NIN: Not Infringement, Necessarily
Politicians’ T-shirt logo a case of creativity, not disparagement
Use of the band Nine Inch Nails’ NIN logo on T-shirts appearing in a photo op by Premier Rachel Notley and Calgary Mayor Naheed Nenshi a few weeks ago has Edmonton Mayor Don Iveson’s legal counsel jittery about trademark infringement. To feel muzzled about the whole affair — a joke reference to the initials for Notley, Iveson and Nenshi — is exactly the way proponents of strong intellectual property laws would like Iveson to respond. But I do not think Iveson has anything to worry about. In fact, he should take a stand on the issue. Here’s why. Trademarks prevent businesses from using the same or similar names or logos as those of their competitors where it would lead to market confusion. If I formed a rock band named Nine Inch Fingernails, this would be trademark infringement since consumers in the marketplace would be confused that I was either Nine Inch Nails or at least was connected to them in some way. Trademarks operate in this way as a form of consumer protection. But confusion usually has a lot to do with the use of names or logos within the same class of businesses — in my example, the music business. When a name is used in businesses completely unrelated to each other, there is no confusion. That is why Apple can be used as a name for a record, mobile and technology devices, and car windshield companies. So when NIN is used for two completely unrelated purposes, there is no trademark infringement in terms of confusion.
Trademark law also protects against disparagement and dilution of a name or logo. Disparagement is the idea of associating the name or logo with something negative in a way that lessens its attractive force. A critic who portrays tech company Apple’s logo using a rotten apple might be an example. The association of three relatively popular politicians using the logo as a photo op does not rise to that level. Dilution occurs when a trademark, although it does not confuse and is not disparagingly portrayed, is used so as to dilute the mark’s association with its owner — in this case, Nine Inch Nails. There is some exposure here, in that any use of the logo by anyone cannot help but lessen its association with Nine Inch Nails. In fact, every time I use the words Nine Inch Nails in this op-ed, I could conceivably be diluting its associative connection (being used for my thoughts on trademark law, and not for the musical services of the band). So far, the Supreme Court of Canada has said trademarks are protected against dilution, but as yet no cases have defined what that means. I venture to guess that dilution must be connected to large scale dissemination of a logo, which didn’t happen here.
But concerns about disparagement and dilution may not even be relevant. Canada’s trademarks regime has remained remarkably restrained by focusing infringement claims to uses that occur in the marketplace. In one case where the Canadian Auto Workers union ridiculed the company’s Michelin man logo, the court said trademark law does not apply since it was a non-commercial setting.
Defining non-commercial is not always easy. But if it is true that only three T-shirts were made and none were sold, then this can in no way be a commercial use.
Any claim of infringement by NIN would stand on shaky ground — and that includes any claim of copyright infringement. It is always easier to cease and desist than to risk the cost of litigation and possibly, though unlikely, losing. The case is a strong one and there are important social policy issues at stake, including freedom of expression. Unlike copyright law, trademark law does not explicitly provide for exceptions to infringement based on legitimate free expression. For this reason, it is important that courts interpret the commercial provisions of the Trade-marks Act restrictively to allow ample room for expressive activity by consumers, critics and, yes, even politicians. As well, thresholds for dilution and disparagement need to be set at relatively high levels. As these battles are usually initiated by intellectual property holders with deep pockets asserting their rights, real or spurious, against small businesses or individuals without the resources to defend themselves, this would be the right case by the right defendants — government — to take a stand on freedom of expression.