WIPO Says Johnson & Johnson Can't Seize Parody Website Suggesting Band Aids With Corporate Sponsors
from the brand aid dept
Danielle Baskin is something of a brilliant creative force who constantly comes up with hilarious art projects/commentary/satire — some of which end up turning into actual businesses. This included, somewhat recently, her Maskalike business that would print yours (or someone else’s?) face on a mask. That operation just closed up shop, but was quite popular in the midst of the pandemic. She’s also created satirical services such as one that puts blue checks on your home (a la being “verified” on Twitter or Facebook) or stained glass film over airplane windows, or a “Decruiter” service to help you figure out when to quit your job, or a hoodie that will let you replace corporate logos with velcro. There’s also the website that runs obituaries for expired domain names.
There are many more of these kinds of projects listed on her website. One of her attention-getting projects from a few years ago was Branded Fruit, where she would… well… do what it says, and put a corporate brand on a piece of fruit.
Perhaps somewhat inspired by the success of the Branded Fruit project while thinking about the pandemic, the vaccines, and the rush to turn just about anything these days into a branding opportunity, a few months back Basken set up Brand-Aid™ at the website BrandedBandAid.com. It’s a clever bit of commentary on the nature of the commercialization of health care these days.
Of course, as the little ™ in the title of her site obliquely comments on, Johnson & Johnson still holds the trademark on the brand “Band-Aid” and tries to police the mark fairly aggressively — especially since many, many people assume that “band aid” is a generic term for medical adhesive bandages, and J&J is terrified of losing the actual trademark.
Soon after the Brand-Aid (sorry Brand-Aid™) domain was registered, J&J sent a nastygram. Baskin responded quickly that the site was clearly a parody about the capitalization of public healthcare. J&J then did what J&J does and went to WIPO to demand that the domain itself be handed over to the company. What then followed is fascinating and laid out in WIPO’s decision that denies J&J’s demand, allowing Baskin to keep the website.
The key issue is whether or not the domain was registered in bad faith. The WIPO panel isn’t completely convinced by Baskin’s arguments — noting that even if the website is a parody, it’s not clear that the domain itself is:
Here, the Panel considers that the phrase chosen by Respondent in the Domain Name ? ?brandedbandaids? ? does not itself convey parody of Complainant, its trademarks, and related products. Moreover, and while the Panel tends not to find Respondent?s arguments on this point terribly persuasive, it is also at least debatable whether the website linked to the Domain Name targets Complainant and its BAND-AID marks, or rather is intended as a more general parody of ?the capitalization of public health,? as initially claimed by Respondent. See e.g., A&F Trademark, Inc. and Abercrombie & Fitch Stores, Inc. supra (?In order to constitute parody, the web site must poke fun at the goods or services associated with Complainants? marks: use of another?s trademark to poke fun at something unrelated to Complainant?s mark is not parody.?) Of course, the Panel also recognizes that Respondent has free speech interests protected as a constitutional right in the United States; however, under the law individuals do not enjoy absolute freedom of expression especially with respect to terms protected as trademarks.
But the key issue for WIPO is really whether or not the domain was registered in bad faith, and there’s no evidence to support that.
Here, there is no doubt that Respondent, when registering the Domain Name, was aware of Complainant and its BAND-AID brand. The question is whether, despite that awareness, and in view of Respondent?s asserted artistic parody intention for registering the Domain Name, the registration and use amounts to bad faith.
Complainant has contended that Respondent?s registration of the Domain Name without authorization reflects opportunistic bad faith and was intended to exploit the goodwill and fame of Complainant?s marks in bad faith to improperly deceive Internet users and benefit Respondent financially. Complainant has pointed out that when Respondent initially launched her website, the disclaimer was not prominently placed and Respondent used an allegedly infringing version of the BAND-AID mark in the font and color typically used by Complainant. Further, Complainant argued that the ultimate effect of use of the Domain Name will be to cause confusion with Complainant, and thus the registration and use of the Domain Name must be considered to be in bad faith. Complainant has sought to emphasize that Respondent?s use should not be considered ?purely noncommercial? because an Internet user, by using the link to Respondent?s Twitter account and then clicking through to her personal website, could be introduced to commercial ventures offered by Respondent.
In the face of these contentions, Respondent has argued that while a given use may or may not meet the standards for the parody defense, it may still be a sufficiently plausible, good-faith motive to overcome Complainant?s proposed inference of bad faith within the meaning of the Policy. Given the facts and circumstances of this case, the Panel agrees with Respondent on this point. See The California Milk Processor Board supra (?This may or may not meet the standards for the parody defense under United States trademark law, but it is a sufficiently plausible, good-faith motive to outweigh the Complainant?s inference of bad faith within the meaning of the Policy.?). Respondent has provided evidence to demonstrate that she is, in fact, an artist who engages in parody of the Internet, capitalism, online businesses and the technology industry more generally, while using websites, domain names and social media. Respondent has not demonstrated any interest in selling or transferring the Domain Name, nor is there evidence that she has previously made a practice of acquiring domain names resembling trademarks for sale. Respondent has claimed that the website linked to the Domain Name has no revenue or plan to seek revenue, and has submitted a sworn affidavit to this effect:
?I registered and used the
website solely for the purpose of artistic parody. At no time have I ever sought commercial benefit from either the website or from the registration of the domain name.?
The evidence in this case supports Respondent?s assertion concerning noncommercial use. As for the link on the Domain Name?s website to Respondent?s Twitter account, which in turn might be used to link to Respondent?s personal website that reflects one or more commercial ventures, the Panel finds that this path is too attenuated such that it would by itself disqualify the Domain Name from noncommercial use. Further, since being contacted by Complainant?s counsel, Respondent has taken steps ? through a disclaimer on the website and changing the font and color of text on the site ? to respond to Complainant?s demands concerning the content of the website. This point is important because UDRP panels tend to assess relevant facts concerning use of a domain name with a view to the circumstances prevailing at the time of the filing of the complaint, and Respondent made the relevant changes before the Complaint was filed. See WIPO Overview 3.0, section 2.11. Ultimately, and acknowledging that the Policy criteria are non-exclusive, looking at paragraph 4(b)(iv) in particular, the Panel finds that owing to the credibility of the sworn assertion as to the noncommercial nature of the Domain Name and attendant website, the Domain Name was not registered and used in bad faith.
Finally, the Panel emphasizes that the decision in this case is limited to the criteria under the Policy, and the Panel makes no findings concerning the parties? rights under applicable national law ? which may in any event be better suited for determination by a court.
Complainant has failed its burden to demonstrate that the Domain Name was registered in bad faith.
As the panel makes clear, that doesn’t mean Baskin is totally free and clear. J&J could still go after her in court for trademark infringement, in which case the fair use, non-commercial use and other defenses would be used and could prevail (though it would still be quite a mess). Hopefully, J&J realizes not only what a wasteful headache that would be, but also how it would make the company look like a ridiculous, censorial bully who can’t take a joke.
Anyway, to celebrate, I’m going to go put Techdirt logos on some generic Band-Aids.