Gripe Sites and Trademark User Rights

Abstract

Abstract This chapter takes aim at a troubling trademark case in which a consumer’s non-commercial parody was held to infringe the rights of a registered trademark owner. Canada’s Cooperstock case is presented as a paradigmatic example—and cautionary tale—of what can happen when trademark owners’ rights are overprotected, users’ rights are disregarded, and trademark limits are irresolutely drawn. From overly expansive conceptions of trademark use to tenuous claims of confusion, and from dubious dilution claims to a total disregard for free expression, the chapter will explore how the plaintiff trademark owner was able to prevail at every turn. It will then draw some important lessons from the ruling. The first lesson is that trademark law requires explicit statutory exceptions, ideally in the form of a general fair-use defense, to circumscribe the reach of trademark rights. The second lesson is that such limits and exceptions need to be recognized as user rights (as they have been in Canadian copyright jurisprudence) if they are to be an effective counterbalance against owners’ rights. But the third lesson is that what is really required—in Canada and elsewhere—is a departure from the proprietary logic that portrays trademark rights as intellectual property not to be trespassed upon. If the trademark system is to permit expressive uses of protected trade symbols (whether parodic, satirical, critical, or nominative), the infringement analysis must be reoriented away from proprietary entitlement and toward a concern with the communicative and dialogic nature of marks.