Australia: Intellectual property and brand jamming: an international snapshot

Businesses have long observed their brands and trade marks used in public interest and other campaigns without permission. Sometimes referred to as 'brand jamming', businesses subject to the practice may be at risk of a negative reputational effect.

As a result, litigation asserting intellectual property rights against the proponents of such campaigns has taken place in many countries, including in a recent case in Australia. In this analysis, we explore international litigation examples and outcomes in Australia, the UK, US, Canada and South Africa.

Australia

In Australia, trade mark infringement requires that a mark be used in the course of trade (Trade marks Act 1995 (Cth) section 17), and to distinguish the user's goods or services. This requirement is, as evidenced by two key decisions, often fatal to claims of brand jamming. These decisions also 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' in response to a dispute about wages and working conditions on NRMA-owned ferries.

The NRMA brought claims of trade mark infringement, misleading and deceptive conduct, and injurious falsehood in relation to use of the NRMA lettering (National Roads and Motorists' Association Limited v Construction, Forestry, Maritime, Mining and Energy Union [2019] FCA 1419 [114]).

Although the use of the NRMA lettering was found to be deceptively similar to a number of the NRMA's registered trade marks, the use was not found to be use as a mark as the unions were not providing a service to members through the campaign and further were not providing the same class of services.

While 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 trade mark owner, 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 the unions had used the mark in a derogatory way.

As to the consumer law claims, the court found the use of the logo (and other alleged misrepresentations about the NRMA's actions) was not in trade or commerce, and further in relation to the logo, the context of the use made it unlikely that a reasonable person would be misled into thinking the NRMA had approved the union's use of the logo.

More recently, in 2021, Australian energy company AGL took action against environmental campaigning movement Greenpeace for its use of AGL's logo and branding in a campaign titled 'Australia's Greatest Liability', an invented 'backronym' which sought to comment on the company's attempts at greenwashing its environmental impact.

The campaign featured AGL's logo in a series of advertisements alongside taglines such as 'still Australia's biggest climate polluter' and 'generating pollution for generations'.

Greenpeace largely escaped liability¹ 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 for example through the use of colour and typography, juxtaposed with the parodic words 'Australia's Greatest Liability'.

Any use of copyright work for parody or satire must still be fair based on factors set out in the statute (Copyright Act 1968 (Cth) section 40(2)). The Court found that the use was fair, being for an un-commercial 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 trade mark", that is, 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.

United Kingdom

Similarly, trade mark law in the UK makes it difficult for brand owners to show that brand-jamming amounts to infringement of their trade marks. Accordingly, there are very few reported judgments in the UK relating to brand-jamming. In addition, until relatively recently the extent to which copyright law tolerated brand-jamming (otherwise known as 'parody' in the UK) was unclear.

The main piece of trade mark legislation in the UK, the Trade Marks Act 1994, makes no reference to brand-jamming. A brand owner's best hope is to show that the activity amounts to an infringement of their marks under section 10(3) of the Act. This requires a brand owner to show, amongst other things, that the defendant's activities took unfair advantage of their mark (by 'free riding' on it) or was detrimental to its distinctive character ('blurring') or repute ('tarnishing').

At least two additional elements of section 10(3) are potentially problematic for brand owners. First, the use 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. This 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 hold that the protection of political (or other similar) expression trumped trade mark 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 2022.² That case concerned a well-known television comedy show in the UK. The defendants were found to have copied the characters in the show, their backstories, jokes and catchphrases to provide live performances as part of an interactive dining experience.

The defendant's parody defence failed, the High Court holding 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 seeks to make genuine social comment. The High Court's decision is likely to be appealed.

United States

Despite being a highly litigious jurisdiction, it seems that brand jamming cases rarely make it to courts in the United States. 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 an older example from 1972, posters distributed by digital art company Gemini Rising Inc, depicting the Coca-Cola mark, with alterations made to the letters so that the poster read 'Enjoy Cocaine', were found to infringe Coca-Cola's trade mark rights.

The beverage company successfully obtained a preliminary injunction preventing further production of the poster after it submitted affidavit evidence that some persons of apparently average intelligence did attribute sponsorship of the posters to Coca-Cola.³

Although Gemini Rising had included its name in small lettering on the poster, this was not sufficient to outweigh the proof of confusion, at least for the purpose of the interlocutory proceedings.

In 2003, however, toy manufacturer Mattel was unsuccessful in its claim for copyright, trade mark and trade dress infringement against artist Thomas Forsythe (aka Walking Mountain Productions) in relation to a series of photographs produced by Forsythe containing Mattel's Barbie doll.⁴

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. The artist alleged that his photographs sought to critique the objectification of women and to lambast the conventional beauty myth which the Barbie brand is said to embody.

When determining whether Mattel's trade mark rights had been infringed, the Court of Appeals for the Ninth Circuit applied a First Amendment balancing test, which permits application of trade mark legislation only where the public interest in avoiding consumer confusion outweighs the public interest in free expression. In this case, the Court considered that the public interest in free and artistic expression greatly outweighed its interest in potential consumer confusion about Mattel's sponsorship of Forsythe's works.

The copyright infringement claim was also limited by freedom of expression considerations. The District Court agreed that Forsythe's works successfully turned the "symbol of American girlhood" that Mattel had curated in the doll on its head, creating a series of transformative and parodic works.

Also having regard to the fact that the works would have no effect on Barbie's commercial market, and that the public interest favoured allowing use for the purpose of artistic expression, Forsythe's use was considered fair.

Canada

In 2017, a case factually similar to AGL v Greenpeace came before the Canadian Federal Court. The defendant, Dr Cooperstock, was the owner of a website ('untied.com') which he had launched in order to display information about his negative customer experience with the plaintiff, United Airlines.

In addition to details of his own negative experience, Cooperstock published letters from other disgruntled United Airlines customers on the website. The name of the website was chosen as a play on the word 'United', highlighting the disconnection and disorganisation he perceived within the company. A globe logo covered with a frown, which strongly resembled the globe logo used by United Airlines, appeared in the top left-hand corner of the website.

United Airlines brought a claim for both trade mark and copyright infringement.⁵ Trade mark infringement requires use of a confusing trade mark in association with any goods or services (Trademarks Act (RSC 1985) section 20(1)). In contrast to the trade mark infringement claim in AGL v Greenpeace, the Federal Court found that Cooperstock was offering services through 'untied.com'.

Adopting a broad construction of the term, Phelan J found that the provision of information to disgruntled flyers was akin to phoning a 'consumer help line' in dealing with an airline. Finding that the UNTIED logo and frowning globe design were confusingly similar to United Airlines' marks, the trade mark infringement claim was established.

Interestingly, while Greenpeace's mimicking of AGL's corporate branding was said to contribute to its parodic purpose, replication of United Airlines' website layout with a humorous twist weighed against Cooperstock, contributing to the finding of trade mark use.

Cooperstock's defence to copyright infringement also failed. Despite a finding that his use of the marks was parodic, his Honour declined to accept that such use was fair. When considering the purpose of Cooperstock's dealing with United Airlines' copyright protected website, logo and globe design, the Court found that the defendant's intent was to embarrass and punish United Airlines for its perceived wrongdoings. Parody requires some element of humour or mockery and Cooperstock had failed to satisfy the Court that there was any intent for humour.

Judging United Airlines v Cooperstock against AGL v Greenpeace, it seems there is a fine, perhaps subjective, line between parodic humour, and 'mean spirited' critique when it comes to defence of brand jamming.

South Africa

In 2005, activist company Laugh it Off Promotions CC produced and sold t-shirts which featured corruptions of well-known trade marks and making social statements about those trade marks. One such venture included use of the trade mark CARLING BLACK LABEL BEER by substituting the original words with 'Black Labour White Guilt' in order to comment on the company's exploitation of black workers.

South African Breweries (SAB) brought a claim under anti-dilution provisions.⁶ 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 trade mark 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 repute of its mark, and that by selling t-shirts Laugh it Off was using the similar mark in the course of trade. However, in the Constitutional Court, it was 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 trade mark 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 the limited snapshot of cases above, businesses have had limited only success against brand jamming. An important take out for brand owners is to ensure ready availability of evidence to prove copyright ownership in addition to trade mark rights to ensure standing. Copyright infringement laws internationally, however, often in combination with constitutional free speech protections, appear to allow for successful defences for those engaged in social comment.

The authors would like to thank Gill Dennis and Tom Nener at Pinsent Masons for supplying the UK analysis.

Footnotes

¹ AGL Energy Limited v Greenpeace Australia Pacific Limited [2021] FCA 625.

² Shazam Productions Ltd v Only Fools The Dining Experience Ltd & Ors [2022] EWHC 1379.

³ Coca-Cola Company v Gemini Rising Inc 346 F. Supp. 1183 (1972).

⁴ Mattel Inc v Walking Mountain Productions 353 F.3d 792 (2003).

⁵ United Airlines Inc. v Cooperstock [2018] FCR 188.

⁶ Laugh it Off Promotions CC v South African Breweries International (Finance) BV (case CCT 42/04.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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