Can brand-jamming trigger IP infringement claims?

This May, for our monthly IP post, we decided to take a look at the practice of “brand-jamming” and its relation to IP infringement.

 

Brand-jamming is the practice of using a company’s name or logo in parodic campaigns rooted in public interest, to change the public’s perception about a given company and raise awareness as to some of its actions (for example claims related to the use of child labour, environmental damage, racial discrimination, etc.). NGOs commonly resort to this type of action to send their message across – for example, in May 2021, Greenpeace launchedan ad campaignagainst energy giant AGL (originally, the Australian Gas Light Company) and used AGL’s acronym and logo on posters and online campaign materials, renaming itAustralia’s Greatest Liability. AGL sued on grounds of IP infringement (alleging the unauthorised use of its logo and trade mark). This particular lawsuit was brought to Australian courts and governed by Australian law – and Greenpeace won.

 

How would this play out in Europe? So far, the European Court of Justice has not ruled on this topic – and national courts having to deal with this issue have not always reached conclusions going in the same direction.

 

In France for example, several legal actions were brought against NGOs and public interest activists in the early 2000s, on grounds of IP infringement. On 8 April 2008, the French Supreme Court (Cour de Cassation)ruled on two cases involving Greenpeace and brand-jamming:

 

In thefirst case, Greenpeace had been using parodic versions of the ESSO logo (e.g. E$$O) to publicly condemn the petrol company’s activities and the damage they inflicted upon the environment. First instance judges, appeal judges and finally the Supreme Court found that Greenpeace had not abused its freedom of expression in that case; the Supreme Court found that using parodic / modified versions of ESSO’s trade marks in a polemic context was a proportionate way of expressing criticism.

 

In thesecond case, Greenpeace had been conducting an online campaign against nuclear energy giant Areva, associating Areva’ new logo to a skull and reproducing it on the picture of a dead fish – as criticism of the company’s impact on the environment. Here, Greenpeace lost in appeal, where the judges considered that it had used the trade marks in ways that went beyond its allowed freedom of expression, casting discredit on Areva’s business as a whole. However, it won in front of the Supreme Court, which ruled that the NGO had acted in line with its mission, for the public interest and with proportionate means, and hence had not abused its freedom of expression.

 

Both cases exemplify the balance of rights which is usually considered in legal actions against brand-jamming activities: IP rights on the one hand (logos, company branding), freedom of expression in the service of public interest on the other. While Greenpeace secured a double win in France on the 8thof April, it had lost in appeal in the Areva case.

 

It is therefore important to know that there is always an element of legal uncertainty: an NGO willing to resort to brand-jamming practices should seek legal advice depending on the country it is based in, to get a proper assessment of the risks linked to this activity and of the national case law in this regard. In any case, it is important to keep in mind that the simple fact of engaging in such activities may trigger a legal action for IP infringement. Regardless of the outcome, responding to infringement claims may incur substantial legal expenses.

 

Generally speaking (once again, subject to the specifics of national laws and case law), it is possible to say that the activity of brand-jamming may have different consequences and risks in terms of IPR, depending on the nature of the activity itself. There are indeed two main types of IP infringement "risks" associated to two main types of brand-jamming practices:

 

Use of the registered trade markof the brand / company that the NGO or activist seeks to publicly call out.

 

This concerns cases where the NGO may roll out a campaign using a company’s registered trade mark – for example, using the company or brand name in speeches, discourses, pamphlets etc.

 

So, what could give rise to trade mark infringement claims? For trade marks, IP infringement will occur when using someone else's registered trademark (or a similar sign) in trade, to sell similar or identical products or services.

 

Consequently, only using a company name in brand-jamming activities (the name without the logo or creative elements attached) will usually be OK from a trade mark infringement perspective, because there will be no use of that name in trade / to sell competing products or services. Here, the NGO will be exercising its freedom of speech without trying to confuse customers as to the origin of any goods / services on the market. In most cases, calling out the harmful activities of a specific corporation will require using their company name or product names – these uses will most likely be considered as proportionate in view of the mission of the NGO (calling out public interest issues).

 

Use of the logo of the brand/company that the NGO or activist seeks to publicly call out. In many cases,it has to be assumed that logos (aside from being potentially registered as trade marks) can be copyrighted.

 

This concerns cases where the NGO would be using a company’s copyrighted logo or corporate identity – for example, reproducing it and further disseminating it (on posters, online...) in campaign materials.

 

So, what could give rise to copyright infringement claims? For copyright, IP infringement will occur when performing certain acts upon the copyrighted work, such as copying it, disseminating it / communicating it to the public without the owner's consent, etc.

 

Consequently, using a company / brand's logo in brand-jamming activities (for example reproducing it on fake ad campaign materials to denounce a large corporation's actions) may be actionable on grounds of copyright infringement, if the logo is protected by copyright. Here (when it comes to the scope of copyright protection), it will be irrelevant whether or not the NGO is using it in the course of trade: it may end up being liable for copyright infringement all the same.

 

In the US, when faced with copyright infringement claims, companies such as Greenpeace usually go on to rely on a broad copyright exception called "fair use" - they argue that their use of the copyrighted work falls under this exception (= an allowed use of third-party works), for example because they are shedding light on public interest matters.

 

In the EU, there is no such thing as the "fair use" exception. Copyright exceptions do exist, but they are narrower in scope. And, importantly, they are not implemented in the same way in all member states. A lot of exceptions are optional (i.e. each state is free to implement it in national law or not) or, if mandatory, are implemented indiverging ways.

 

So here, it is important to keep in mind that there may be legal uncertainty: an NGO may be able to use a company's logo and escape copyright infringement claims if it can invoke an exception (for example theexception for parody or pastichewhich is sometimes invoked in such cases) - but there is uncertainty as to the outcome. Knowing for sure whether specific exceptions can be relied upon in a particular country will depend on the law and case law of that country, so local legal advice will be of paramount importance.

 

To conclude, in terms of IP, it will usually be safer to simply use the target company’s corporate or brand name in such controversial campaigns, as opposed to a logo or to the company’s visual identity – this would avoid copyright infringement claims and the burden and uncertainty of having to prove that a copyright exception may apply.

 

Finally, it is essential to keep in mind that other legal aspects (non-related to IP) may come into play in such activities - for example, civil liability claims if the NGO’s actions damage the company's reputation. For this reason, it is recommended to consult a lawyer with knowledge about such activities before starting.