The relationship between trade-marks & artistic expression is very much an unsettled area of law for Canadians. Most of the relevant case law addressing this issue are U.S. circuit court decisions, thereby making them persuasive (but not biding) for our purposes. However, if we set aside the fact that first amendment jurisprudence does not match up precisely with Canada’s ‘freedom of expression’ criterion (as set out in 2 (b) of the Charter), there are some recent U.S. decision that can provide us with some insight into the reasoning a Canadian court might consider in future analogous circumstances.
Can trade-marks be reproduced without permission in artistic works?
In University of Alabama Board of Trustees v. New Life Art, Inc. & Daniel A. Moore, the Eleventh Circuit Court of Appeal characterized the inclusion of university trade-marks in an artist’s paintings, prints, and calendars as free speech, thereby attracting first amendment protection.
The facts in that case were fairly straightforward – since 1979, Daniel A. Moore had been painting famous football scenes involving the University of Alabama. His portrayals incorporated a number of the University’s trademarks, including uniforms, helmets, jerseys, as well as the famous crimson & white colours.
Between 1991 and 1999, Moore and the university entered into a number of license agreements to produce market specific items depicting “Crimson Tide’ football scenes. During that time, Moore continued to produce painting and prints that he argued were not subject to any of the license agreements. By 2002, the university told Moore that he would need to license all Alabama-related products because they featured university trade-marks. He disagreed, arguing that he did not need permission to portray historical events, so long as his use of the marks were confined to his original works.
In the end, the Circuit Court of Appeal applied Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (a landmark case for balancing trade-mark and first amendment rights) and held in favour of Moore with regards to the prints, paintings, and calendars. Despite the fact that Moore did not appeal the lower court’s characterization of the mugs and other ‘mundane products’ as being more ‘commercial speech’ than art (thereby falling outside first amendment protection), the appeal court decided to reverse this decision due to some unresolved issues of material fact (***the original license agreements were held to contain ambiguous terms, thereby explaining why the court rejected the University’s argument that those agreements prohibited Moore’s use of the marks with regards to both categories of goods) .
In the court’s ratio decidendi, it emphasized that in deciding whether an artistically expressive work infringes a trade-mark, there needs to be adequate measurement of the public interest in free expression against that of the public interest in avoiding consumer confusion – with that being said, the court argued that the artistic use of a trade-mark will only violate the Latham Act (*the American equivalent of the Trade-marks Act) if (i) the use of the mark has no artistic relevance to the underlying work whatsoever, or if it has some artistic relevance, (ii) the work would need to explicitly mislead as to the source of its content (giving us a 2-part test that a Canadian court might find persuasive in future cases)
With the above line of reasoning being merely persuasive for Canadian courts, it is an academic question at this point whether a section 2(b) argument could be mounted in support of an artist utilizing unlicensed trade-marks in Canada. Interestingly enough, the defence has been accepted and rejected in other trade-mark related situations – in Source Perrier S.A. v Fira-Less Marketing Co,  2 FC 18 (Fed TD), the court rejected a freedom of expression defense against an infringement of a trade-mark where goodwill had suffered. Conversely, the defense was accepted in BCAA v Office and Professional Employees’ International Union, 2001 BCSC 156 in a passing-off claim against a union website.
‘Commercial Speech’ and the Olympic & Paralympic Marks Act
It is unfortunate that Moore did not appeal the district court’s decision to characterize mugs and other ‘mundane products’ as commercial speech, given that in 2007 a similar phrase was used by the federal government to address the use of Olympic & Paralympic marks in artistic works.
Section 3(6) of the Olympic and Paralympic Marks Act states that:
For greater certainty, the inclusion of an Olympic or Paralympic mark or a translation of it in any language in an artistic work, within the meaning of the Copyright Act, by the author of that work, is not in itself a use in connection with a business if the work is not reproduced on a commercial scale [emphasis added]
The phrase ‘reproduced on a commercial scale’ is about as ambiguous as the district court’s ‘commercial speech’ characterization. Determining whether an artistic work carries a ‘commercial’ component significant enough to elude any freedom of expression protections will be difficult. A single painting offered at sale seems acceptable, but a numbered series of prints may be construed as ‘commercial’ enough to elude section 2(b) protections in Canada.
Other Examples of the Unauthorized Use of a Trade-Mark in Artistic Works
In two recent cases, a number of questions have been raised with regards to unauthorized product placements. Particularly those that offer a negative or unfavorable representation of a trade-mark holder’s mark(s).
In ‘Flight’, a story about a highly functioning alcoholic pilot, there are a number of scenes where the main character is shown drinking beer and vodka either behind the wheel or in flight. Neither Anheuser-Busch (maker of Budweiser) nor William Grant & Sons (distributor of Stolichnaya vodka) were consulted on whether they wanted their products included in the film and requested that their marks be removed from the film.
In another related case, Louis Vuitton recently sued Warner Bros. for trade-mark dilution because of a scene in the film that made use of a counterfeit Louis Vuitton handbag. Warner Bros. was able to argue that its use of the bag was covered under the 1st amendment, due in part to the reasoning in Rogers v. Grimaldi (which was mentioned earlier). The court held that use of the mark attracted 1st amendment protection because it had some artistic relevance to the film and was not explicitly misleading.
While it’s true that trade-mark holders would prefer being consulted on how their marks are to be depicted on screen, there is no clear legal mechanism currently in place that can control the use of a mark in artistic expressions. Product placement agreements seem to be the most popular way for brands to authorize the advertisement of their products and services in artistic works. The only real recourse for the unauthorized use of mark seems to be public disapproval and/or a petition for removal.
In the Canadian context, section 20 (1) of the Trade-marks Act states that ‘[t]he right of the owner of a registered trade-mark to its exclusive use shall be deemed to be infringed by a person not entitled to its use under this Act who sells, distributes or advertises wares or services in association with a confusing trade-mark or trade-name…[ ]’. Given that the producer of a film is not selling, distributing or advertising wares or services in connection with a confusingly similar mark, this provision is not likely to assist in preventing the unauthorized inclusion of a mark in a film.
Section 22 (1) of ‘the Act’ states that ‘[n]o person shall use a trade-mark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto’. This provision is interesting because the unauthorized inclusion of a mark may actually have the effect of depreciating the value of the goodwill to some degree. However, trade-marks are defined through their ‘use’ in connection with ‘wares’ (i.e. the ‘confusing’ mark must be made on the wares themselves or on the packages used for their distribution) and as such, the inclusion of a mark in a film would likely fall outside this definition.
The relationship between trade-marks and artistic works is largely an undecided issue for Canadians at present. Despite the absence of a concrete response to this issue by a Canadian court, there have been some interesting developments in a comparable jurisdiction that have offered us some insight into the reasoning that could be adopted in addressing this issue in the foreseeable future.