13 May 2011

Why You Cannot Trademark Free Speech

Image by opensource.com on FLickr


In the free speech context, the function of trade marks can be quite complicated. In recent time, trade marks have become a general purpose device for private parties to use when they want to suppress speech they do not like. And they are trying to suppress the speech of others not merely to protect their legitimate economic interests but because of aesthetic and political disagreements.

Anyway, to understand how intertwined trade marks and free speech are, you need first to

Understand Trade Marks

in general.

You should think of consumer protection in order to best understand trade mark law: trade marks are instruments that help consumers orient in an ocean of goods and services and, help them make respective choices. Therefore, trademarks are protectible; albeit to the extent they represent the quality or reputation associated with a product or service. The proprietorship over a trade mark allows trade mark owners to claim damages, when their trade marks are infringed.

But what is a

Trade Mark Infringement

in the first place?

Usually, this is one trader’s act of unauthorised use of a sign that is similar or identical to another trader’s trade mark. First trader’s  unauthorised use must be with respect to products or services identical or similar to those of the second trader, it must further occur in the course of commerce and be likely to create confusion among the consumers as to the origin of first trader’s goods. Why will the consumers be confused? Because they will think the first trader is the source of the products or services and not the second one.

Indeed, this is all legitimate in a commercial context, but should it apply to

Non-Commercial Expressions

of political views?

This question has already been the subject of judicial review, for instance, in Lucasfilm Ltd. v. High Frontier, 622 F. Supp. 933, 934 (D.D.C. 1985) and MasterCard International, Inc. v. Nader 2000 Primary Committee, Inc. 70 U.S.P.Q.2d (BNA) 1046 (S.D.N.Y. 2004).
The judicature’s answer has steadily been a clear “no”.

Likewise, the US District Court for the District of Utah has recently delivered a ruling dismissing the claims of Koch Industries, a billion dollar company, against Youth For Climate Truth, a group concerned about climate change.
In particular, the honourable Justice Dale A. Kimball held

“On its Lanham Act claims, Koch lacks any evidence or plausible theory as to how Defendants could have profited commercially from an anonymous spoof website that sold no products and solicited no donations, that was disclosed only to reporters, and that was only online for a matter of hours. Defendants’ speech proposed no commercial transaction. Instead, it sought to draw public attention to Koch’s controversial stance on a political issue. Koch’s trademark and unfair-competition claims, therefore, fall outside the scope of the Lanham Act and are foreclosed by the act’s commercial-use requirement.”

You can check EFF’s website for further details on the case or read Eileen Rumfelt’s brilliant analysis on trade marks and the First Amendment for further deliberations.

In this respect it appears also worth referring to some French and hence

European Jurisprudence

on political/social uses of a trade mark.
In Greenpeace v. Esso the Paris Tribunal de Grande Instance held that

“the constitutional principle of the freedom of expression implies that the Greenpeace Association…can, in its writings or on its internet site, denounce, in whatever form it feels appropriate to the objective pursued, the environmental damage and the risks caused to human health by certain industrial activities. Although this freedom is not absolute, it can nevertheless only be subjected to the restrictions necessary for the protection of the rights of others …the Greenpeace Association through the modifications… clearly shows its intention…without misleading the public as to the identity of the author of communication…the E$$O symbol… even if it refers to the trademarks held by the respondent company, it is clearly not intended to promote the marketing of products or services…it is of a polemical character that is alien to business life.”

In Greenpeace v. AREVA the same court followed the Esso principles.

What are then the


of this all?

It seems that both, legislature and judicature in western-type democracies have provided for the specific purpose of trade marks law: to be a shield against infringement in a commercial context. By the same token, legislature and judicature have well restrained trade mark owners from using the rights conferred by trade marks law as sharp-edged weaponry to pierce the right to political and hence non-commercial speech.

Still asking why no one can trademark free speech? It is simple: trade marks and free speech are fundamentally at odds.


Comments (1)

  1. 4 November 2011
    Delaware Roofing said...

    Keep It Up…

    Hey Thanks For writing this I enjoyed the Read…

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