Trade Marks and Freedom of Expression: A Call for Caution

Trade Marks and Freedom of Expression: A Call for Caution

Dr. Dev Gangjee lectures at the London School of Economics, with a primary research interest in intellectual property, including trademarks, geographical indications and domain names.

Robert Burrell and Dev Gangjee have recently completed some research into the potential of free speech as a response to overreach in trade mark law. While the general tone of the literature in this area is optimistic about speech doctrine functioning as a helpful limiting device, their comparative law analysis suggests it’s time for a rethink.

R Burrell & D Gangjee 'Trade Marks and Freedom of Expression: A Call for Caution' (2010) 41 International Review of Intellectual Property and Competition Law [FORTHCOMING]; University of Queensland TC Beirne School of Law Research Paper No. 10-05 is available at SSRN: 

Over the past fifteen or so years there has been growing interest in the relationship between trade marks and free speech. A constellation of factors, including the increased cultural importance of brands, legislative expansion of trade mark law, the sometimes incautious application of traditional trade mark principles to the internet, and the aggressive trade mark enforcement strategies of companies like Mattel, have led to significant academic concern about scope of trade mark rights.

United States academics have led the way in arguing that we should look to freedom of expression principles to curb the expansion of trade mark law. Increasingly, however, commentators in other jurisdictions are taking this suggestion seriously. While we share concerns about the potential overreach of trade mark law, we suggest that this approach focuses too quickly on the narrow question of how the tension between trade marks and expressive freedom is to be mediated. In particular, we are wary of going down the path of accepting that there is a broad potential conflict between trade marks and expressive freedom, and then looking for a doctrinal set of tools that will create the space necessary for parodists, bloggers and online trade rivals. First, we are concerned that this focus concedes too much in terms of the reach of trade mark law. We need to seriously reconsider recent expansive claims within trade mark doctrine on their own terms. Secondly, we believe that outside of the United States a focus on using freedom of expression to constrain trade mark rights will have limited effectiveness. Where courts have intervened to favour speech interests, they often do so by carving out fragile ecosystems. For instance, they  might require that the defendant's use be non-commercial or that there are no alternative expressive avenues available. Thirdly, we are of the view that there will be an inevitable temptation to oversimplify the relationship between trade marks and speech. This is likely to lead to the privileged treatment of predetermined categories (for example, trade mark 'parodies' are likely to receive special treatment) but these categories may well become detached from the underlying free speech rationale.

The speech strategy may serve as a partial safety valve at best, while distracting from a more careful reconsideration of the scope of trade mark protection. While we are not suggesting that to focus on free speech implies a commitment to otherwise expansive trade mark rights, we are, however, suggesting that this focus is a distraction and one that may cause more fundamental arguments to be lost by default.