Brands Use Trademark To Get Toronto To Pull Clever Anti-Litter Campaign Just Because

[Mike]

Recall that trademark law is chiefly about protecting consumers from confusion via the limitation of words, images and logos for use in specific forms of commerce -- specifically used in ways that might confuse the consumer about the origin of the product. In other words, consumers should be able to reasonably discern whether a brand is represented by the inclusion of that brands identifiable name and image in when seen. Simple right?

Then explain to me why a whole bunch of brands decided to torpedo a City of Toronto campaign that cleverly used some of their imagery to tell people to stop littering?

The city is now pulling the campaign because of trademark infringement concerns. The ads, which launched earlier this month, received attention for their humorous use of some very recognizable product packaging. The campaign slogan was, “Littering says a lot about you.” The ads featured discarded candy boxes, plastic bottles and other packaging arranged to spell the unflattering message that littering conveys.

The combinations included a bag of Lay’s potato chips and a Krazy Glue package arranged to spell “Lazy”; Reese’s Pieces and a bottle of Gatorade put together to spell “Pig”; Alka-Seltzer and Goldfish crackers saying “Selfish”; and a pack of Sweet'N Low and Lifesavers put together to say “Low Life.”

Some examples:

Clever, right? Apparently, several of the companies whose brands were used called to complain, simultaneously assuring the city that they fully supported the campaign to end littering, but that they were miffed over the use of their brands. The chief concern appears to be the potential for damage to the brands in question. The theory, I guess, being that the use of parts of recognizable brand names would result in consumers associating those brands with litter... or something.

Regardless, the City of Toronto caved to the pressure, even though they were likely completely in the clear. We reached out to some experts and couldn't find any who found this reasonable. One Canadian trademark lawyer told us he couldn't see how there was a legitimate trademark claim, while law professor Eric Goldman had this to say:

"I'm not sure about Canadian trademark law, but I can discuss it from the US perspective. I believe the ads are probably OK under trademark law because I doubt the trademark owners could establish the requisite consumer confusion. Looking at the ad in total, there's almost no risk that the consumers will think the ads are for anyone other than the anti-litter agencies. (There is a greater risk that the eye-catching use of third party logos would constitute "initial interest confusion," but that doctrine almost never succeeds in court any more). The trademark owners' strongest argument is that consumers will think the trademark owners authorized or sponsored the ads. That's an empirical question that would cost each side over $100k to answer via consumer surveys, plus hundreds of thousands more for legal fees. The large costs associated with adjudicating that question creates the opportunity for plaintiff bullying and defendant stonewalling."

Which is exactly what happened. It would take a lot of strain to convince one's self that the ads were about anything other than the city promoting a cleaner environment. Now that campaign has been lost to the trademark lawyers of brands that claim to support the effort.

Originally Published: Wed, 17 Sep 2014 03:46:00 GMT
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