A “Biting” Critique: Greenpeace, Kit Kat, and the Status of Protest in Canadian Trademark Law

It appears to be well established in Canadian courts that intellectual property law should not be used as a tool to stifle political criticism. But practically speaking … can it? In another course this semester I came across an incident that occurred with 2010 when Greenpeace initiated a protest campaign against Kit Kat. It got me interested in exploring of how much latitude Canadian IP law gives to those who use copyright or trademark infringement as a tactic for political criticism, and on the other hand, how corporations as copyright or trademark owners can use IP to stifle criticism.

Nestlé’s Kit-Kat Fiasco

In 2010 Greenpeace published a parody Kit Kat commercial (link below) on YouTube and on its website. In the video, a bored looking office worker opens a Kit Kat, revealing the fingers of an orangutan. Seemingly unsurprised and undeterred the man bites into the orangutan fingers. Blood drips down his face and onto his keyboard. In the background, the viewer hears the buzz of chainsaws. The clip ends with a twist on Kit Kat’s famous slogan, reading: “Have a break? Give the orangutan a break.”

The video was part of a Greenpeace campaign aimed at revealing Nestlé’s ties to rainforest destruction in Indonesia through its supplier of palm oil. Shortly after the video’s launch, YouTube took it down. Visitors to the video’s link were told the video was no longer available due to a claim of copyright infringement by Nestlé. The video had initially attracted almost no attention – less than 1,000 views – but once news of Nestlé’s response caught wind on social media the public backlash was severe. The video was reposted on Vimeo and had soon racked up millions of views. People flocked to Nestlé’s Facebook page to criticize the company. Many changed their Facebook profile picture to an altered version of Nestlé’s logo with the word “Kit Kat” replaced with “Killer.” Nestlé responded by issuing a statement on the Facebook wall:

To repeat: we welcome your comments, but please don’t post using an altered version of any of our logos as your profile pic — they will be deleted.

The statement prompted this exchange between the moderator and a Facebook user:

 Paul Griffin: Hmm, this comment is a bit “Big Brotherish” isn’t it? I’ll have whatever I like as my logo pic thanks! And if it’s altered, it’s no longer your logo is it!

Nestle: @PaulGriffing – that’s a new understanding of intellectual property rights. We’ll muse on that. You can have what you like as your profile picture. But if it’s an altered version of any of our logos, we’ll remove it from this page

The entire incident made headlines in the Wall Street Journal, New York Times and NBC, and Nestlé’s reputation went into freefall. The company’s stock price fell. In trademark terms, the damage to the goodwill of the brand was significant.

 The incident is notable as a catastrophic blunder for Nestlé’s public relations team, but the intellectual property aspect is an important piece of the story. While this did not happen in Canada, it does not appear that the story would have been any different in a Canadian intellectual property law context.

Nestlé was scrambling to protect its brand, and it leaned heavily on the protections afforded to it by IP law to do so. It’s not clear whether Nestlé’s actions would be protected by Canadian copyright and trademark law, but as this example demonstrates that may not actually matter. Nestlé was able to use IP law to protect its brand without having any infringement claims vindicated in court. Nestlé was able to get the Greenpeace video taken down almost immediately by making a claim in copyright. Nestlé’s content moderator also relied on the company’s IP rights to legitimize threats to remove material from the company’s Facebook page. In the hands of a company with a savvier public relations department, actions like these could pose a legitimate barrier to public protest or criticism.

There is a relatively strong argument to be made that Greenpeace’s actions – creating, uploading, and sharing the video on the internet – would amount to an infringement under the Copyright Act (“CA”). Nestlé likely owns the copyright in the Kit Kat logo under CA section 5(1) as an artistic work. The logo figures quite clearly and prominently in Greenpeace’s ad. Per CA section 27(1) posting the ad on YouTube would very likely constitute an infringement of the right to telecommunicate the work to the public (CA s3(1)(f)).

Greenpeace’s video seems arguably defensible to me as fair dealing either as parody, education, or criticism (CA s29; CCH Canadian Ltd v Law Society of Upper Canada, [2004] 1 SCR 339. However, after United Airlines, Inc v Jeremy Cooperstock, (2017 FC 616, per Phelan, J.) it appears that the Canadian courts have read some degree of actual fairness into the fair dealing analysis. Is all protest fair? What if the criticism was entirely unfounded and exceptionally detrimental to the brand? It is unclear what factors the court would refer to assess the fairness or legitimacy of public protest or criticism.

Also interesting in the Canadian context is the possibility that Nestlé could have had grounds to bring an action against Greenpeace for depreciating the value of their goodwill under section 22 of the Trademark Act (“TMA”). This very likely not the context in which Parliament intended section 22 to apply. In Veuve Clicquot Ponsardin v Boutiques Cliquot Ltée, [2006] 1 SCR 824 [Veuve] and Clairol International Corp. v. Thomas Supply & Equipment Co, [1968] 2 Ex CR 552 [Clairol] the courts purposefully restricted the ambit of section 22, presumably with an eye to concerns related to the use of trademark law to stifle the ability to protest. Yet, the test as articulated in Veuve does not, on its face, preclude such an application. As the court in Clairol remarked, “in its ordinary use the language [of section 22] seems broad enough to include a conversation in which a person adversely criticizes goods which he identifies with reference to their trade mark” (Clairol at 36).

Applying the section 22 test established in Veuve: Greenpeace used Nestlé’s trademark in such a way that would give notice of the association to Kit Kat; the Kit Kat trademark is exceptionally well known and regarded internationally and thus likely has considerable goodwill capable of depreciation; Greenpeace’s use was certainly likely to depreciate the value of the goodwill; and there was clear damage to the brand’s reputation (Veuve). Of course, the test is complicated somewhat by the fact that Nestlé’s mishandling of the crisis contributed significantly to the damage caused to its brand, but there appears at least to be grounds for a Nestlé to bring a section 22 action.

Though a company always has recourse to defamation in tort, the existence of section 22 is yet another avenue of litigation for trademark holders – one arguably made more viable in light of the Supreme Court decision in MédiaQMI Inc. v. Murray-Hall, 2019 QCCS 1922, MédiaQMI Inc (QMI), where the court found that parody does not excuse trademark infringement or depreciation of goodwill. Further, some have remarked that the ease with which the section 22 factors were met in United left open the possibility of a successful depreciation of goodwill claim based on the mere display of a brand on a complaint website (

This Kit Kat example shows what I think may be a disconnect between theory and practice in copyright and trademark law such that the holders of these protection can use these laws to stifle criticism. Few have the resources to call a major corporation’s bluff when it threatens copyright or trademark litigation. If a company can use intellectual property law – even if through threats – to stifle criticism, then there should be stronger protections recognized in these areas of law to help even the scales.

 

The Kit Kat Commercial:

https://media.greenpeace.org/archive/Give-the-Orangutan-a-Break–Nestle-KitKat-Spoof-Video-27MZIF20N4P6.html

Sources:

https://www.bereskinparr.com/doc/when-parody-misses-the-mark

https://www.bereskinparr.com/doc/untied-tied-up-united-airlines-takes-aim-at-complaint-website-part-i

lhttps://www.bu.edu/goglobal/a/presentations/greenpeace_nestle_socialmedia.pdf