‘Surviving A Brandalism Attack’ – Ex Google & Apple Lawyers Publish Legal Advice for Corporations

Brandalism and subvertising: hoisting brands with their own petard?

---

Brandalism is a movement with the stated aim of rebelling ‘against the visual assault of media giants and advertising moguls who have a stranglehold over messages and meaning in our public spaces’. Through public acts of ‘subvertising’, where through spoofs, parodies and other message-changing/obscuring alterations, activists seek to use a brand’s own marketing channels to make a statement against the brand itself. Subvertising typically involves artwork commenting on consumerism, cultural values, debt, the environment, body image or specific political messages placed over existing billboards at bus stops and other public spaces.

The article will identify the recent rise of brandalism, referring to examples from spring/summer 2014. It will also analyse the movement and its possible impact against the backdrop of on-going discussions relating to the appropriate balance between, on the one hand, brand owners’ intellectual property rights and protections against defamation, and, on the other, the free expression rights of individuals and other groups.

The article will draw on cases where courts in Europe have considered such issues and ruled where the balance between these conflicting sets of rights should lie. In considering how brandowners might respond to such brandalism campaigns, the article will consider: the extent to which intellectual property rights can be said to be infringed by such activity; the impact of parody defences in Europe and the parameters of fair dealing; the practical/commercial factors to be borne in mind; the relevance (and threats) of social media and viral memes; and the role (if any) of criminal enforcement.

Adam Smith-Anthony is a Senior Associate at Omnia Strategy LLP and John Groom is an Associate at Baker & McKenzie LLP. They are grateful to Ben Allgrove of Baker & McKenzie LLP for his input.

This article

– Brandalism is a movement with the stated aim of rebelling ‘against the visual assault of media giants and advertising moguls who have a stranglehold over messages and meaning in our public spaces’. Through public acts of ‘subvertising’, where through spoofs, parodies and other message-changing/obscuring alterations, activists seek to use a brand’s own marketing channels to make a statement against the brand itself. Subvertising typically involves artwork commenting on consumerism, cultural values, debt, the environment, body image or specific political messages placed over existing billboards at bus stops and other public spaces.

 

The Banksy epigraph above, while clearly not an accurate summary of brand owners’ motivations, shows that there is a powerful threat to their advertising campaigns. That threat was realized on a national scale in May 2014, when a group of anonymous artists and activists (or, to use the lingo, ‘subvertisers’) carried out an extensive campaign in the name of ‘brandalism’. Over two days, they doctored or replaced large commercial and political billboards and other roadside advertisements. Banksy’s words epitomize the motivations of those behind the movement. Their exploits gained prominence among the blogging community, attention on YouTube and even coverage in national newspapers, at the financial and commercial expense of brand owners.

In this article, we explore the motivations behind the brandalism movement and consider its effects on brand owners’ IP and commercial interests. We review the traditional legal tools available to rights holders and others targeted by these counter-culture guerrilla attacks, but look too at the strengthening of protections of expressive freedoms, exemplified by the introduction of parody as a defence in copyright law and demonstrated by judicial pronouncements applying Article 10 of the European Convention on Human Rights (ECHR). We conclude with a check-list of factors for business executives, in-house counsel and external advisers to bear in mind when reacting to a brandalism attack, and we sound a cautionary note that practical and reputational issues may militate against ‘going legal’ and require instead a more creative response.

The concepts of brandalism and subvertising are not new and to some extent ‘culture jamming’ issues and methods dating back to the 1950s were relabelled as brandalism in May 2014 when street artists subvertised 360 corporate advertising spaces across ten cities in two days; original artwork was supplied by 40 international artists for the campaign, including internationally recognised artists. Artworks were shared via the twitter handle @brandalismuk.

The stated aim of today’s brandalism movement is to rebel ‘against the visual assault of media giants and advertising moguls who have a stranglehold over messages and meaning in our public spaces’. Through public acts of ‘subvertising’, spoofs, parodies and other message-changing or obscuring alterations, activists seek to use brands’ own marketing channels to make a statement against the brands themselves. The movement represents a backlash against the perceived ubiquity and dangers of modern corporate advertising. Subvertising typically involves artwork commenting on consumerism, cultural values, debt, the environment, body image or specific political messages placed over existing billboards at bus stops and other public spaces.

Taking action: traditional legal tools

---

Copyright infringement

Brand owners must also anticipate various defences available to their brandalist foe. The UK Copyright Designs and Patents Act 1988 (CPDA), for example, expressly permits fair dealing with a copyright work for the purposes of criticism or review, or reporting current events. Unhelpfully for brand owners, the courts have ruled that these expressions are of ‘wide and indefinite scope’ and to be interpreted liberally, and that fair dealing is an ‘elusive concept’ assessed as a question of fact and impression. What is clear is that fair dealing does not depend on whether a defendant’s criticism of a work is substantively justified (which Brandalism is),[missing text here] circumstances in which the old (but preserved) common law defence of public interest might override copyright have been described judicially as ‘probably not capable of precise categorisation or definition’. None of this will be much comfort to brand owners who, while perhaps unsympathetic to such arguments, remain keen to avoid public courtroom submissions on the relative societal merits of their businesses and the brandalists’ anti-consumerism critique-by-spray-can. This is a significant practical bar to bringing even a strong infringement claim. The same is true for Article 10 defences to copyright infringement, which we consider below.

The judicial expansion of trade mark functions makes it easier to see how a claim for infringement could be made out, as pieces of brandalism more plausibly impact on the ‘investment function’ of a mark than bring into question the origin of the original work. It should be clear, for example, that Nike did not really launch an advertising campaign based on the theme of looting. For the same reason, infringement analyses will likely steer clear of parts 10(2) of the Trade Marks Act 1994 (TMA) and its need to show confusion on the part of the public, and gravitate instead towards ‘unfair advantage’ or ‘detriment’ arguments under s 10(3).

However, one would still need to demonstrate use in the course of trade, which may be di cult on the facts. Might the brandalist also turn to s 10(6) TMA to assert legitimate use of the marks? This is unlikely to be persuasive in most cases, as the article is concerned with the use of marks to identify, in a manner conforming with honest trade practices, the undertaking responsible for goods or services. That said, could a defendant theoretically turn to free speech arguments to establish ‘due cause’—under either s 10(3) or s 10(6)—and avoid a finding of infringement? The Court of Justice of the European Union (CJEU) has previously held that fair competition is due cause,5 and given the increasing power of rights-based arguments under the European Convention on Human Rights (ECHR), a free speech or parody defence may also be plausible, as we consider below.

 

Defamation

If the brandalist’s message defames a company or individuals, brand owners could potentially bring an action for defamation against the artist. The Defamation Act 2013 has been enacted to make defamation law more applicable to the internet age, and will be of interest to brand owners. The Act attempts to rebalance the focus of defamation claims from intermediaries, who gained a statutory defence akin to the safe harbour provisions found in copyright regimes, to the actual uploaders of defamatory statements. While at first blush the act is positive for brand owners, defamation requires ‘serious harm’ (ie ‘serious financial loss’) to be made out, which is perhaps too high a hurdle to clear in cases of defaced or repurposed advertising. Moreover, the Act puts the defences of truth, honest opinion and publishing on matters of public interest (formerly common law ‘Reynolds privilege’6) on a statutory footing, and do brand owners really want public discussion of arguments about the merits of criticisms levelled against them? For these reasons, plus the same reputational risks of perceived heavy-handedness noted above, defamation claims are not for the faint-hearted and should usually be viewed as the nuclear option.

 

There may have been criminal activity involved with grafting posters or online brandalism, depending on the facts in each case. However, a brand owner may face difficulties getting engagement from the police and crown prosecution service in any given case. Further, there could be a large reputational risk to brand owners of involving enforcement authorities. When presented with the image of the big, ‘nasty’ brand owner mobilizing its resources (and harnessing those of the state) against a plucky brandalizer, there is a real likelihood that the public will turn against the brand owner.

From a practical perspective, the brand owner may be satisfied just to get rid of the o ending content, whether appearing on a bus shelter or online. In the physical world, this should be straightforward, although brands may want to consider service level agreements covering the speed with which their advertising partners get the offending copy removed and the original advert reinstated.

Online, the notice and takedown procedure is the brand owner’s friend. Depending on the platform, notice and takedown procedures can provide a relatively quick and painless means of removing identified content amounting to an infringement. However, this approach does not tackle the root of the problem, since the user generally can simply re-upload the content elsewhere (and perhaps complain about corporate censorship or otherwise make life more difficult for the brand owner).

Looking ahead to new developments

---

New parody exception

ECHR arguments

As we have alluded to above, when faced with a brandalism attack, establishing a cause of action is only one of the factors to take into account when deciding how—or whether—to respond. A plethora of practical and commercial considerations means that taking time to carefully assess the situation and options, as well as the brand’s objectives, will be more prudent than rushing to fire off a cease and desist letter or file a claim at court.

In 2012, when Hillary Clinton was US Secretary of State, a photograph of her sending a text message went viral, with users adding their own words for the text—a kind of unsolicited caption competition played out spontaneously on social media. A dedicated blog was set up showing different user-generated takes on the meme, and the pictures trended under the hashtag #tweetsfromhillary. While many of the posts were favourable, the situation was potentially embarrassing but was both harnessed and diffused when Clinton invited the two bloggers behind the meme to her office and initiated a photograph of all three texting on their phones. According to CNN, not only was the blog shuttered within a week because the meeting with Clinton could not be topped, but also Clinton’s image was ‘altered almost overnight’ from a serious veteran on the political scene to a humanized person and brand able to laugh at herself.

Go Compare, the online financial services company, provides another case study. Perhaps by design, the brand’s marketing lacked the public goodwill that Clinton was able to tap into; its TV adverts, featuring a curiously annoying character was widely reported online as irritating and managed to take the top two spots in the Advertising Standards Authority’s top ten most complained about adverts of 2013. Examples of defaced Go Compare billboard adverts have appeared online, including one featuring expletives and phallic symbols. To maximize exposure, Go Compare released a new billboard campaign bearing seemingly vandalized versions of its own posters: in classic spray-paint style, ‘Go compare’ was obscured and replaced with ‘go and get some singing lessons’, ‘go jump o a cli ’ and ‘go get a new job’. The brand’s messaging was coordinated; a spokesman declared how ‘Gio is very important to us, but we realise there are some people that don’t love him in quite the same way that we do … it is a fun campaign and, as the reaction on Twitter shows, that’s exactly how people are responding to it.’ In this case, embracing the brandalism seems to have obtained better results for the brand than would have been the case if they had tried to fight it.

1. Do you want to be proactive, and track brandalism websites and notorious twitter handles, or reactive, picking up on issues when you realize they have gained traction?
2. What does your team think of the brandalism attack? Does it raise new concerns or draw attention to existing criticisms? Has it reached an audience beyond the core Brandalism movement? Is it gaining momentum amongst users online or in established media channels? Objectively, is it harmful or just irritating (noting that some studies have claimed that parody can actually be beneficial to the brand, through increased publicity and awareness)?
3. What are your objectives? Do you want to remove the o ending material, set the record straight, improve the brand image, maximize publicity, apologize for any failings that have been exposed?
4. Can you work through the intermediary, eg removal of defaced billboards by the advertising company or follow notice and takedown procedures of hosting sites online? Is an injunction required to force the intermediary’s hand? Will this solve or just redirect the problem?
5. Who is the culprit? Can you identify the individual(s) responsible?
6. Consider whether a combative response is commercially practical and the potential negative backlash to a perceived heavy-handed response, eg involving the police or filing a defamation suit. Beware of adding fuel to the fire.
7. Has your IP been infringed? Do you need further advice on the merits and strength of your case? Can you evidence your rights, eg can you demonstrate ownership of any copyright works, designs or marks you would want to rely on, based on IPR records?
8. Can the would-be defendant rely on fair use and/or human rights defences?
9. Can you internally address any criticisms raised, eg rectifying poor customer experience, inferior product quality, or supply chain non-compliance? Would such a review take the heat out of the situation and ultimately improve your business?
10. Is there scope for a more creative response? If you can?t beat them, can you join them?

To cherish in time?