Freedom of speech trumps infringement claims

In two separate decisions, the Paris Court of Appeal has ruled that Greenpeace's parody of the marks of nuclear company Société des Participations du Commissariat à l'Energie Atomique (SPCEA) and Esso on its website does not constitute trademark infringement. The court reasoned that (i) the marks are not used for commercial purposes, and (ii) the public is not misled as to the origin of the criticism of the mark owners' activities.

In the first case, SPCEA brought an action for counterfeiting, seeking a summary judgment to stop Greenpeace from using on its website its trade name and mark AREVA, and its logo (an 'A') with a skull-shaped shadow. Greenpeace uses the mark and logo in relation to news stories on its actions against the nuclear industry.

The Paris Court of First Instance ruled in favour of Greenpeace. On appeal, the Paris Court of Appeal affirmed, reasoning that freedom of speech trumps the infringement allegation because (i) the parodies are non-commercial, and are neither injurious nor spiteful, and (ii) internet users will not be confused as to the origin of the anti-nuclear message when connecting to the Greenpeace website, in particular because the GREENPEACE mark is better known than the AREVA mark.

In the second case, Esso sought a summary judgment against Greenpeace, which reproduces on its website the ESSO trademark where the double 's' is replaced by a double '$'.

The Paris Court of First Instance ruled that because ESSO is a well-known mark, internet users would identify the doctored logo with the petroleum company, which would damage the reputation of the mark. Greenpeace appealed.

The appellate court reversed the decision, considering that freedom of speech trumps trademark infringement claims, even in the case of a famous mark.

Thus far, French courts have protected the rights of famous mark owners against parody (see the Danone Case), even though French trademark law does not provide such protection. The two Greenpeace Cases, which were decided in the context of a 'référé' (summary judgment), seem to indicate a shift. Since then, the Paris Court of Appeal has also ruled in the ordinary proceedings for the Danone Case that parody prevails over the rights of famous mark owners.

Eric Schahl and Jean-Philippe Bresson, Inlex Conseil, Paris