To date, in Canada, relatively little attention has been given to issues of freedom of expression in trademark law, although the matter is gaining increased attention worldwide. This is not to say that the issues have been absent ; rather, they have been diffused across different dispute resolution fora, lost in the pages of court decisions that focus primarily on other issues, and, perhaps most significantly, dealt with on the margins of the legal system, where disparities in economic power between trademark owners and the targets of their cease and desist letters leave little hope for the development of a viable jurisprudence. This paper explores some of the many ways in which freedom of expression interests intersect and conflict with trademark law and makes recommendations for the development of Canadian law in this area. The paper begins with a discussion of the communicative function of trademarks, and their relationship to the freedom of expression. It then considers two distinct roles for trademarks. The first is as the marker or locator for expressive content on the Internet, for example, in domain names that resolve to web sites critical of the trademark owner. The second is as a vehicle to communicate critical messages about the trademark owner or its products or services, for example, the parody of a trademark logo. On this second issue, the paper will examine the implicit balance in the Trade-marks Act[1] between freedom of expression values and trademark rights and how this balance is affected by the contemporary push for greater trademark protection. The paper identifies specific problems that arise in relation to freedom of expression and trademark law. These include the treatment by courts of intellectual property rights as private property rights, the trademark/copyright overlap, the distinction between commercial and non-commercial uses, the privileging of trademarks in domain names, and the phenomenon of trademark bullying.

It is the essence of a trademark to perform a communicative function[2]. Bently observes that as modern trademark law evolved, “what made a sign a trade mark was how it functioned or how it was understood[3]”. A registered trademark, which may consist of words, designs or a combination of both[4], is meant to communicate a message about trade source. The definition of a trademark in the Trade-marks Act states that a trademark is “a mark that is used by a person for the purpose of distinguishing or so as to distinguish wares or services manufactured, sold, leased, hired or performed by him from those manufactured, sold, leased, hired or performed by others[5]”. The consumer who encounters a swoosh on the side of a running shoe or on the front of a sweatshirt, for example, will know that the products come from the Nike Corporation.

The definition of a trademark as an indicator of trade source, however, does not tell the full story of the communicative burden such marks are increasingly expected to bear. Relatively early in the evolution of trademark law, courts accepted that trademarks could communicate not only messages about source, but also messages about the quality of the wares or services based upon the reputation of the source and the consumer’s past purchasing experience[6]. Thus, a consumer encountering a familiar trademark on a new line of goods could expect those products to be of a similar quality to others produced by the same company. The source message remains, but is enhanced by other informational content.

More recently with the growth of the phenomenon of “branding”, trademarks have come to convey even more complex messages[7]. A brand conveys a corporate identity message ; it tells consumers about the character or personality of the company behind the trademarked goods[8]. Although the term “brand” is often used interchangeably with the word “trademark[9]”, the two are different. The brand expresses an identity message ; the trademark is a symbol used to indicate trade source. Nevertheless, trademarks are increasingly relied upon to communicate brand messages. They can do so across linguistic and cultural barriers, making them exceptionally powerful symbols within an increasingly globalized economy[10]. Since famous marks now almost inevitably convey brand messages, it is not surprising that the owners of these marks have sought to have trademark protection extended. The law is now asked not only to protect source messages, but also to protect the broader brand message as well.

The brand messages conveyed by trademarks have given these marks a further communicative dimension. Brand identity messages are meant to have a different impact on consumers than simple source identification messages. The brand message appeals to the consumer’s sense of self, and as such these messages invite a certain level of interaction with the brand. In her landmark book in 2000, Naomi Klein wrote about the manner in which brands communicated identity-oriented messages. She argues that corporate branding “was about thirstily soaking up cultural ideas and iconography that their brands could reflect by projecting these ideas and images back on the culture as ‘extensions’ of their brands[11]”. Just as the brands absorb and reflect back culture and identity messages, consumers are invited to “experience” the brand. Klein notes that by purchasing a product of a particular brand, a consumers may also be making an expressive choice through identifying themselves with the broader brand message[12]. Thus, when worn or featured on items carried by the consumer, the trademark is used by the consumer to send a separate personal identity message[13]. In this context, Dreyfus has argued that consumers participate in generating the message borne by the mark[14]. It is interesting to observe that the rights of individuals to convey identity messages through trademarks have already been litigated, although this has chiefly been in contexts where the identity message is considered anti-social[15].

Brand messages, because they are more complex, are also capable of subversion. In some cases trademarks are used to convey alternate messages within the context of a sub-culture. For example, the wearing of sweatshirts and other apparel bearing the logos of professional sports teams has been associated with gang affiliation in some U.S. cities[16]. The instances where consumers embrace or subvert the identity messages associated with trademarks illustrate the increasingly complex relationship between consumers and trademarks. In this environment, consumers are not simply the recipients of a brand message ; they adapt the messages to their own communicative purposes. The conversion/subversion of brand messages is increasingly common. Such conversions are sometimes accepted or embraced by trademark owners who see a marketing opportunity or who find that the group identity message is compatible with their brand message[17]. Such interplay may also lead to strong resistance[18].

The complexity of brand messages and their interactive nature are complicated by the desire of trademark owners to have the broadest possible control over their trademarks. On the one hand this seems like a sensible corporate practice : a company has an obligation to its shareholders to protect its assets, and trademarks are increasingly valuable assets. From another viewpoint, however, it is a bit like starting a conversation and then seeking to control where it goes[19]. Trademark law is being asked to favour the corporate message over all others. Aoki argues : “Increasingly, the only institute that is allowed to impregnate text with meaning is Corporate American. Hence, the self will increasingly be defined by Corporate American because the self will be forced to reconfigure personal identity so as to render it consistent with those identities articulated and approved by trademark owners[20].”

Davis notes that the “shape” of the trademark monopoly is in a state of evolution. In her view, “the direction of such change will reflect broader ideological shifts as to where the balance of the public interest lies between proprietors, competitors and the public more generally[21]”. The debate over freedom of expression and trademark law falls squarely within this context of multiple and shifting meanings[22].

The rights and freedoms set out in the Charter[23] apply only to legislation and to state action[24]. Thus, unless it is a government or other state actor that is attempting to limit the use of its own trademarks by others[25], the necessary nexus with government action for the purposes of Charter application will be through the Trade-marks Act or related legislation such as the Olympic and Paralympic Marks Act[26]. The provisions of the Trade-marks Act, which confer the trademark monopoly and set limits upon it, must be interpreted and applied in a manner that is consistent with Charter values[27]. The same can be said of the common law rules that protect unregistered trademarks[28].

Section 2 (b) of the Canadian Charter of Rights and Freedoms gua- rantees the “freedom of thought, belief, opinion and expression, including freedom of the press and other media of communication[29]”. As discussed above, trademarks are inherently communicative. They are symbols which convey often complex messages. As such, their use is a form of expression. The freedom of expression in Canada is not limited to explicit verbal messages. Expressions in signs, symbols, drawings, and gestures are all protected ; only extremely anti-social forms of communication such as violence are not part of the Charter right[30].

The primary trademark message is commercial in nature, and trademark owners are usually (although not always) corporations. Since the early days of the Charter, the Supreme Court of Canada has made it clear that commercial expression is protected by the freedom of expression[31]. Further, the freedom of expression can be asserted not just by individuals, but also by corporations[32]. Commercial expression can be conveyed in a variety of ways, including, notably, in advertising[33]. In RJR-MacDonald Inc. v. Canada (Attorney General)[34], the Supreme Court of Canada also established that the right to freedom of expression includes the right to use one’s own trademarks[35]. As with other forms of expression, commercial expression is subject to reasonable limits demonstrably justified in a free and democratic society[36]. In the case of commercial speech, the reasonable limits may include restrictions on the size, location and language of advertising content[37]. They may also include limits on how and when certain audiences are targeted[38].

Clearly, the Supreme Court of Canada has recognized the right of corporations to communicate via their trademarks. Yet trademark owners are not the only ones who use these marks to communicate. As noted above, individuals may use trademarked goods to convey their own identity messages. The ability of trademarks to convey, in an elliptical manner, complex messages of source, quality and brand experience also make them the ideal target for expression that is critical of the product or company that is represented by the mark[39]. Such expression can take many forms, including parodies in art, song or print[40]. It can also consist of Internet-based websites that are critical of corporate practices or products[41], or that seek to organize consumer boycotts or criticize politicians or governments[42].

The trademark becomes an ideal vehicle for critical expression precisely because of the elliptical way in which a recognizable word or design can convey complex messages. Indeed, as corporate owners have enhanced the messages conveyed by trademark (from source to quality to brand identity), the symbols become more densely packed with meaning. It is not surprising, then, that critics of companies and their practices would wish to target their trademarks in their critical expression. By using the trademark, the critics can leverage the same direct connection that consumers make between the mark and its trade source. Further, a parody of the mark can be an effective parody of the brand message conveyed by the mark. This was apparent in Michelin, where the court described the effect of the defendant Union’s parody of Michelin’s Bibendum design mark (the “Michelin Man”) in these terms : “Rather than the cuddly marshmallow creature of safety and responsibility, ‘Bibendum’ became the boss’s henchman about to stomp two workers into submission[43].”

Although the Supreme Court of Canada has not ruled directly on the issue of the rights of individuals to use the trademarks of others in their expression, it has found that consumer counter-advertising is a protected form of expression[44]. In R. v. Guignard, the court wrote :

Consumers may express their frustration or disappointment with a product or service. Their freedom of expression in this respect is not limited to private communications intended solely for the vendor or supplier of the service. Consumers may share their concerns, worries or even anger with other consumers and try to warn them against the practices of a business. Given the tremendous importance of economic activity in our society, a consumer’s “counter-advertising” assists in circulating information and protecting the interests of society just as much as does advertising or certain forms of political expression. This type of communication may be of considerable social importance, even beyond the merely commercial sphere[45].

In this passage, the Court not only recognizes the protected nature of consumer counter-advertising ; it also finds that limited vehicles are available to consumers who are substantially economically disadvantaged in communicating their counter-corporate messages. The court stated : “simple means of expression such as posting signs or distributing pamphlets or leaflets or, these days, posting messages on the Internet are the optimum means of communication for discontented consumers[46]”. Clearly, then, the vehicle for counter-advertising is important to the expression of the message ; access to these vehicles ensures a viable means of communication. Although the court did not discuss the use of trademarks in counter-advertising, trademarks themselves are vehicles for this form of expression, particularly where the recognizability of the parodied mark facilitates the communication of the message in the context of a significant disparity in power[47].

The push for expansion of trademark rights necessarily has an impact on the freedom of expression[71]. This impact will most likely be felt in areas where consumers individually or collectively, seek to interact with famous trademarks for their own purposes, whether these are critical, laudatory, playful, or self-referential. As Coombe notes, the amplified protection for famous marks means, in practical terms “that the more powerful the corporation’s position in the market, the more successfully it can immunize itself against oppositional cultural strategies[72]”. The dominant discourse around the need for greater levels of intellectual property protection in order to counter piracy obscures the fact that trademarks occupy an increasing breadth of communicative space. Enhanced trademark protection can even be used to control conversations that the trademark owners themselves have provoked. In such a context, the values of freedom of expression must be carefully protected.

The phenomenon of large industry lobby groups putting pressure on governments to augment the protection available for intellectual property has been most evident in the area of copyright law, where a growing succession of international treaties[73] has led to consistent demands for stronger rights, more vigorous enforcement, and even new rights[74]. Similar pressures have been evident in the trademark area as well. Treaties like the Anti-Counterfeiting Trade Agreement[75] create new state obligations with respect to enforcement and border measures.

Beyond such international agreements, trademark owners have also pushed for enhanced protection for trademarks against what is known as “dilution” and “tarnishment” in the United States, and “depreciation of goodwill” in Canada. Such provisions permit trademark owners to seek recourse for harm to the goodwill that they have established in their trademarks. This is quite different from seeking recourse for the use by another of a trademark that creates confusion in the marketplace. Confusion analysis generally takes place within a commercial context, and a finding of confusion will often turn on the degree of similarity between the plaintiff’s and defendant’s wares or services[76]. By contrast, in Canada, “depreciation of goodwill” addressed in section 22 of the Trade-marks Act, does not require that a trademark be used as a trademark, thus broadening the range of contexts in which an infringing use may be found. Recourse for depreciation is available against uses that harm a mark’s reputation, that divert customers, or that otherwise undermine the value of the goodwill associated with the mark. Craig has cautioned that “[t]he potential scope of this right is enormous, and clearly capable of restricting basic competitive practices as well as commercial (and other) speech[77]”.

The test for “depreciation of goodwill” recently formulated by the Supreme Court of Canada in Veuve Clicquot[78] gives some hope that the recourse, in Canada at least, will remain more or less confined to commercial contexts. Justice Binnie cautioned that “[t]he depreciation or anti-dilution remedy is sometimes referred to as a ‘super weapon’ which, in the interest of fair competition, needs to be kept in check[79]”. Describing the test for depreciation, he wrote :

Section 22 has four elements. Firstly, that a claimant’s registered trade-mark was used by the defendant in connection with wares or services — whether or not such wares and services are competitive with those of the claimant. Secondly, that the claimant’s registered trade-mark is sufficiently well known to have significant goodwill attached to it.  Section 22 does not require the mark to be well known or famous (in contrast to the analogous European and U.S. laws), but a defendant cannot depreciate the value of the goodwill that does not exist.  Thirdly, the claimant’s mark was used in a manner likely to have an effect on that goodwill (i.e. linkage) and fourthly that the likely effect would be to depreciate the value of its goodwill (i.e. damage)[80].

The first element identified by the court would seem to require a use in a commercial context, since the terms “wares” or “services” have generally been interpreted to be commercial in nature[81]. This would appear to leave space for non-commercial uses of trademarks. Yet there may well be a free speech balance to be struck even with the use of trademarks in commercial contexts. It should not be presumed that all expressive uses of trademarks with a commercial dimension are inherently infringing[82]. The Court in Veuve Clicquot did nothing to limit the use of section 22 in this respect, and indeed it indicated that its decision did not address all possible forms of depreciation under section 22[83]. There is reason to be pessimistic ; in Source Perrier (Société Anonyme) v. Fira-Less Marketing Co. Limited, a case that predates Veuve Clicquot, and that involved a commercial parody of a trademark, the court stated : “the most liberal interpretation of ‘freedom of expression’ does not embrace the freedom to depreciate the goodwill of registered trade marks[84]”.

The fragility of the built-in limits on the scope of trademark rights is evident in the enactment of the Olympic and Paralympic Marks Act. This legislation was introduced so as to enhance the protection available for Olympic and Paralympic marks in the lead-up to the 2010 Vancouver Winter Games. The Bill did not initially contain exceptions aimed at preserving freedom of expression through parody or artistic expression ; the government’s position may have been that the right to use trademarks for critical or artistic non-commercial speech was implicit in trademark law. However, the Bill was amended[85] to include two exceptions prefaced with the words “for greater certainty” that permit the use of Olympic and Paralympic marks for criticism or parody, or in artistic works[86]. The need to make these exceptions explicit is revelatory of at least two things. The first is a deep unease over the reliability of implicit limits on the scope of the trademark monopoly ; the second is the chilling effect that merely implicit limits may have on ordinary individuals who do not have easy or affordable access to legal advice on the boundaries of the legitimate use of trademarks.

The inclusion of express exceptions to preserve freedom of expression in relation to trademarks, such as those in the OPMA, is at least superficially interesting. However, such an approach raises its own concerns. The inclusion of some exceptions may lead courts to determine that other expressive acts are precluded. Further, as will be discussed below, the wording chosen for the exceptions may have the effect of unduly limiting their scope[87].

The preceding sections have described both the expansion of trademark rights and the implicit balance that courts have struck between the trademark monopoly and expressive rights under the legislation. This section considers the jurisprudence more closely to identify patterns of interpretation that threaten a more expansive approach to freedom of expression in the trademark context. These problems, which collectively demonstrate the fragile state of freedom of expression rights in the ever-expanding trademark universe, flow from the tendency of some courts to treat intellectual property rights as private property, the trademark/copyright overlap, and the distinction drawn between commercial and non-commercial trademark use.

A significant problem for freedom of expression and trademarks is the body of jurisprudence in Canada that equates intellectual property interests with private property rights. Where this occurs, courts have shown a reluctance to allow expressive rights to “trespass” upon private property. In Michelin, discussed above, the court stated “[t]he Charter does not confer the right to use private property […] in the service of freedom of expression[88]”. Similarly, in Sun Media, another case involving a union’s parody of the employer’s trademarks in the context of a labour dispute, the court ruled that the freedom of expression did not confer a right to use another’s personal property[89]. The court stated that intellectual property laws[90], rather than limiting freedom of expression, placed certain limits on the use of the property of others[91].

This position is based upon pre-Charter jurisprudence that reinforced the sanctity of physical property. For example, in Harrison v. Carswell, a case which raised the issue of the right to picket on private property, the majority of the Supreme Court of Canada stated : “Anglo-Canadian jurisprudence has traditionally recognized, as a fundamental freedom, the right of the individual to the enjoyment of property and the right not to be deprived thereof, or any interest therein, save by due process of law[92].” This fundamental right to the enjoyment of property is buttressed, according to the court, by trespass laws. The court in Michelin equated the use of Michelin’s intellectual property for the purposes of union protests as constituting an equivalent sort of trespass. Justice Teitelbaum expressly rejected arguments that intellectual property rights are different from private property rights because they are created by the state. He wrote : “The fact that the Plaintiff’s copyright is registered by a state-formulated system under the aegis of the Copyright Act in no way diminishes the private nature of the right[93].”

The court’s approach in Michelin is not easily reconciled with the Supreme Court of Canada’s subsequent decision in Théberge v. Galerie d’Art du Petit Champlain[94], which articulates the purpose of copyright law in light of the balance struck in the legislation between the interests of creators and the interests of society. The Court later refers to these interests as “users’ rights[95]”, drawing a line under the fact that copyright law conveys certain rights to the owner of copyright but that the same subject matter may be subject to the competing “rights” of those who seek to make use of it for certain purposes. In the trademark context the boundaries between the rights of the trademark owner to use the protected image or words are carefully constrained and do not constitute an absolute right to use that image or those words in all contexts or circumstances.

Although the private property approach adopted in Michelin has been roundly criticized[96], there is no Canadian case law that expressly rejects it[97]. This creates a problematic jurisprudence in which to situate disputes over critical uses of trademarks. As Coombe notes, where trademarks play a role in expressive conduct, their protection as private property “freez[es] the connotations of signs and symbols and fenc[es] off fields of cultural meaning with ‘No Trespassing’ signs[98]”. In his treatise on intellectual property law, Vaver argues for a shift in Canadian judicial approaches to intellectual property rights in this area — away from a property rights focus towards one that adopts an approach that balances a broader set of values[99]. This would certainly seem to be consistent with the strong message sent by the Supreme Court of Canada in relation to copyright law in its more recent jurisprudence[100]. On this view, private property arguments cannot be used to artificially exclude others from the expressive space occupied by trademarks.

In this respect, lessons may be drawn from the opinion of Justice Sachs of the South African Constitutional Court in Laugh it Off Promotions[101]. In assessing whether a parody of a trademark logo infringed the trademark anti-dilution provisions in South African law, Justice Sachs took a nuanced view and noted that it would not always be possible or effective for a critic to use some means other than a parody of a trademark itself. He wrote : “the more the trade mark itself is both directly the target and the instrument, the more justifiable […] its parodic incorporation [will] be[102]”. This approach regards the trademark not simply as a piece of property, but rather as something which conveys sufficient meaning to itself become the target of parody or satire. In such a context, the trademark is both the target of the criticism, but also the communicative vehicle by which that criticism is most effectively expressed.

As noted above, trademarks must generally be used in a commercial context before infringement can be found, thus leaving space for non-commercial critical speech. However, in the case of design marks, this space is virtually eliminated by the way in which Canadian courts have approached their interpretation of copyright in trademark designs. Thus, in Michelin, discussed earlier, the Union was found not to have infringed the company’s trademark rights by using a parody of the Michelin man in its pamphlets and on placards. However, these same uses were considered to amount to copyright infringement, and were enjoined by the court. The court’s opinion that parody did not constitute “criticism” for the purposes of the fair dealing exception negated the room that trademark law created for the non-commercial use of the trademark. The absurdity of protecting Michelin’s Bibendum as nothing more than an “artistic work” is evident in Justice Teitelbaum’s statement that “if copyright is not respected and protected, the creative energies of authors and artists in furthering the diversity of ideas will not be adequately compensated or recognized[103]”. Whether this is true or not in the abstract, in the context of a design created to serve as a trademark, it is nonsensical. The only incentive needed to develop trademark logos is the incentive to benefit from their communicative functions as trademarks. Similar results have occurred in other cases where trademark logos were parodied[104]. These decisions are highly problematic because they fail to acknowledge the semantic burden borne by the trademark.

The recognition of the trademark subtext as inherent to the design itself will be particularly important now that the fair dealing exception in the Copyright Act has been amended. The amended provision expressly allows parody and satire to qualify as fair dealing. This will open the door to arguments that any given parody of a trademark logo amounts to a fair dealing with the work. The contextual analysis of fair dealing mandated by the Supreme Court of Canada in CCH Canadian[105] would therefore have to take into account the design’s trademark function. In considering the nature of the work, for example, the analysis should take into account the fact that the work is a trademark and that non-commercial, critical or parodic speech is generally permitted by trademark law.

As discussed earlier, the trademark case law finds non-commercial uses of trademarks to be generally non-infringing (although as is noted in the previous section, problems may arise where there are also copyright issues at play). However, in Canada, commercial parodies are generally enjoined under trademark law[106]. For example, in Source Perrier (Société Anonyme) v. Fira-Less Marketing Co. Limited, the court found that a defendant’s political spoof, which used the trademark Perrier bottle as its vehicle infringed section 22 of the Trade-marks Act. The defendant sold bottles of water that were also for sale under the mark Pierre, Eh ?, a sly reference to then Prime Minister Pierre Elliot Trudeau[107]. The Court found that this parody of the plaintiff’s trademark was captured by the definition of “use” in section 4 of the Act. Similarly, in Green v. Schwartz, a passing off case, a court enjoined the defendant from producing and selling sweatshirts that featured, in a parody of the Roots trademark and its beaver logo, the word Rots over a skeletal beaver[108].

These cases appear superficially to constitute commercial uses of the parodied marks, as in each case the parodied mark was affixed to wares that were for sale in a commercial context. Yet these cases are also suggestive of the difficulties inherent in the commercial/non-commercial dichotomy. Some forms of parody may be relatively ineffective if they do not reach consumers in the same commercial space occupied by the original mark. As Dreyfus notes, the “dichotomy between the marketing and expressive spheres, which was always somewhat indistinct, has collapsed[109]”. Further, there may be costs associated with the critical campaign in which the parody is used that must be recuperated. Thus, where t-shirts bearing parodied logos are sold to recover the costs of their production, the use may appear commercial, although it may be more communicative than commercial in its primary purpose. Where the purchase price also goes to support an organization’s critical campaign, the waters are murkier still. While trademark owners should not be expected to tolerate parodies that exploit the renown of their marks for commercial gain, there must nevertheless be a sufficiently nuanced analysis to allow distinctions between the commercial exploitation of a mark’s goodwill and a genuinely critical use.

It is not obvious that all parodies with some commercial dimension should necessarily be enjoined. As Illsley writes, “almost every trade mark parody involves some form of commercial expression[110]”. Further, “commercial activity” may not be sufficiently well-defined to ensure adequate space for free expression[111]. For example, in the Internet context described earlier, the use of trademarks in domain names that resolve to sites critical of the trademark holder have been found to have “commercial” dimensions simply because they may divert the trademark owner’s Internet traffic to the critical site[112].

Given that trademarks convey brand messages within a highly consumer-capitalist society, one wonders why parodies and satires are excluded from operating in the same commercial realm as the trademark[113]. Through anti-dilution and anti-depreciation provisions, trademark protection has expanded into new spheres that trademark owners have chosen to occupy. If a mark is embraced by a segment of the population as conveying an identity or status message of some sort (and indeed, for what other reason would people choose to wear corporate logos emblazoned on their clothing ?), it is not clear why an explicitly critical counter-message is not permissible in the same medium. According to the courts, the reason is that the owners of the parodied marks have built up a substantial amount of goodwill in their marks and commercial parodies both trade on this and undermine it. Yet it is precisely the “loud” brand messages communicated by famous trademarks that make them tempting targets for parody. It is their place in consumer culture that also leaves them vulnerable to attack. An approach that automatically silences parody and criticism that operates within the same commercial sphere as the original is unduly limiting. In Laugh it Off Promotions[114], Justice Sachs opined that the use of trademarks in parodies with commercial dimensions should not automatically be considered infringing. He argued that courts should focus on the primary goal of the parody. If it is primarily commercial, it may be infringing ; if it is primarily communicative, and incidentally commercial, it should be allowed greater latitude.

The commercial/non-commercial distinction can be problematic in other instances as well. For example, artists may incorporate trademarks into their works for a range of expressive purposes. If the sale of such works is treated as commercial, then the scope for such artistic expressions is genuinely limited[115]. The OPMA, discussed earlier, contains an express exception for the use of Olympic marks in artistic works. However, the exception is only available “if the work is not reproduced on a commercial scale[116]”. While this might not capture the production and sale of a single painting or sculpture, a series of prints or photographs produced for sale might well fall outside the scope of the exception. Further, for some artists, such distinctions might limit their ability to licence their work in contexts where they may derive revenue streams, such as for reproduction on posters, greeting cards, calendars, mugs or other gallery gift shop items. Exceptions for “non-commercial” uses, whether in statutes such as the OPMA, or crafted by judges, may therefore only benefit certain types of artists and artistic works.

Arguably an exception for artistic or parodic works that limits their commercial exploitation achieves a balance between the artist’s expressive rights and the rights of trademark owners to control the messages conveyed by their marks. In University of Alabama Board of Trustees v. New Life Art Inc.[117], an Alabama court found that a well-established artist who had made his career painting football scenes featuring the University of Alabama’s famous “Crimson Tide” football team did not infringe the team’s trademark rights by featuring trademarked jerseys, team logos and other insignia in his paintings, which were protected speech. Yet the court drew a line between the sale of the paintings or fine art prints of them (which was considered legitimate) and the licensing of those works for reproduction on mugs, t-shirts or other such items. The latter type of activity could only be carried out under licence from the University of Alabama. The court’s decision, which seems to map quite closely onto the exception incorporated into the OPMA, achieves a balance that carves out a fairly wide ambit of protection for the trademark holder and grants it the power to control or limit exploitations of the artists’ work that cross from the perceived realm of “art” into that of “commerce”. The balance might be easier to accept if these realms were in fact separate, and not increasingly blended in a commercialized cultural environment.

In any discussion of freedom of expression and trademarks the economic disparity that typically exists between trademark owners and those who criticise corporations or their wares or services must also be taken into account. In the case of well known or high profile marks, the trademark owners are often powerful corporations with deep pockets. All too frequently, cease and desist letters from trademark owners to those who parody or criticize using trademarks bring an abrupt end to that form of criticism[118]. The cost of advice on trademark infringement issues is steep ; for a non-commercial critic it may well be prohibitive. Further, the costs of fighting a battle in court would be crippling for many. It is telling that in Canada the trademark/freedom of expression jurisprudence flows almost exclusively from labour disputes, where the defendants are unions with some means to respond to the employer’s legal manoeuvres. Disputes over trademarks are most certainly not funded by legal aid regimes. Further, advice on trademark issues generally must come from specialized professionals at premium prices. In smaller communities outside Canada’s larger cities, such advice may be difficult to find locally.

Ordinary individuals are also most likely to be caught by rote enforcement of trademark rights. For example, companies that are routinely on the lookout for trademark misuses may automatically send out cease and desist letters without much reflection as to possible claims of legitimate or non-commercial use of the marks. Where the recipients of such letters have limited resources, they may feel that they have little choice but to comply with the trademark owners’ demands.

In a conflict that received a great deal of media attention in Canada, the Conservative Party of Canada sent a cease and desist letter to Michaela Keyserlingk, who had created a website to protest the Canadian government policy on asbestos sales overseas following the death of her husband as a result of asbestos-related cancer[119]. The site reproduces the Conservative Party logo next to a statement that “Canada is the only western country that still exports deadly asbestos[120]”. The cease and desist letter alleged trademark infringement flowing from the use of the logo[121]. In a newspaper article discussing this tactic, one author described it as “bullying”, arguing that it was directed more at silencing Mrs. Keyserlingk’s message than at protecting trademark rights[122]. The blast of negative media coverage of the dispute may have led the Conservative Party to back off from its demands ; the logo remains on the website[123]. The case illustrates, however, how legal rights may be asserted even if they lack strong foundation, raising further concerns about the freedom of expression.

There are fundamental flaws in the Canadian jurisprudence relating to critical, parodic or artistic uses of trademarks, leaving only limited scope to use trademarks as vehicles for these forms of expression. This position is in contrast with the growing role of trademarks in culture and society which suggests, in contrast, that individuals should be permitted to interact with these marks and to harness their expressive power for creative or critical expression. The narrow approach taken by courts to expressive rights is reflected as well in the evolving case law around the use of trademarks as domain names.

Freedom of expression values would appear to have some role to play in support of critical, parodic and artistic expression, particularly since they already play an implicit role in the balance reflected in the Trade-marks Act. Nevertheless, the case law has left little room for critical or parodic uses of trademarks. This is due to a judicial tendency to equate intellectual property rights with absolute private property rights, problematic interpretations of copyright law that ignore the trademark functions of logos, and by often forced distinctions between commercial and non-commercial uses. The result is an impoverished and one-sided jurisprudence. When combined with the frequent sharp disparities in economic power between trademark owners and their critics, an environment is created in which it is simply too easy for trademark owners to assert their rights against those with limited resources and little helpful jurisprudence on their side.

Although one apparent solution is to codify rights to critical or other forms of expression using trademarks, such provisions may be problematic either because they are underinclusive of the myriad forms of potential expression, or because they incorporate some of the relatively unquestioned elements of the case law, such as the problematic distinction between commercial and non-commercial uses.

It might be preferable to see the development of a jurisprudence that is sensitive to and protective of expressive rights, and that recognizes the limited nature of the trademark monopoly. Such jurisprudence would necessarily have to take into account the expanding role of trademarks both in terms of the messages they carry and the extent to which they embed themselves within culture and invite consumers to interact with them. These increased functions of trademarks demand an increase in the expressive space open to those who seek to criticize the trademark source, its wares or its services, who challenge or critique the brand message, or who engage with the cultural embeddedness of certain marks. Unfortunately, the disparities in economic power between major corporations and their critics often mean that conflicts never arrive in court. This makes it even more imperative for the few courts seized with such issues to show greater openness to legal arguments that address the balance between the interests of rights holders and broader social and community values.