A new round in the conflict between private and public rights

The question of what happens when a trademark is used in the name of a blog or site as a part of the opinion delivered through the content has been addressed by the Federal Court of Appeal on Civil and Commercial Matters

In recent years the Argentine courts have dealt with conflicts involving the use of trademarks in the digital environment. One of the most sensitive issues has been the tension between trademark owners’ rights and the use of their trademarks in digital media content (ie, websites, blogs and social media posts).

In a case where a trademark was used in blog comments criticising the quality of dental services provided by the claimant, the federal court held that “the search, reception and dissemination of ideas of any kind through the Internet is deemed as falling within the constitutional right that protects freedom of speech” (Section 1, Law 26.032) (Argentine Federal Court of Appeal on Civil and Commercial Matters, Division III, Artes Dentales SRL v Google Inc, April 30 2014).

The use of trademarks in blogs, websites and posts creates a lot of work for the courts, which need to balance trademark rights with freedom of speech, consumer information and other public rights.

But what would happen if someone went one step further and included a trademark in the name of a blog or site not for commercial use, but rather as a part of the opinion delivered through the content? This was the issue considered by Division III of the Federal Court of Appeal on Civil and Commercial Matters in Arte Gráfico Editorial Argentino SA v Castaneda Matías (February 11 2014).

Facts

Arte Gráfico Editorial Argentino (AGEA) is a major media group which owns Clarín, one of the most influential and widely read Argentine newspapers. AGEA was politically opposed to the administration of former President Néstor Kirchner. The confrontation became an intensely public political affair and Kirchner devoted several speeches to denouncing Clarín and its editorial opinion. In a speech questioning Clarín about how the newspaper had commented on the results of local elections in Catamarca, Kirchner said “Qué te pasa Clarín?” (“What’s up with you Clarín?”).

Based on that quote, Mr Castañeda registered the domain name ‘quetepasaclarín.com’ and AGEA filed suit for trademark infringement, requesting cancellation of the domain name and damages. AGEA invoked its ownership of trademark registrations for CLARIN, the domain name ‘clarín.com’ and the fact that its CLARIN trademark was well known. Before bringing the action on the merits before the court, AGEA obtained a preliminary injunction in its favour.

Castañeda responded to the claim by explaining that the blog name was based on the quote from the president’s speech, and therefore AGEA had no rights in the quote because the rights in it belonged to the author. Moreover, Castañeda alleged that there was no bad faith in the domain name registration because the registration sought no advantage from or defamation of AGEA’s trademarks. There was no likelihood of confusion between AGEA’s trademarks and the blog name; therefore, AGEA suffered no damage.

The first-instance court ruled against Castañeda and ordered him to stop using the word ‘clarín’ in any manner. It also assigned the name of the blog to AGEA and awarded damages of Ps20,000.

Both parties appealed and Division III of the Federal Court reversed the first-instance decision.

Appeal decision

First, the appeal court held that since the blog’s name included AGEA’s CLARIN trademark, AGEA was entitled to seek legal protection for it. It then noted that although the Trademark Law grants a trademark owner the right to prevent third parties from using its mark without authorisation, there is a difference between unauthorised use and mere reference. Mere reference can constitute legitimate use, provided that it is recognised that the trademark belongs to its respective owner and there is no intention to defame. The court demonstrated the difference between the two hypotheses by referring to Argentine case law on comparative advertising, which admits the use of a third party’s trademark for the purpose of giving information to consumers.

Therefore, the appeal court held that mere reference to AGEA’s trademark in the blog name did not constitute trademark infringement and did not create confusion, have a commercial purpose or mislead consumers. In this respect, the appeal court remarked that the common element of any trademark infringement is the likelihood of consumer confusion, or even – where there is no confusion – the likelihood of obtaining a benefit from the standing of the registered trademark.

For this reason, the appeal court found that the name of the blog captured the spirit of Kirchner’s quote and thus the public could assume that the content of the blog related to freedom of speech, the role of the media and a critique of how Clarín delivered information.

From this point of view, the court analysed the conflict between trademark rights and freedom of speech, and information in the landscape of the development of the Internet and related technologies. The court noted that in order to resolve a conflict between essential rights, there must be a balance between freedom of speech and opinion in the mass media (eg, the Internet) and society’s right to be informed, and the personal rights of trademark owners which may be affected by such opinions and information. Despite the protection given to trademarks by local and international legislation, the court favoured the preferred protection for freedom of speech because of its relevance in a democratic system.

In reaching its decision, the court invoked several international treaties signed by Argentina (Section 13(1) of the Convención Americana sobre Derechos Humanos, Section 19 of the Pacto Internacional de Derechos Civiles y Políticos and Section 4 of the Declaración Americana de los Derechos y Deberes del Hombre), an earlier opinion rendered by the Corte Interamericana de Derechos Humanos regarding freedom of speech, local legislation (Decree-Law 554/1997, which declares internet access to be in the national interest of the Argentine people, Decree-Law 1279/1997 and Law 26.032, which provides that the Internet falls within the constitutional right to freedom of speech), and Supreme Court case law holding that action taken through a blog is protected by the constitutional right to freedom of speech (Sujarchuk v Warley, August 1 2013).

However, the appeal court also took into account the “lack of equivalence” between the CLARIN trademark and the group that owned it and a blog operated by a person solely for the purposes of debate. Therefore, the court found that AGEA had suffered no damage as a result of the blog.

Finally, the court highlighted that the ruling did not mean that trademark owners should be left without protection against damage to their images or goodwill. In this regard the court quoted Supreme Court case law which clearly states that there are no absolute rights, and that the exercise of freedom of speech must not violate third-party rights.

Supreme Court case law clearly states that there are no absolute rights

Comment

Although conflicts involving blogs and websites and trademarks are not new, the case law is still developing because online technology and the use of the Internet are continually evolving. Therefore, it is advisable to check the latest case law developments before commencing any legal action to challenge the use of a trademark on a website, blog or social media post.

Marcelo Garcia Sellart and Juan Berton-Moreno are partners at Berton Moreno & Asociados [email protected]  [email protected]

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