The Battle of Trumpton: parody, or protection of kippers?

Many a nostalgic soul hankers for the comfort and security of the days of his or her youth,
when the sun always shone and life was incomparably easier. However,
while the recently- and fondly-remembered past has much to commend it,
most political parties would be hard-pressed to deliver it on a plate to
their voters -- but that's no reason for them not to invoke it in the
course of their campaigning.  It is in this context that the fictional
town of Trumpton suddenly gains significance in the United Kingdom, with
the next General Election only five months away and a relative tough
future to look forward to.  But when Trumpton meets Twitter, problems
abound.  Here in the following guest post Sabine Jacques (a PhD student focusing on the parody exception at the School of Law, University of Nottingham) explains:

The original ...

Last weekend, Mike Dicks reported on
Facebook that the United Kingdom Independence Party – UKIP had threatened to
sue him for trade mark infringement [even
though there is no indication that UKIP has registered its name as a trade mark]
after he created UKIP_Trumpton,
a Twitter account which aims to ‘gently take the mickey out of UKIP’ by reference to the
children’s Trumpton TV
show. Said Mike:

“It struck me that most UKIP supporters or 'Kippers' were
reminiscing 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”.

... and the parody

UKIP does not apparently appreciate Mike’s sense of humour.  UKIP Member of the European Parliament David Coburn (below, right) declared the
Twitter account a “fake” and asked his 9,000 followers to report or block the
parody account. Given the recent developments of the parody exception in
copyright law [discussed by the IPKat here, here and here and by EU Law Analysis here and here], this author wonders what scope there is for parodists to raise a
defence under trade mark law. 

At present the parody exception in UK law is confined to copyright
law. Is there a need for a specific parody defence in the Trade Mark Act 1994? Arguably, yes.
While the primary function of trade mark law is to protect the ability of
registered trade marks to identify the goods or services for which they are
registered, the Trade
Mark Directive widens the scope of protection so as to protect their
distinctiveness and reputation against certain types of use in both similar and
dissimilar goods and services (Article 5(2), implemented by section 10(3) of
the 1994 Act). Does this put UKIP in a stronger position to claim infringement
of its trade mark? 

Where the more usual sort of infringement is alleged
(Directive, Article 5(1)(b), and section 10(2) of the 1994 Act), this broadly
involves the use of the same or similar mark on the same or similar goods or
services, causing a likelihood of confusion of the relevant consumers, where
that use is “in the course of trade”. 
Mike Dicks’ use on Twitter does not appear to fulfil this requirement —
as is very often the case with parodies. This being so, there is no
infringement even if members of the public, seeing “UKIP” on his Twitter
account, would associate that use with the political party (see Court of
Justice of the European Union rulings in Case
C-342/97 Lloyd Schuhfabrik Meyer & Co. GmbH v
Klijsen Handel BV, at 17; Case C-251/95 SABEL v Puma at 18-19). 

In our case, while Mike’s use of the UKIP trade mark would
be permitted under “likelihood of confusion” criteria, UKIP could still argue that
“UKIP_Trumpton” harms the reputation of the registered trade mark under Article
5(2)/section10(3) criteria?

To succeed, UKIP need not show a likelihood of confusion —
but it must prove that its registered trade mark has a reputation in the UK and
that the parodist has used an identical or similar sign in the course of trade
in relation to goods and services (whether similar to those for which the trade
mark was registered or not).  Such use must
be without due cause and must take unfair advantage of, or be detrimental to,
the distinctive character or the repute of the trade mark. 

While the UKIP would have little difficulty establishing its
reputation in the UK, the requirement of ‘without due cause’ might create some scope
for courts to decide in favour of parodies and freedom of expression. Finally,
even if UKIP_Trumpton takes unfair advantage of the UKIP trade mark but no harm
can be proven, freedom of expression should triumph against the enforcement of
UKIP’s rights (this view is shared by commentators such as Amin Naser M,
“Parody as an Example of the Relevance of the Economic-Social Planning Theory
for Trademarks,” Revisiting the Philosophical Foundations of Trademarks in
the US and UK, Cambridge Scholars Publishing 2010, at 197 and the German Federal
Court of Justice, 3 February 2005, Case I ZR 159/02, GRUR 2005, 583, Lila
Poskarte). 

As UKIP does not seem to have a registered trade mark, it
would have to rely on an action for passing off. Designed to preserve the
goodwill of a trader against misrepresentation, this tort applies regardless of
whether marks are registered or not. Essentially, this tort requires UKIP to
prove three elements: (1) reputation or goodwill, (2) misrepresentation and (3)
damage to its goodwill. Proof of goodwill might be problematic, since this must
relate to goodwill that has been acquired only in relation to commercial
activities. Can a political party be seen as having a business in this sense? 

According
to Kean v McGivan [1982] F.S.R 119,
political parties do not carry out commercial activities that benefit from protectable
goodwill. Therefore, UKIP will have difficulties showing the satisfaction of
this first requirement. Even if UKIP were to be successful in establishing
goodwill, UKIP still has to prove misrepresentation. In short, the defendants
must represent his goods or services for being those of the claimants. Hence, a
simple connection does not suffice. There must be confusion in the public’s
mind. This author fails to see how UKIP will be able to establish the
confusion necessary for a cause of action of passing off. Finally, while it is
doubtful that damage (or likelihood of damage if injunctive relief is sought)
will easily be established, it might still be argued that there is dilution
through erosion of the distinctiveness of the UKIP brand?  The answer to this question is not immediately
apparent, but it may be relevant to note that UKIP has subsequently set up its
own account at UKIP Trumpton @TrumptonUKIP. 

This blogger maintains that Mike should be allowed to
maintain his account. In this context it’s worth taking a look at Twitter’s guidelines
on the management of parody accounts, which tolerate them as long as

‘(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…".’

While Mike’s use initially failed to make express mention of
the parodic nature of his account, the account has subsequently been amended to
make it clear that this is the case. 

By enabling its users to file a complaint, Twitter resolves
possible infringements internally. But might this not result in a diminution of
account-holders’ exercise of freedom of expression? 

Sabine has also written a blogpost on this case for EU Law Analysis.