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When brands meet art, public policy and genericide

In the first in a series of articles by members of the MARQUES IP Outer Borders Team, Stella Syrianos, Laetitia Lagarde and Nikos Prentoulis discuss the tensions between trade mark rights and freedom of expression

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The IP Outer Borders Team of ­MARQUES, the European Association of Trade Mark Owners, follows emerging intellectual property issues and social and cultural changes affecting brands. One fundamental change is that consumers today feel they own, or at least co-own, their favourite brands. In this five-part series, members of the MARQUES IP Outer Boarders Team examine different manifestations of this evolving dynamic between consumers and brand owners. The first article focuses on conflicts arising when trade mark rights meet art, public policy and genericide. All the articles were first published on the IP Outer Borders Team page of the MARQUES website, which can be accessed at

We talk about brands every single day, not only as lawyers or even consumers or competitors. Brand names populate our homes, workplaces, and environs. They permeate our real and virtual worlds.

We employ brands as part of our artistic expression, be it in a neutral, aggressive or critical manner. We engage with or even attack brands with our social media tools. We treat them as words and use them to describe new concepts, habits and developments in our lives. We alter them, and give them nicknames. And when we claim them as part of our vocabulary, we sometimes extinguish their owners' rights in them.

In this paper we consider three aspects of the intersection between trade marks and public discourse. First, we examine artistic uses of trade marks, providing examples of how courts have drawn the line between lawful fair use and unlawful infringement. Next, we look at some more unusual uses of trade marks by the public, and the state responses, including those of IP offices. Finally, we discuss how talk can turn trade marks into generic terms, free for all to use. The common thread? These are all terrains where freedom of expression may trump trade mark rights.

Artistic use of trademarks: freedom of expression or trade mark infringement?

"If this were a sci-fi melodrama, it might be called Speech-Zilla meets Trademark Kong" (Circuit Judge Kozinski in Mattel v MCA Records).

When we listen to Janis Joplin belt out "Oh Lord, won't you buy me a Mercedes-Benz" or Freddy Mercury sing "She keeps her Moet et Chandon in her pretty cabinet", we are unlikely to suspect that Janis Joplin and the carmaker entered into a joint venture or that Freddy Mercury had an endorsement deal with the champagne makers.

Yet when one person's art incorporates another's trade mark, a legal question lurks as to whether the mark may be used without permission. The answer, which may differ according to jurisdiction, involves the balancing of an artist's freedom of expression rights with a trade mark owner's IP rights.

Let's first take a look at some illustrations of trade marks appearing in artistic creations. The pop art movement provides many good examples.

The pop art movement dates back to the 1950s and gave rise to artists employing aspects of mass media and popular culture, including trade marks, in their artistic works. The first artwork to incorporate the word "pop" (and possibly the origin of the term "pop art") was produced by Eduardo Paolozzi in his collage I Was A Richman's Plaything, incorporating elements such as cut-up images of a pin-up girl and the Coca-Cola logo (see figure 1).

Figure 1: Eduardo Paolozzi, I was a Rich Man’s Plaything (1947), on display at Tate Gallery, Liverpool, United Kingdom

Edward Ruscha painted a dramatic representation of the Twentieth Century Fox logo and even identified it as a trade mark in the title of the work (figure 2).

Perhaps the most famous illustration of a trademark appearing in artwork is Andy Warhol's iconic series of Campbell Soup Cans paintings (figure 3).

Warhol has been quoted as saying: "I used to drink it. I used to have the same lunch every day, for 20 years, I guess, the same thing over and over again." Pictured in figure 4 are some more recent illustrations of trademarks appearing in artwork.

In the case of Andy Warhol's timeless and well-known soup cans, the Campbell Soup Company did not send any demand letters or file any infringement suits. Instead, its product marketing manager famously wrote a fan letter to Andy Warhol in 1964 expressing the company's admiration for his work and informing him that he would be receiving a few courtesy cases of Campbell's tomato soup. Perhaps the lack of legal fallout can be attributed to Andy Warhol's role in making Campbell's tomato soup a legend in a can, a famous icon for much longer than the usual 15 minutes. Had Campbell's Soup Company sued, could it have prevailed, or would Andy Warhol have defeated such a claim by invoking his artistic freedom of expression?

Figure 2: Edward Ruscha (Amercan, 1937-), Large Trademark with Eight Spotlights, 1962, Whitney Museum of American Art, New York, NY, USA

Figure 3: Campbell’s Soup Cans by Andy Warhol, 1962. Displayed in Museum of Modern Art in New York. (Photo credit: Wikipedia)

To gain some insight, we turn to a number of US appellate court decisions, starting with a 1989 landmark ruling relating to the balancing of trade mark and freedom of speech rights.

“Trademarks often fill in gaps in our vocabulary and add a contemporary flavor to our expressions. Once imbued with such expressive value, the trademark becomes a word in our language and assumes a role outside the bounds of trademark law .… The First Amendment may offer little protection for a competitor who labels its commercial good with a confusingly similar mark, but trademark rights do not entitle the owner to quash an unauthorized use of the mark by another who is communicating ideas or expressing points of view. 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. Simply put, 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” (Mattel, Inc v MCA Records, Inc (296 F 3d 894, 900 (9th Cir 2002) (Kozinski, J), cert denied, 537 US 1171 (2003); (citations and internal quotations omitted).

The Rogers test

Although it did not involve a trade mark per se, Rogers v Grimaldi 875 F 2d 994 (2d Cir 1989) is a leading case routinely cited to defend the use of trade marks in artistic creations in the US. This test is based upon the constitutional guarantee of free speech and has been applied to movie, book and song titles as well as to the content of artistic works.

Hollywood star Ginger Rogers sued the producers of the Federico Fellini film "Ginger and Fred". The film revolved around the lives of two fictional Italian characters who imitated the dance routines of Ginger Rogers and Fred Astaire and who become known as "Ginger and Fred". Since Ginger Rogers had no part in the film, she claimed the title falsely implied that she was endorsing or was featured in the film. The Second Circuit Court of Appeals in New York decided the title did not infringe upon Rogers's rights based on this two-part test that the title had artistic relevance to the underlying work of art (the film's plot) and the title was not misleading as to the source or content of the film.

fig4b fig4c
Figure 4: Mel Ramos, Candy #2, 2014, Galerie de Bellefeuille, Montreal, Quebec, Canada Figure 4:Tom Martin, Contemplation, 2012, Plus One Gallery, London, UK Figure 4:Jonathan Seliger, Second Engagement, 2012, Galerie de Bellefeuille, Montreal, Quebec, Canada (automotive enamel on bronze)

Two brand owners who are known to be especially vigilant enforcers of their trademark rights, Mattel and Louis Vuitton, have made much of the law in this area. In Mattel, Inc v MCA Records, Inc, Mattel unsuccessfully sued MCA Records for trade mark infringement over a song by Danish group Aqua named "Barbie Girl" with lyrics that mocked Barbie. The song, a tongue-in-cheek commentary on a Barbie doll's "plastic" way of life, topped the charts worldwide, particularly in European countries. On the band's Aquarium CD featuring the song, a footnote indicated "The song 'Barbie Girl' is a social comment and was not created or approved by the makers of the doll."

Applying the Rogers test, the Ninth Circuit Court of Appeals in California ruled that the use of Mattel's Barbie trade mark both in the song and title was meant to describe the underlying work (the song) and the title did not explicitly mislead or otherwise suggest that Mattel produced the work.

In 2003, Mattel again sued to protect its rights in its Barbie dolls, with similar results. In Mattel Inc v Walking Mountain Prods 353 F3d 792 (9th Cir 2003), photographer Thomas Forsythe had created a series of artworks entitled "Food Chain Barbie" portraying nude Barbie dolls under attack by household appliances. He depicted Barbie dolls in such unenviable positions as being roasted in a rotisserie oven or impaled in a fondue pot (figure 5).

Figure 5: “Food Chain Barbie” ©Thomas Forsythe

Forsythe considered his artwork social commentary on the ubiquitous beauty myth perpetuated by Barbie dolls. He described his intent to "critique […] the objectification of women associated with Barbie," and to "lambast […] the conventional beauty myth and the societal acceptance of women as objects because this is what Barbie embodies".

In relation to trade mark protection, the Court of Appeals for the Ninth Circuit reiterated the reasoning of the MCA Records decision, emphasising once again that freedom of speech rights come into play when marks transcend their identifying purpose, enter public discourse, become an integral part of our vocabulary and the public imbues such marks with meanings beyond their source identification function.

Applying the Rogers test and citing the MCA Records decision, the Court ruled against Mattel. Forsythe's use of the Barbie mark was clearly relevant to his work. The Barbie mark in the titles of Forsythe's works and on his website accurately described the subject of the photographs, which in turn, depicted Barbie and targeted the doll with Forsythe's parodic message. The photograph titles did not explicitly mislead as to Mattel's sponsorship of the works. Accordingly, the public interest in free and artistic expression greatly outweighed its interest in potential consumer confusion about Mattel's sponsorship of Forsythe's works.

In 2012, the Rogers test resulted in French fashion house Louis Vuitton losing its trade mark infringement case over the appearance of a counterfeit Louis Vuitton bag humorously referred to as a "Lewis Vuitton" bag in the 2011 bachelor-party-gone-wrong comedy film The Hangover Part II (figure 6).

In that case, Louis Vuitton Mallatier SA v Warner Brothers Entertainment Inc 868 F Supp 2d 172 (SDNY 2012), the federal district court held the use of a knock-off Louis Vuitton bag was an artistic use because it had artistic relevance to the plot as a humorous device. It helped unveil the character of its wearer, Alan, a "socially inept and comically misinformed character" and it was not explicitly misleading because movie viewers would not believe that Louis Vuitton produced or endorsed the film.

Notably, the Court reached this conclusion on a pre-trial motion to dismiss stating: "In a case such as this one, no amount of discovery will tilt the scales in favour of the mark holder at the expense of the public's right to free expression."

Figure 6: The Hangover Part II

University trade marks: an artist's legal saga

University of Alabama Board of Trustees v New Life Art 683 F 3d 1266 (11th Cir 2012), is yet another illustration of how US courts tackle the use of trade marks in artistic works. Since 1979, artist Daniel Moore had built his career painting scenes of the University of Alabama's Crimson Tide football team.

At various times between 1991 and 1999, Moore and the University had been in a licensing relationship for official merchandise bearing both Moore's paintings of football scenes and University of Alabama trade marks, and the parties shared the proceeds of the sales. During that time, Moore also continued to create paintings featuring scenes of the University's football team outside his licensing arrangement with the University.

In 2002, the University informed Moore that he would need a licence for any University of Alabama related works that featured the University's trade marks. Moore disagreed that he needed permission to portray historical events in his paintings and prints.

In 2012, the Eleventh Circuit Court of Appeals upheld the lower court's ruling that Moore's painting and prints were embodiments of artistic expression entitled to free speech protection. It deemed his depiction of the University's uniforms artistically relevant because the "uniforms' colors and designs are needed for a realistic portrayal of famous scenes from Alabama football history." In addition, the Court decided there was no evidence that Moore ever marketed an unlicensed item as "endorsed" or "sponsored" by the University or explicitly stated that such items were affiliated with the University.

The Court reversed the lower court's decision by protecting Moore's prints on calendars. As for the reproduction of Moore's paintings on other merchandise, the appeals court also overturned the previous decision prohibiting Moore's art on these products but remanded this question back to the district court because disputed facts remained on contractual issues related to Moore's depiction of the University's uniforms on mugs, flags, towels, t-shirts and "other mundane products."

On September 27 2013, US District Court Judge Abdul Kallon ruled in favour of Moore and dismissed the University of Alabama's case against him regarding breach of contract and unjust enrichment. Pushing the trade mark battle into its ninth year of litigation, on March 17 2014 Judge Abdul Kallon ordered the University of Alabama to pay the majority of Moore's court costs.

Blurred rights: trade marks and social commentary

Outside the United States, where freedom of speech and expression are constitutional rights, the line between fair use of a mark and infringement is often less clear, as illustrated by the protracted legal proceedings between Louis Vuitton and Danish art student Nadja Plesner. Plesner first used her striking image of a starving child carrying a small dog and Louis Vuitton inspired bag in 2008 in a Simple Living campaign meant to draw attention to the genocide in Darfur (figure 7)

Figure 7 Figure 8

She also printed the drawing on T-shirts and posters that were sold to raise money for the organisation Divest for Darfur. Her thought was: "Since doing nothing but wearing designer bags and small dogs dressed in pink apparently is enough to get you in the news, maybe it is worth a try for people who actually deserve and need attention." The artist was quoted as saying "I started this campaign because of the distorted way the media prioritizes between big and small world news... How can Paris Hilton make more front covers than the genocide in Darfur?"

Louis Vuitton considered the artist's unauthorised use as an infringement of its registered Community design protected pattern (figure 8).

On March 25 2008, before the Tribunal de Grande Instance in Paris, Louis Vuitton successfully obtained an ex parte injunction and the artist, who thereafter ceased selling her t-shirts and posters, faced a €5,000 daily fine for each day of non-compliance with the injunction.

In 2010, Plesner reincarnated her Simple Living boy in her painting Darfurnica, a modern version of Picasso's Guernica, wherein the bag formed part of a larger artistic work containing other elements such as various famous figures and other trade marks (figure 9)

Figure 9: Darfurnica, 2010. Oil on canvas, 350 x 776 cm

The artist exhibited the Darfurnica painting for the first time in January 2011, in the Odd Fellow Palace in Copenhagen as a part of her show, INTERVENTION. Louis Vuitton once again sought relief, this time before the District Court of The Hague. On January 28 2011, the Court issued an ex parte injunction against Plesner and her gallery prohibiting the further infringement of Louis Vuitton's registered design in her Darfurnica painting or Simple Living related artwork.

The Court was not particularly pleased with the gallery's use of a cardboard cut-out display of the Simple Living boy at its entrance (figure 10).

The Court also ordered a €5,000 daily fine for each day the infringing material was displayed in the gallery or online.

Plesner sought to have the ex parte injunction overturned based on her belief that she had a genuine right to freedom of artistic expression that included references to status symbols in her artwork. On May 4 2011, the District Court of The Hague sided with Plesner by ruling that her right of artistic freedom trumped Louis Vuitton's exclusive rights in its Community design. The Court stated that the viewer of Plesner's artwork would not infer that Louis Vuitton was involved in the Darfur civil war and that the use of the well-known LV pattern was symbolic use. The Court also opined that the "eye-catching" use of the bag did not render a lawful expression of artistic freedom unlawful (Case number 389526/KG ZA 11-294).

The trade mark disputes between Plesner and Louis Vuitton lasted several years and generated extensive discussions about Louis Vuitton's decision to pursue this fight. Did Louis Vuitton, a known art patron, protect its goodwill by pursuing these claims or hurt it?

Designer spoofs and hipster streetwear

One humorous example of the tension between trade marks and social commentary involves designer parody shirts.

Brian Lichtenberg is a Los Angeles based designer best known for remixing luxury fashion brands. For example, his infamous Homies T-shirts and hats spoof the Hermès logo. He also created other designer parodies such as Feline (a spoof on Céline), Bucci (a spoof on Gucci) and Ballin (a spoof on Balmain) (see figure 11).

Figure 10 Figure 11: Brian Lichtenberg

Interestingly enough, this continuing case was not filed by the owner of a spoofed brand but instead pits Brian Lichtenberg against his younger brother and former collaborator Christopher Lichtenberg.

In 2013, Brian Lichtenberg filed a $100 million lawsuit against his brother, Christopher, who among other complaints is being accused of stealing the Ballin design for his own clothing line Alex & Chloe. While the case is far from over, Brian Lichtenberg achieved an early victory in July 2014, when a US district judge in California granted Brian's motion for a preliminary injunction, ordering Christopher to cease all sales of products bearing the Ballin designs and to remove from his website any photos of celebrities wearing his brother's designs "in any manner that would lead others to believe that such persons are wearing" Alex & Chloe products (Brian Lichtenberg LLC v Alex & Chloe, Inc et al No CV 13–06837, 2014 WL 3698317 (CD Cal July 25 2014)).

Irrespective of who copied whom, it's difficult not to see the irony in a dispute over alleged trade marks that are themselves spoofs of other brand owners' better known brands.

Freedom to use brands and slogans by the community

As a result of the increasing importance of brands in society, they have gradually assumed roles beyond their original function as signatures for their makers. When brands become conversation factors, their owners sometimes lose the ability to control the use (and misuse) of their brands. Courts and administrative agencies are taking differing approaches in balancing the competing concerns of brand owners and the general public on issues involving the adoption of trade marks by individual members of the public to identify and express themselves.

What's in a name?

A name is never just a name, especially when it is a brand. In France, public authorities have intervened to prevent parents from choosing a brand name as a baby name. In 2014, a French couple decided to name their daughter Nutella and faced opposition by the French public officer who recorded the child's name. Ferrero SpA – the owner of the famous Nutella brand hazelnut spread (figure 12) – did not protest (nor, presumably, could it, since the name was not being used or registered as a trade mark). Instead, according to Article 55 of the French Civil Code, a French judge may change a person's name where it does not conform to the child's interest.

Figure 12 Figure 13

The public prosecutor argued that the name "Nutella" given to the child corresponded to the trade name of the spread and it was contrary to the child's interest to be called a name which could only lead to teasing or disparaging thoughts. The French Family Court ruled that the child should be renamed "Ella"(Valenciennes Court, November 2014).

In 1999, the Renaud family fended off legal action to prevent them from naming their daughter Megane, even though local authorities said it sounded too much like the famous car model "Renault Megane" (Court of Appeal Rennes, May 4 2000, figure 13). This case triggered some debate in the French senate regarding the influence of judges on private life, specifically parents' freedom to choose their children's names.

Turning the table, in 2010, the Association for the defense of our names (DNAP) and two families with the surname Renault and daughters named "Zoe" took legal action against the French car manufacturer for the use of the name Zoe Renault for commercial purpose and a new electric car model. Cedric Renault argued that if Renault named the car model Zoe, it would make his daughter's life a "nightmare". The complaint was rejected.

Trade mark infringement was not an issue in any of these cases, but they reflect attempts to balance the interests of the individual, general public and brand owner, and confirm that the individual's rights to privacy and to freedom of expression do not always prevail.

Slogans of solidarity

The notion that trade marks enrich our vocabulary and discourse is well-illustrated by a recent example (figure 14).

Joachim Roncin, a French journalist, created this simple graphic logo, in the same font and layout as Charlie Hebdo's masthead, and disseminated it on social media to express solidarity with the French cartoonists killed by Islamic extremists as retaliation for their magazine cover depicting the Prophet Mohammed. The slogan and logo were immediately embraced by millions around the globe including the European Parliament (figure 15).

Figure 14 Figure 15

Roncin's slogan was the object of numerous trade mark applications in the days following the tragic event. The Benelux Office, French INPI and EUIPO all refused the registration because the slogan could not be considered a trade mark, given its wide use by the community, and thus was excluded for lack of distinctiveness (Article 7 (1) (b) CTMR). Second, the registration of such a trade mark was considered contrary to public policy or to accepted principles of morality (Article 7 (1) (f) CTMR). Granting trade mark protection would be adverse to freedom of expression and freedom of speech, which was the rationale behind the slogan in the first place.

In the US, applications to register Boston Strong and Occupy Wall Street have similarly been refused on the ground that they do not function as trade marks. They were not considered to designate a single source of origin.

Genericised brands – how talking brands can mean deconstructing brands

As every brand owner knows, the public can build a brand it loves by talking it up, but it can also destroy a brand it loves by adopting the brand name as a common word. Dictionaries are the classic repository of "genericised" brand names: registered trade marks that have become synonymous of the products and/or services they designate.

Indeed, as a result of their success, for lack of a better word for the relevant goods, or sometimes due to absence of an alternative descriptor, the distinctiveness of many brands has risked becoming lost at the hands (or perhaps mouths) of consumers. We wonder which Jeep to buy, but there is no more than one, if you ask Fiat Chrysler Automobiles. We use an Escalator to take us to the next level of a shopping centre, not knowing that it was once Otis Elevator Company's registered trade mark for a "conveyor transport device for carrying people between floors".

We are no less cruel to brands in the office: We used to take down notes with Bics on Post-Its, never calling them "writing instruments" or "small pieces of paper with a re-adherable strip of glue on their backs, made for temporarily attaching notes". Most notably, we would talk of making a "Xerox" rather than a photocopy.

Figure 16

Genericised brands are omnipresent: In the gym, we may go to a Pilates session, or we may maintain our drink's temperature in a Thermos, not a vacuum flask. Dealing with paper cuts, we look for a Band-Aid not an "adhesive trauma bandage". Of course, in Greece, Band-Aid is a word for nothing, whereas Traumaplast, the Greek equivalent, is at risk of becoming generic on account of its popularity with consumers.

Market, cultural or linguistic particularities around the world can produce interesting stories. Bimbo is probably the wrong word to designate bread in English-speaking countries, but it is a very successful brand in Spain, to the point of risking becoming generic. In France, you will be offered a handkerchief if you ask for a Kleenex, while in Greece, asking for Klinex (pronounced the same way as Kleenex) will only get you chlorine bleach, and, interestingly, Kleenex and Klinex are misused as generic terms (figure 16).

The evolving relationship between consumers and brands

MARQUES IP Outer Borders Team Chair Lisa Pearson introduces the series of papers on the evolving relationship between consumers and brands.

As stated in the IP Outer Borders Team Mission Statement: "Change frequently alters how we perceive, use and protect trade marks, and even what qualifies as a trade mark. This team evaluates social and cultural trends and emerging issues affecting registered signs, brands and related intellectual property rights – mindful that we can often add insight when we explore the intersection between trade mark law and other fields and disciplines."

In the course of discussing a host of different topics within our broad mandate, the IP Outer Borders Team observed a common theme emerging: the issues all signalled a fundamental change in the dynamic between consumers and brands. Brand owners formerly used mass media to deliver a message to consumers, but, with the fragmentation of media and the advent of new technologies, consumers are talking back. And smart brand owners are listening. Consumers are no longer passive recipients of information about brands. They are playing an increasingly active role in an increasingly reciprocal relationship. They are shaping the brands.

Over a decade ago, Kevin Roberts, CEO Worldwide of Saatchi & Saatchi, identified a future beyond brands, many of which, in his view, have become commoditised. In his provocative interviews and writings, Roberts contends that companies should strive to create "Lovemarks" that spark and sustain an emotional connection with consumers: "Trustmarks come after brands; Lovemarks come after Trustmarks…. Think about how you make the most money. You make it when loyal users, heavy users, use your product all the time…. So having a long-term Love affair is better than having a trusting relationship."

According to Roberts, Apple, Harley-Davidson and Virgin Atlantic have succeeding in forging that kind of long-term love affair with consumers. They all meet his three criteria for Lovemarks:

  • Lovemarks connect companies, their people and their brands
  • Lovemarks inspire Loyalty Beyond Reason
  • Lovemarks are owned by the people who love them.

(Kevin Roberts, Lovemarks 78 (Powerhouse Books 2005)).

That last statement, in particular, rings even louder and truer today. Consumers seem to think they own, or at least co-own, their favourite brands.

Clearly, technological innovations have fundamentally changed our world generally and the fields of branding and marketing specifically. Early internet advertising mimicked conventional print advertising, reformatted in banners and pop-ups. With the emergence of powerful search engines such as Google, users could input information and get useful information in return – along with targeted advertising correlated to the search. That two-way exchange became more robust when social media took the world by storm, giving every user a voice and multiple platforms to share it with a network. Smartphones put computers, with all of their enhancements and then some, in users' pockets. Smart watches and other wearable tech products even eliminate the need for a pocket.

Consumers today receive content from an endless variety of sources, create their own content and share it. By activating GPS trackers and downloading apps, they command information keyed to their physical locations and specific interests when and where they want it. Emerging technologies are aiding and abetting a further evolution. With the Internet of Things and 3D printing, individuals will be able to design, manufacture, personalise and interconnect products to their own specifications. Already, we are hearing the new buzzword "prosumer" to identify consumers who produce what they consume.

In short, more than ever before, consumers can customise their own inflow and outflow of information. And in a world saturated by branded products and services, much of that information will inevitably be about brands.

Millennials, the generation of people now 18 to 34 years old, are digital natives, at the forefront of this seismic societal change. According to The Boston Consulting Group's survey report The Reciprocity Principle: How Millennials Are Changing the Face of Marketing Forever (2014), Millennials engage with brands "far more extensively, personally and emotionally" than prior generations. Moreover:

They are influencing and accelerating shifts in consumer attitudes, spending habits, and brand perceptions and preferences among Gen-Xers and even baby boomers. As a result, this generational transition is ushering in the end of consumer marketing as we have long known it.

The conventional, linear framework that most companies have used to manage brand engagement no longer holds. Executives and marketers must embrace the new reality: marketing is an ecosystem of multidirectional engagement rather than a process that is controlled and pushed by the company.

The Boston Consulting Group's study confirms that, with Millennials leading the charge, consumers now "expect a two-way, mutual relationship with companies and their brands". They seek brands that speak and listen to them. They choose brands that reflect and project their personal values. And among the values that resonate most with these consumers are individuality, authenticity, sustainability, transparency and social responsibility.

Some of the topics the IP Outer Borders Team explore in this series of papers may seem like passing fads, or (to use an old cliché) old wine in new bottles. We are convinced, however, that they reflect a fundamental change that brand owners must accept or, even better, embrace. Brand owners no longer have the same power and control over their trade marks and public images they had in the past. Consumers are not only demanding more of brands, they are taking ownership of them. "One thing is certain", says Interbrand's Jason Baer, "the days of complete and total jurisdiction over your brand are gone. You're playing with others now, and the same rules you'd apply to any collaborative environment apply here."

Brand owners need not perceive this as a threat. In his entertaining article "Branding explained to a child," Luc Speisser, a managing director of the global branding firm Landor, tells a story about how he answered his six-year old son's question "Daddy, what do you do at your job?" Speisser first buys some time to collect his thoughts by giving his son his iPhone and letting him play a soccer final on a FIFA app. Then, by having the child identify the characteristics of his own favourite brands such as Lego, Speisser establishes that a brand is like a person, and the brands you love are like a good friend. But, he reminds his son, not all friends are friends for life:

DAD: [I]f you want to keep your friends, you not only have to stay special to them, but you also have to pay attention to them. It's the same with brands. It's not easy! There are always new brands that are trying to be cooler than the ones that already exist. Also, people change and their tastes change. C'est la vie! Brands have to keep trying to understand their customers and give them what they need.

SON: And that's your job?

DAD: Exactly. I help brands find and hold on to what makes them different and relevant. When a brand is both, the brand is strong.

Keep trying to understand people and give them what they need. That seems like fairly intuitive advice for anyone trying to sustain an important relationship. And that seems like particularly salient advice for brand owners trying to woo consumers in the Digital Age.

Lisa Pearson

Lisa Pearson is a partner of Kilpatrick Townsend & Stockton in New York

Implications of genericism

Some trade marks used by the public as generic terms have been cancelled, some are still around vigorously or reluctantly defended, but all are example of how consumers have, over the years, up- or down-graded brands, depending on one's perspective. Marketing departments and advertising agencies used to consider a genericised brand name the unequivocal sign of success; in some cases they still do. (Twitter, for example, is happy when you "tweet" – as long as you are using its platform and not someone else's to do so.)

In legal departments, however, no one's cheering: a generic brand is a contradiction in terms. A term that becomes the common descriptor of the goods and/or services it designates is an unenforceable trade mark. In other words, it is an asset outside its owner's grasp and control.

An interesting 2013 survey in 27 jurisdictions by MARQUES Famous and Well Known Marks team demonstrates the perils of genericide. And if anyone still asks why the long face in the face of free and ubiquitous advertisement, the answer is that use of the trade mark is also free and all over the place for everyone else, including those who would otherwise need the trade mark owner's licence for such use. And how can you quantify the financial value of a genericised brand? It is famous but diluted. Even if the mark is registered, it may be cancelled the next day.

To mitigate such risks, some marketing departments had to use their creativity in another, at times slightly controversial, manner such as the Kleenex advertisement above and Xerox advertisement below in figure 17.

Figure 17

Genericide is also why, in 2013, Google objected to the Swedish Academy's endorsement of the neologism "ogooglebar" ("ungoogleable") because the Academy defined it as a "term not found using internet search engines", rather than specifically referencing Google.

Social media play their part in placing trade mark owners in an increasing tougher spot. In the past, the genericide could take decades, and was difficult to encounter in markets or industries with increased competition. So, brand owners were left with adequate, if not ample, time both to enjoy the huge success of the trade mark and to design a legal and business strategy to address the risk. But the Google example demonstrates how such time may be eclipsed by the lightning speed of social media.

Impossible as it may seem, there have been cases where trade marks found to be generic in court were later reinstated as trade marks, again with the court's seal of approval. In Singer Mfg Co v Briley (207 F2d 519 (5th Cir 1953) and Goodyear Tire & Rubber Co v Topps of Hartford Inc (247 F Supp 899 (D Conn 1965), respectively, US courts brought back to trade mark life Singer for sewing machines and Goodyear for tyres, a good half century after they were regarded as generic, in different cases. The idea was that, in the meantime, the marks were once again functioning as source indicators, obviously on account of their owners' considerable efforts. Perhaps competitors' potentially rising shares in the relevant markets helped change consumer perceptions. In the Singer case, the court put it eloquently: "[B]y the constant and exclusive use of the name 'Singer' in designating sewing machines and other articles manufactured and sold by it and in advertising the same continuously and widely – [plaintiff] recaptured from the public domain the name 'Singer'."

In 2001, in Gaylord Entertainment Company v Gilmore Entertainment Group LLC (Case No 3:99-0629 (MD Tenn 10/1/01)), Opry (once generic for a country music show) reclaimed its trade mark title, once the plaintiff produced sufficient evidence that consumers considered it a brand.

Best practices

So how should brand owners respond to use of the public's increasing sense of entitlement to use brands however it likes?

The mere use of a trade mark in an artistic work does not automatically trigger liability. There are countervailing freedom of expression rights to be considered. Brand owners should refrain from viewing trade mark infringement claims involving artistic works as open-and-shut cases and should instead consider whether the use is intimately related to artistic expression or is simply designed to exploit for commercial purposes the goodwill the brand owner has built in its mark.

Prior to embarking on costly litigation, brand owners would be well-advised to assess the following factors and consult with local counsel in the countries where the issue has arisen:

  • Does the mark transcend its source-identifying purpose to the point of having entered our verbal or visual vocabulary?
  • Is the use of the mark for a socially beneficial purpose, not simply to call attention to the artist or the work?
  • Is the mark a distortion of a famous mark used for a commercial purpose under the guise of conveying socially conscious messages?
  • Does the use dilute the fame of the mark or tarnish its reputation?
  • Does the use of the mark create a perception of sponsorship or endorsement?
  • Is the mark used on merchandise such as mugs, keychains and T-shirts which could more readily lead to confusion or trademark dilution?
  • Are there other enforceable IP rights such as copyright infringement in the case of design marks?

Whether or not free speech rights trump trade mark rights will ultimately depend on the facts of each case. Much like the appreciation of the artistic work itself, the legal outcome may well depend on the eye of the beholder.

When it comes to maintaining the strength of a brand against genericism:

  • Use trade marks as an adjective; not as a noun or a verb.
  • Use the product's generic name together with the trade mark, or, for innovators introducing a new product category, create a generic name to be used with the trade mark.
  • Designate the trade mark as such; TM or R symbols can go a long way.
  • Be fearful of variations of the trade mark.

Brand owners are facing their own case of "la mort de l'auteur" as consumers have assumed an increasingly active role and voice as authors shaping the brand. Genericised brands are the most extreme example of consumers taking charge over brands and, of course, are nothing new. What is new, for better or worse, is the speed of the genericide process in the digital, largely interconnected, world we live in. On the bright side, brand owners can also deploy social media to teach consumers how to talk about their brand, including through consistent proper use and, if need be, well-designed educational campaigns, if the public starts misusing the mark.

Balancing act

In today's world, individuals no longer live in demographic silos. They are surrounded by brands, connected by the worldwide web and accompanied throughout the day by devices empowering them to broadcast their views. They enjoy the power and freedom to talk about brands across various platforms, be it in artistic works, in social media or simply among family, friends and colleagues. Many brand owners welcome that conversation.

Yet, when people talk about brands, they can adversely impact brand equity. Use in artistic works may lead to unwelcome brand associations. Use by the community may be flattering or may be offensive and as such must be balanced with public policy considerations, for better or worse. And when a brand name enters common parlance, it may lose its significance as a source identifier altogether.

Managing these risks entails striking a balance between trade mark rights and freedom of expression. This balancing act will continue to challenge brand owners for the foreseeable future. Our digital and largely interconnected world has given rise to a new breed of consumers with new platforms to exercise their power over brands, to get the conversation started and to keep it going.

Nikos Prentoulis   Stella Syrianos   Laetitia Lagarde

© MARQUES 2016. Stella Syrianos is a lawyer and trade mark agent with Robic; Laetitia Lagarde is an associate with Baker & McKenzie; and Nikos Prentoulis is a lawyer with Prentoulis Lawyers & Consultants


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