Parodic use of mark is legal, rules Paris court in landmark judgment

France

In Danone v Réseau Voltaire, the Paris Court of Appeal has ruled for the first time in normal proceedings that the parodic use of a trademark in a domain name and on a website does not constitute trademark infringement. It confirms the AREVA and Esso decisions, which - in the context of summary judgments - were the first to reverse the trend of rulings favouring trademark owners (see Freedom of speech trumps infringement claims).

After Danone had announced in early 2001 that it was closing down two production units, thus making hundreds of employees redundant, the association Réseau Voltaire registered the domain names 'jeboycottedanone.com' and 'jeboycottedanone.net' under which it operated a website inciting internet users to boycott Danone products. The association also used doctored representations of six Danone trademarks on the website. Danone filed an action against Réseau Voltaire before the Paris Court of First Instance for trademark infringement.

The court ruled that (i) the use Danone's marks constituted trademark infringement, and (ii) neither the right of information nor freedom of speech could justify the imitation of Danone's marks. Réseau Voltaire appealed.

The Paris Court of Appeal overruled the lower court's decision. It found that freedom of speech trumps infringement charges because:

  • the use of 'jeboycottedanone.net' and 'jeboycottedanone.com' showed only an intention to denounce Danone's social practices;

  • internet users were not mislead as to the origin of the criticism; and

  • the reproduction of Danone's marks did not have a commercial purpose, was not injurious and relied on "a purely polemical use with no relationship with the course of trade".

Although Danone may still appeal, the decision is important because:

  • it widens the scope of application of the 'parody exception' defence for the use of a mark on a website and as part of a domain name;

  • it is in line with the majority of World Intellectual Property Organization decisions regarding 'sucks' domain names; and

  • it may force trademark owners to consider bringing proceedings under the special provisions of French law protecting well-known trademarks rather than under counterfeiting provisions - the traditional approach in such cases in France.

Eric Schahl, Jean-Philippe Bresson and Marie-Clotilde Schies, Inlex Conseil, Paris

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