As a result of our Post about transformation, parody, and integrity in relation to the viral trap song “Velaske yo soi guapa”, our colleague from Alicante, Alberto Segura (@ASMFresh) opened the debate on Twitter about the possibility of applying the parody limit to brands, rather than to works protected by intellectual property. It is relatively common in Spain to come across shops selling, for example, T-shirts with famous brands modified in a humorous way, such as “ASIDRAS” instead of “ADIDAS”, or “FUMA” instead of “PUMA”. Some of the best and most entertaining examples can be found at this post from marketingdirecto.com Do these actions infringe on the trademark rights of their owners?
This interesting question is what motivated us, as lawyers specializing in trademarks, to write this post.
First, we start from the premise that parody is a limitation on copyright expressly recognized in Article 39 of our Intellectual Property Law, to which the author of an original work cannot object, provided that certain requirements are met.
Now then, This limit is not covered by trademark law. applicable in Spain (the Trademark Law, for Spanish brands, and the European Trademark Regulation, for European brands).
Both regulations also contain certain limitations on the rights conferred on the owner of a trademark (in Articles 37 and 14, respectively), such as the use of another's trademark if it coincides with the name or address of the user (for example, if there were a surname in Spain that was “Bamboo”), or the need to use another's trademark to refer to the destination of one's own product or service (particularly as accessories or spare parts). However, there is no legal basis under these articles for parodying a third party's trademark.
It should also be assumed that a parodied trademark will, predictably, be a well-known trademark; otherwise, the parody would not make sense, as the public would not understand the joke. Trademark regulations in Spain grant enhanced protection to well-known brands (those known to the sector of the public for which their products or services are intended) and renowned (those known to the general public), consisting of the fact that the products or services do not have to be similar to those of the infringing trademark; protection may be extended to products or services that are all the more different, the greater the degree of notoriety of the trademark.
In this regard, Article 34.2(c) of the Trademark Law states:
“2. The owner of the registered trademark may prohibit third parties from using it without their consent. in economic traffic:
c) Any identical or similar sign for products or services that are not similar to those for which the trademark is registered, when the trademark is well known or renowned in Spain and with the use of the sign carried out without just cause a connection between said goods or services and the trademark owner can be indicated or, in general, when such use could imply undue exploitation or impairment of the distinctive character or the notoriety or renown of said registered trademark.”
Reading this article, applied to parody in the context of trademarks, raises two main questions:
The first is whether the use made by the person presenting the parodied trademark is “in the course of trade.” This concept has been interpreted on several occasions by the Court of Justice of the European Union, which has stated that such use must be made “in the context of a commercial activity for profit and not in the private sphere” (among others, judgments of September 11, 2007 and from November 12, 2002). Furthermore, such use must be “for goods and services”: if the potentially infringing sign does not distinguish, as such, a product or service, trademark law may not apply (but perhaps Unfair Competition Act).
The second question that arises is whether the use (in economic traffic and to distinguish a product or service) of a trademark parody can be understood to be carried out under a “just cause”. And this is where, in our opinion, the quid of the matter.
At judgment of February 6, 2014 The Court of Justice of the European Union expressly interpreted what should be understood by “just cause” in a case different from the one we are now analyzing, but which may serve to clarify the concept. In this regard, the Court interpreted that “The concept of just cause may not only encompass objectively compelling reasons, but may also refer to the subjective interests of a third party who uses a sign identical or similar to the renowned trademark.” and explained that “The purpose of the concept of just cause [...] is to achieve a balance among the interests at stake, taking into account, in the specific context of Article 5(2) of Directive 89/104 and in view of the extended protection enjoyed by the trademark itself, the interests of the third party using that sign.”.
Thus, The concept of “just cause” must be applied to balance, on the one hand, the protection conferred on the trademark; and, on the other hand, the legitimate subjective interests, depending on the circumstances of the case, that a third party may have in the justified and reasonable use of a (similar) variation of that trademark. Interestingly, the Court of Justice of the European Union also uses the term “balance” to interpret the concept of parody as applied to copyright, in its judgment of September 3, 2014: “the application in a specific situation of the exception for parody, in accordance with Article 5(3)(k) of Directive 2001/29, must respect a fair balance between, on the one hand, the interests and rights of the persons referred to in Articles 2 and 3 of that Directive and, on the other hand, the freedom of expression of the user of a protected work who invokes the exception for parody.
As explained by our Supreme Court in its judgment of September 14, 2016, on the grounds of the right to honor and freedom of expression: “In accordance with a pragmatic conception of language adapted to social conceptions, jurisprudence maintains the prevalence of freedom of expression when expressions are used which, although offensive in isolation, when placed in relation to the opinion being communicated or the political or social situation in which the criticism takes place, experience a reduction in their offensive significance and suggest an increase in the degree of tolerance that can be demanded.”.
In a socio-cultural context such as Spain, where jokes and wisecracks are, fortunately, the order of the day, and even our legal system recognizes custom as a source of law (Article 1.1 of the Civil Code), we consider it relatively reasonable that a generous interpretation of the concept of “just cause” could be accepted in legal proceedings in these cases, which are not excessively defamatory (and, for the most part, harmless) of what we might describe as “brand parodies”.
