Instance and therefore rejected Esso’s claims and it confirmed the decision of the President of the Paris Court of First Instance in the Areva case.

It must however be noted that in such decisions being rendered by way of summary proceedings, the Court of Appeal expressly stressed that "supposing that Greenpeace’s action is wrongful by exceeding what is essential to the aims pursued and harms the economic interests of the company, the alleged wrongful acts may give rise to appropriate damages before the judges deciding on the merits".

The Decisions of the Paris Court of First Instance on the Merits

On January 30, 2004, the Paris Court of First Instance3 rendered its long awaited decision on the merits in the Esso case.

The Paris Court of First Instance rejected Esso’s claims in their entirety and decided that Greenpeace was not liable for trademark infringement, nor for acts of disparagement.

With respect to the claim for trademark infringement, the Court of First Instance referred to the same terms as the Court of Appeal and decided that Greenpeace had not infringed the trademarks belonging to Esso because there existed no likelihood of confusion in the mind of the public, and the actions of Greenpeace took place outside the course of trade.

However, the Court of First Instance added one very important sentence before its developments with respect to trademark infringement: "trademark law does not know of the parody exception". The Court’s message is clear: the parody exception is provided for by copyright law (Article L. 122-5 4° of the FIPC) and will not be extended to trademark law.

With respect to Esso’s claim for tortious liability for acts of disparagement, the Court decided that by using the "E$$O" sign, Greenpeace "did not try to discredit in the public’s eyes the products protected by the ESSO trademarks and therefore damage the plaintiff’s rights". The Court added that Greenpeace did not make any profits from its acts and did not exceed the limits of the freedom of expression.

Recently, on July 9, 2004, the Paris Court of First Instance rendered its decision on the merits in the Areva case4.

For the same reasons as in the Esso case, the Court of First Instance decided that Areva’s trademarks were not infringed.

However, the Court of First Instance decided that by combining various images of death with the reproduction of the semi-pictorial trademarks belonging to Areva, Greenpeace committed acts of disparagement.

In its decision, the Court of First Instance particularly emphasized the fact that Greenpeace could have used other means, including images, to convey its polemic messages and to warn the public of the alleged dangers of nuclear energy. The Court of First Instance further ruled that Greenpeace had clearly exceeded the limits of freedom of expression, deciding that "the equation ‘AREVA = death’ proceeds from a purely disparaging reasoning for which their authors should be liable".

At first sight, such decisions appear to be contradictory since in the Esso case, the Court ruled in favor of Greenpeace, whereas in the Areva case, the Court ruled in favor of Areva. As a matter of fact, it appears that both decisions address the issue of the limits regarding freedom of expression.

The Recognition of Trademark Parody as a Tool for Freedom of Expression

A thorough analysis of French case law reveals that so as to favor a large application of the principle of freedom of expression, French courts must accept not to sanction the unauthorized reproduction or the imitation of trademarks in a parodic context, in very specific and limited cases.

First, it appears that courts do not sanction the criticism of the social policy of a company when such criticism is associated with a more or less explicit tribute paid to the activities or products of such company.

The Riom Court of Appeal5 therefore refused to condemn the employees of the Michelin company for their representation on a poster of the well-known Michelin "Bibendum" character with "a beard, a budgeon and an animal skin" associated with the slogan "The ideas of the past do not make the wheel of Progress turn". The Court of Appeal noted that the Michelin employees also used the slogan "Michelin, No. 1 in the world for pneumatics" and therefore decided that the representation of the Bibendum could not be seen as being detrimental for the Michelin company.

Secondly, French courts do not sanction the parodic use of a company’s trademark so as to criticize the illegal political activities of such company when the commercial activity of the company is not criticized. The Paris Court of Appeal6, by way of summary proceedings, decided that the association named "Elf can not impose its laws in Africa" may reproduce the trademarks belonging to the Elf group in order to denounce certain activities of such group insofar as such criticism refers to the apparently illegal political activities of the Elf group in Africa.

Thirdly, French courts tolerate the reproduction or the imitation of trademarks insofar as it illustrates a public health action approved by
the government, as, for example, anti-tobacco campaigns.

The Paris Court of Appeal7 therefore refused to sanction the National Committee Against Respiratory Diseases and Tuberculosis for its use of an X-rayed camel referring to the "CAMEL" trademark for an anti-tobacco campaign, since public health concerns justify such campaigns. It is especially applicable here because the campaign is clearly directed to young people and realized in a form which is intended to be appealing to them. Furthermore, the Court decided that the campaign is not intended to promote cigarettes but to limit their consumption, and therefore excludes any likelihood of confusion in the mind of the public.

Finally, French courts definitely allow the reproduction and the imitation of trademarks in an exclusively humoristic purpose.

In a case where the "CITROEN" trademarks have been criticized during a satirical show broadcasted on the French TV channel "Canal +", the Supreme Court8 was of the opinion that the satire at stake was not to be considered as an act of disparagement since it was part of a satirical show and therefore excluded any likelihood of confusion between the reality and the satirical work.

The Necessary Limits of the Freedom of Expression

The property right pertaining to a trademark may constitute a limit to the freedom of expression.

In fact, the violation of a trademark or the image of a company may cause tremendous damage which will be all the more impactful, since the company has spent a large amount of time and money to promote its trademark.

Since the trademark constitutes an indisputable economic asset that may be affected by several events, case law ensures that any criticism directed to a trademark owner via its trademarks respects its property rights.

The criticism is allowed as long as it is sincere, honest and objective. Such obligation of objectivity is particularly reinforced for organizations dealing with customer information, and also for environmental organizations like Greenpeace.

When such criticism serves a disparaging purpose, it is necessarily diverted from its function of informing the public and must be sanctioned.

In the Areva case, the Paris Court of First Instance applied this reasoning and therefore rightly decided that by associating the "AREVA" logo composed of a capital "A" with a skull-like shadow and or with the body of a dead fish, Greenpeace clearly intended to disparage Areva’s trademark and activity since such reproduction of Areva’s trademarks convey the message that "Areva spreads death".

This decision constitute a major step towards the determination of the limits which must be brought to the principle of freedom of expression in order to prevent any abuses.9

Endnotes
1 The two prima facie decisions have been the subject of more extensive commentary in a French article co-authored by Emmanuel Baud and Stéphane Colombet. See "La parodie de marque, instrument de la liberté d’expression et du droit de critique" "Trademark parody, a tool for freedom of expression and right to criticize", LEGIPRESSE December 2002, No. 197, p. 220.
2 The two decisions of the Court of Appeal rendered on February 26, 2003 have been the subject of more extensive commentary in a French article co-authored by Emmanuel Baud and Stéphane Colombet. See "Droit de parodier une marque au nom de la liberté d’expression" "The right to parody a
trademark in the name of freedom of expression", LEGIPRESSE April 2003, No. 200, p. 41.
3 Paris Court of First Instance, January 30, 2004, PIBD 2004, No. 784, III, p. 229.
4 Paris Court of First Instance, July 9, 2004, available on the following Web site :
www.legalis.net.
5 Riom Court of Appeal, September 15, 1994, D. 1995, jur., p. 429.
6 Paris Court of Appeal, summary proceedings, June 16, 1998, No. 98/11220.
7 Paris Court of Appeal, May 22, 2002, available on the following Web site:
www.legifrance.gouv.fr.
8 Supreme Court, July 12, 2000, Commerce Electronique, Nov. 2000, p. 26.
9 An appeal has been lodged by Greenpeace before the Paris Court of Appeal against the decision rendered by the Paris Court of First Instance dated July 9, 2004.

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