Parody and trade mark infringement in Belgium: no cigarettes for Maya the Bee

Studio 100 is a Belgian producer of TV shows for children, including the well-know Maya the Bee program, which stars an animated bee of the same name.

Studio 100 is the owner of a figurative EU trade mark "Maya the Bee" (a representation of that animated figure), which is registered for various goods and services, including meat products. Additionally, Studio 100 holds all exploitation rights for Maya the Bee.

As part of the merchandising of its TV shows for children, Studio 100 launched meat products featuring Maya the Bee.

In response to this, the Belgian delegation of international non-governmental environmental organisation Greenpeace – which addresses, among other things, meat consumption and its adverse effects on the environment and on individual health based on scientific findings – published a video via social media that criticised Studio 100 for promoting meat consumption.

This video contains the image of Maya the Bee affixed to a pack of cigarettes and a mother handing the pack to her child. The child then appears in the video smoking a cigarette. After the video, text is displayed stating that while the Maya-branded cigarettes do not exist, there are several other Maya the Bee products on the market that do have a negative effect on children's health.

Studio 100 felt that this video infringed its rights and requested that Greenpeace take it down. However Greenpeace refused. Despite Greenpeace's refusal, Studio 100 succeeded in having the video removed from Facebook and YouTube.

Studio 100 commenced copyright and trade mark infringement proceedings, with the goal of preventing Greenpeace from releasing further communications related to the video, and to force them to refrain from publishing it again.

Decision

The copyright aspect

Greenpeace invoked the parody exception provided under article 190, 10° of the Economic Law Code. Studio 100 challenged this line of defence, arguing that Greenpeace's video did not qualify as a parody and – should the Court think otherwise – that the conditions of the parody exception were not fulfilled.

In its decision, the Court assessed the use by Greenpeace of the image of Maya the Bee under the parody exception in the light of the conditions laid down by the European Court of Justice, namely that:

• a parody must evoke an existing work while being noticeably different from it, and constitute an expression of humour or mockery
• it is not required that the parody mocks the copyright work, is in itself an original work, could reasonably be attributed to someone else than the author of the copyright work, nor mention the source of the parodied work
• a fair balance must be struck between the right of the author of the copyright work used and the freedom of expression of the person who makes the parody (CJEU 3 September 2014, C-201/13, Deckmyn/Vandersteen, co. 20-21, 27-28 nd 32).

When applying these conditions, the Court found that both the criteria of noticeable differences and the presence of mockery had been met.

However, the Court held that the video does not apply a fair balance between the rights of the author, including its reputation and the importance for the company to maintain its child friendly image, and the freedom of expression. It stated as follows:

• Greenpeace used the work in relation to the "fake" promotion of a (very) unhealthy product, the sale of which to minors is prohibited
• the video was distributed through a mass medium of communication and the potential audience was not taken into account, ie children who cannot read nor understand the complete message
• the images of Maya the Bee were unedited and incorporated without changes on the cigarette pack, making it look like the video was produced by Studio 100 itself.

The Court concluded by pointing out that most children (and even adults) would only recollect the "positive" image of the smoking animated figure depicted in the video.

As a result, Greenpeace was ordered to end its campaign under penalty of a fine of 2,500 EUR per day and per infraction, up to a total maximum of one million euros.

The trade mark aspect

Although its copyright argument was upheld, Studio 100 failed on the grounds of its trade mark claim, which was founded on article 2.20.2.d of the Benelux Convention on Intellectual Property (BCIP).

This provision allows a trade mark owner to oppose the use of a sign for purposes other than those of distinguishing the goods or services, where use of the sign without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the trade mark.

The Court found that a 'registered trade mark' within the meaning of this provision means a Benelux trade mark or international trade mark of which the protection extends to the Benelux territory. Studio 100 was however relying on its EU trade mark.

Conclusion

The Court found in relation to the copyright infringement claim that Greenpeace did not strike a fair balance of rights by using an animated figure from a children's TV show in a 'fake' promotional video for a product as unhealthy as cigarettes – the sale of which to children is prohibited – to criticize the sale of meat products depicting the same animated figure. As a result, it could not rely on the parody exception.

On the trade mark infringement claim, the Court found that the holder of an EU trade mark could not rely on the Benelux Convention on Intellectual Property.