PhD student focussing on the parody exception
at the School of Law, University of Nottingham (UK)
Last September 2014, a Twitter account called ‘UKIP Trumpton’ was established by Mike Dicks, stating that ‘After the recent defection of the Mayor of Trumpton and Mr Troop the town clerk this is the new home of UKIP tweets from Trumptonshire’ and used as logo of its own the official logo of UKIP (a right wing political party). This weekend, the creator of the account shared on his Facebook profile that the aim was to ‘gently take the mickey out of UKIP - It struck me that most ukip supporters or 'Kippers' were reminising about a Britain of their youth that was more like the classic kids show Trumpton than the reality I remembered so I chose to start Trumpton UKIP and pretend the Mayor and Mr Troop had defected to the people’s army’. After learning the existence of this account, UKIP MEP David Coburn announced the account as ‘fake’ and asked his 9000 followers to report/block the parody account. The creator of the account recently reported that the Mr Coburn threatened him to take legal action for the use of the party’s trade mark. Against this backdrop, this post presents an overview of the legality of the parody under copyright and trade mark laws (but not libel law), as well as Twitter’s policy on parodies.It’s relevant also by analogy to other parodies of UKIP, or other political parties besides.
Should UKIP Trumpton account be maintained?
1) Is the parody exception applicable to the use made by Mr Dicks?
With the recent introduction of the fair dealing exception for the purpose of parody under copyright law and its recent interpretation by the Court of Justice of the European Union (discussed here and here), this case could be the first interpreting the UK provision. UKIP could argue that the logo is copyright protected as artistic work under section 4(1)(a) CDPA and that by reproducing this logo, Mr Dicks infringed the exclusive right of reproduction of UKIP. UK law would apply, and the UK courts would have jurisdiction, in accordance with the EU’s Rome II and Brussels Regulations.
If infringement is found, Mr Dicks could argue the application of the parody exception. To do so, he needs to prove that the use was for the purpose of parody and that the use was fair.
Regarding the purpose, the Court of Justice of the European Union established that the use needs to constitute the expression of a humour and the absence of confusion between the use and the original. In this particular case, the humoristic character derives from the association made between the political party’s possible view on the ideal Britain and a children’s television series called ‘Trumpton’ whereby apart from the ice cream vendor, there were no immigrants featuring. Despite the lack of guidance from the Court on how the humour element should be appreciated, it is argued that courts must interpret this requirement broadly as to include spoofs and other form of parodies. It is also argued that this requirement must be appreciated based on the parodist’s intent. In this case it appears that that Mr Dicks aimed ‘to gently take the mickey out of UKIP’. Hence, this requirement should be easily fulfilled. Moving on to the absence of confusion, this requirement might be more difficult to reach. While most of the viewers will not be confused as to the parody character of the account, the study of the fairness factors should help determining whether the use is allowed or not.
As mentioned, there is no decision interpreting the UK provision to this day. The reasoning will be inherently purely speculative. It is established that fairness is a question of degree, a matter of impression. Hence, the factors generally include the amount taken, the use made (commercial motives), consequences of the dealing (competition with the original?), whether the work is published, the motives of the dealing (such as dishonesty) and the availability of other means. As not all these factors would be relevant for parody uses, it seems that the most problematic is the amount reproduced. This factor requires the courts to consider the number of extracts and their extent. As in this case Mr Dicks’ account reproduces the entire logo with the addition of Trumpton, this could lead to the conclusion that the use is infringing. Yet it seems that UK case law does not rule out the possibility to copy the entire original work as long as the nature and purpose of the use fit the goal of the exception. This should create some margin for courts to acknowledge the parody use of Mr Dicks. By relying on the overall appearance of the alleged infringing Twitter account, the use should be found covered by the exception.
2) Could Mr Coburn be successful in his action under trade mark law?
Unlike under copyright law, there is currently no specific parody exception under the Trade Mark Act 1994 creating a defence for parody use. Essentially, trademarks differ from copyright insofar as the primary function of trade mark law is the identification of goods and services in the market place. Other functions are also recognised depicting mostly added value of the trade mark such as communicator or social functions. Following the harmonisation of trade mark laws by the Trade mark Directive, the Trade Mark Act broadened the scope of infringement to encompass similar and dissimilar goods or services (article 5.2 of the Directive and section 10 of the Trade Mark Act). Against this backdrop, it appears that Mr Coburn has a strong position to argue for the infringement of the graphic and verbal trade marks of UKIP and consequently, the ban of the Twitter account.
Yet, section 10 of the Trade Mark Act requires the use to take place ‘in the course of trade’ and ‘in relation to goods or services’. In a nutshell, the reasoning is twofold: (a) we need a use in the course of trade; (b) there needs to be a use as a trade mark. Despite the broad interpretation of ‘in the course of trade’, it is hardly arguable that Mr Dicks’ use fulfils this requirement. Due to this requirement, most parodies would fall outside the scope of the Trade Mark Act. Additionally, as the parody use made by Mr Dicks is constitutes a vehicle for non-commercial expression for the primary purpose of political comment, it could be argued that the use of UKIP’s trade mark is not in relation to goods and services.
If the use were to be found as ‘in the course of trade’ and ‘as a trade mark’ then there needs to be likelihood of confusion or association.
Under the Trade Mark Act, likelihood of confusion requires 3 elements: (a) a distinctive trade mark, (b) the similarity between the goods and services, (c) the similarity between the sign used and the protected mark. This is different from the confusion requirement under copyright as the latter mainly refers to the similarities between the altered work and the protected work to assess whether the public is likely to believe that the parody originates from the original author or was supported by the author. Although the existence of these differences, it is argued that most parodies should be found lawful under trade mark law as the very nature of parody requires the absence of confusion between the use and the original.
As the likelihood of confusion is rare, what remains is the likelihood of association with the original. This occurs when consumers are in a position to make a mental connection between the parody and the registered mark. Despite Laddie J.’s statement in the well-known Wagamama case rejecting its application in UK Trade mark law (retaining as the only possibility the likelihood of confusion as to the origin), the Court of Justice of the European Union held that the likelihood of confusion includes the likelihood of association (Lloyd Schuhfabrik Meyer & Co. GmbH v. Klijsen Handel BV, at 17; SABEL v. Puma at 18-19). Yet if section 10(2) of the Trade Mark Act includes all associations which recalling UKIP, parodies will inherently infringe based on their very nature unless it can be shown that the use is outside the course of trade.
If there is no confusion, could there be dilution of UKIP’s trade mark? To be successful under section 10(3) of the Trade Mark Act, UKIP will have to show that the registered mark has a reputation in the UK and that Mr Dicks' use of an identical or similar sign, without due cause and in the course of trade, takes unfair advantage of, or is detrimental to the distinctive character or the repute of UKIP's mark. Therefore, confusion is no longer a requirement under this provision. UKIP’s reputation will probably be easy to prove in front of the court. Hence, Mr Dicks will have to attempt to argue due cause. Currently, there this concept of due cause leave extensive room for judicial interpretation and could enable courts to build the bridge with the fair dealing defence under copyright or refer to the freedom of expression. Nevertheless given the commercial context of the Act, the courts could restrict due cause to commercial necessity.
This being said, in case of unfair advantage (in such way that the use of the trade mark aims to gain an advantage) where no harm is proven to UKIP, the freedom of expression argument should prevail over the enforcement of the trade mark rights of the UKIP. The difficulty lies in the fact that the interpretation of this provision fails to distinguish between taking unfair advantage of the distinctive character and taking unfair advantage of the reputation of a trade mark. As trade mark law does not distinguish between uses of marks for the purpose of market communication and uses in other domains such as parody, it’s not clear
explains how right holders are in a position to bar
3) How does Twitter manage parody accounts?
Under its rules and policies, Twitter provides guidelines as to manage parody accounts. Following these, several requirements have to be met: (a) ‘The avatar should not be the exact trademark or logo of the account subject’; (b) ‘The name should not be the exact name of the account subject without some other distinguishing word, such as "not," "fake," or "fan."’; and (c) ‘The bio should include a statement to distinguish it from the account subject, such as "This is a parody," "This is a fan page," "Parody Account," "Fan Account," "Role-playing Account," or "This is not affiliated with…"’. Therefore, users are enable to create parody accounts as long as they meet the requirements set here above.
By shutting down accounts which do not meet these requirements, Twitter decides to resolve internally a possible infringement leading to a possible curtailment of freedom of expression. While the authorisation process is more transparent than it used to be, it might still stifle the freedom of information and ideas.
As this blog post shows, the regime of parodies is not a peaceful journey and uncertainties remain. While copyright infringement appears hard to argue, UKIP is in a stronger position regarding the infringement of their trade marks due to the current trajectory of trade mark protection. Also, UKIP could file a complaint directly to Twitter as the alleged infringing account fails to expressly mention its parody nature in the bio.