[Guest post] Can a trademarked mascot drink, smoke, and spray graffiti under the banner of artistic expression?

The IPKat has received and is pleased to host the following guest post by Katfriends Jakob Plesner Mathiasen and Matilde Helene Bom (both Gorrissen Federspiel) on a recent Danish decision tackling the relationship between trade mark law and freedom of expression. Here’s what they write:

Can a trademarked mascot drink, smoke, and spray graffiti under the banner of artistic expression?

by Jakob Plesner Mathiasen and Matilde Helene Bom

Imagine a young girl donning a long white dress with a blue apron. She has neat, blonde hair styled with an impeccable blue bow. She’s carrying her small, yellow basket; ready to dive into the quality products from the Danish supermarket chain Irma. This is how the iconic trademark figure for the Danish retail chain Irma (owned by Coop) has looked throughout generations:

Now, imagine the same girl, not with her usual groceries, but with a cigarette in her mouth, a graffiti-bottle in her hand and a daring message for the world – to go “Fuck Coop”, the retailer behind the beloved mascot:

In recent years, the clash between intellectual property and freedom of speech has been a battleground for numerous high-profile cases. Among these, the Danish case of Artpusher Gallery ApS vs. Coop Danmark A/S in BS-30388/2023-SHR stands out as what the artist known as Love Party / Artpusher might have perceived as a modern tale of David and Goliath. Even though no slingshots or stones were involved in this drama, when the artist decided to give the iconic mascot a rebellious makeover, it sparked a legal showdown with the well-established retailer that made several headlines. From beer-drinking to graffiti-spraying, this isn't your typical trademark clash.

Background

The iconic figure of the Irma Girl found herself at the center of a legal battle in the Danish Maritime and Commercial Court. The dispute revolved around the actions of an artist known as Love Party, operating under the pseudonym Artpusher and through Artpusher Gallery ApS, who created and sold a wide range of products featuring the Irma Girl. From oil paintings to bucket hats, the artworks emerged initially for the Roskilde Festival in June 2022, depicting the Irma Girl in an uncharacteristically rebellious light – with a beer in hand, a soundbox on her back, and a cigarette in her mouth.

At first, Coop, a leading retailer owning several supermarket chains, including Irma, sought to engage in dialogue with Artpusher, proposing a collaboration to develop a campaign version of the Irma Girl. However, following Coop's announcement of Irma's closure as a retail chain, Artpusher escalated the commercial use of the new Irma motifs, notably creating an image of the Irma Girl graffitiing "Fuck Coop". These and approximately 30 other motifs were then sold as oil paintings, posters, canvas prints, and replicated on a variety of merchandise, promoted on social media, and sold both in the gallery and online.

The core of the dispute was whether Artpusher’s use of Coop's trademarks constituted an infringement of trademark rights or was protected under the principles of freedom of speech and artistic expression. On the one hand, Coop argued that Artpusher's actions infringed their rights, potentially causing confusion among consumers, and diluting the brand's identity. On the other hand, Artpusher contended that their works were artistic expressions that criticized, parodied, and engaged with societal themes, invoking the protections afforded to free speech and artistic freedom. They argued that their use of the trademarks was non-commercial or, at the very least, a lawful use under the guise of artistic expression, thereby not infringing Coop's trademark rights.

Court’s decision

The case was filed as a preliminary injunction. A critical question was whether Artpusher's actions necessitated an injunction due to infringement of Irma's rights. The court's analysis focused on trademark law, finding Irma's figurative trademark registrations of the Irma Girl and the "Irma" and "Coop" word marks undoubtedly well-known and owned by Coop, thus fulfilling the first condition for an injunction. The court reviewed Artpusher's variations of the Irma Girl and determined they contained elements of Irma's protected trademarks, widely marketed in connection with Irma, thereby meeting the requirement for trademark use in marketing.

The court concluded that Artpusher had engaged in a systematic commercial exploitation of the trademarks' appeal, primarily for commercial purposes, thereby unjustly exploiting Irma's rights. This commercial exploitation, the court argued, could not be justified by considerations for Artpusher's freedom of expression.

Consequently, the court prohibited Artpusher Gallery from further producing, marketing, or selling products with the disputed motifs of the Irma Girl and ordered the removal of such images from social media and websites, as well as the recall of the involved paintings and products from the market.

Comment

The decision in the Artpusher vs. Coop case highlights that commercial exploitation of trademarks cannot be justified solely by citing freedom of expression, especially when it conflicts with the rights and interests of the trademark owner. Under Danish law, the use of a trademark within the scope of artistic creation is often recognized as lawful, as it does not constitute trademark use in a commercial sense. This is because such use typically does not aim to leverage the trademark's reputation or confuse consumers regarding the origin of the goods or services involved.

A key element of the assessment is whether the trademarks are used in a commercial sense or merely as decoration – also called ornamental use. Given the trademarks’ central role in the motif series and their integral presence on the marketed goods in the Irma Girl case, the court found that Artpusher’s use transcended mere ornamental use, serving instead as an essential element in marketing the goods.

Furthermore, the Artpusher case involved more than the use of a trademark in a single artwork or a series of artworks. It concerned a systematic production of art and merchandise incorporating the trademark, which extended beyond what would usually be considered non-commercial or artistic use. This extensive and systematic use of the trademark was perceived to benefit from the trademark's reputation, constituting an infringement of the trademark owner's rights.

The dispute echoes the issues at stake in previous notable cases, such as the Little Mermaid controversy, where a Danish newspaper was acquitted for publishing a satirical drawing and photograph of the iconic statue, citing freedom of speech and the parody principle within Danish copyright law. Conversely, the Artpusher case resulted in a ruling against the gallery, emphasizing that trademark law does not harbor a parody exception akin to that in copyright law, marking a clear boundary for artists and commercial entities alike regarding the use of trademarks in art, especially for commercial purposes.

In the Jack Daniel's v. Bad Spaniels case, the U.S. Supreme Court ruled that the First Amendment does not fully protect parody products using third-party trademarks. The Court emphasized that trademark infringement claims are primarily assessed based on the likelihood of confusion, even for expressive works. This decision clarifies that while parody products are not outright prohibited, they are subject to trademark scrutiny, aligning with the court’s decision in the Irma Girl case.

Also the IKEA referral case (C-298/23) is worth mentioning as this case further highlights the balance between trademark protection and freedom of expression within the EU. In this case, the CJEU has been asked to clarify the role of freedom of expression under EU trademark law, particularly in relation to the notion of "due cause" as outlined in Article 9(2)(c) of the EU Trademark Regulation (EUTMR) and Article 10(6) as well as Article 10(2)(c) of the EU Trademark Directive (EUTMD).

The case arose from a dispute between IKEA, the Swedish furniture giant, and a political party over the unauthorized use of IKEA's famous blue-and-yellow logo in a campaign advocating for asylum and migration policy reform in Belgium, known as the "IKEA-PLAN". The political party argued that their use of the logo was justified by due cause.

The referring court in Belgium is seeking clarity on whether the notion of “due cause” and the freedom of expression could justify the trademark use in such cases, and if so, what criteria should be considered. The case is still awaiting CJEU’s decision.

The IKEA case underscores a critical debate: The extent to which trademarks can be used in non-commercial, expressive contexts without infringing upon trademark rights. The Artpusher case highlights the limitations placed on artistic expression when commercialized, whereas the IKEA case could redefine the boundaries of political expression under trademark law. Thus, where the Irma Girl case ultimately limited the scope of freedom of expression in the context of trademark law, the IKEA case can potentially broaden said scope.

For now, we’ve learnt one thing: While the canvas of artistic expression is broad and valued, it does not provide carte blanche for the use of protected trademarks in a manner that borders on commercial use.