'Culture jamming', a form of protest and activism which seeks to disrupt mainstream culture, has hit the headlines in recent years, bringing with it potential challenges for intellectual property rights holders. This has been demonstrated recently by the High Court's decision in Samherji v Fridriksson, where the Court had to examine the difficult balance between artistic expression and IP rights in a form of protest.
The Claimant, Icelandic fishing company Samherji, successfully obtained summary judgment in its claims of passing off, copyright infringement and malicious falsehood against Icelandic performance and conceptual artist Oddur Fridriksson (a.k.a "Odee"). The subject of the claim was the Defendant's public art hoax involving a fake UK domain name and press release (involving the use of Samherji's logo) to draw the public's attention to its role in an incident known as the 'Fishrot Scandal', relating to the activities of its former subsidiaries in Namibia.
Background
In 2023, Odee purchased the domain name 'Samherji.co.uk'. Samherji later discovered a website at the domain name purporting to be its official UK website, and which displayed the statement "WE'RE SORRY". The website linked to a press release (which was also sent out to several media outlets) in which Samherji purportedly admitted to and apologised for its role in the Fishrot Scandal, as well as offering restitution. The press release and website used Samherji's logo and mark and included a Samherji brochure – they were intended to look as though they had been produced by Samherji and therefore lend some legitimacy. Additionally, Odee painted a large mural at the Reykjavik Art Museum with the words "We're Sorry".
Samherji obtained an interim injunction to prevent the use of its logo and mark pending trial and has now been successful in its application for summary judgment in respect of its claims of passing off, copyright infringement and malicious falsehood (its claim for trade mark infringement was not included in the summary judgment application).
Decision
Freedom of expression
As an over-arching point, Odee sought to resist the claims on the basis of his right as an artist to freedom of expression under Article 10 of the European Convention on Human Rights (ECHR), on the basis that his use of Samherji's marks was justified for the purposes of criticism and social commentary. He sought to rely here upon the Plesner case before the European Court of Human Rights, where an artist had used Louis Vuitton bags to engage public attention to the situation in Darfur. However, the Court noted some key differences in this case from the Plesner decision. In particular, Odee's performance artwork involved (albeit only for a short time) "a form of deception and impersonation and misinformation". Accordingly, relying on Article 10 alone, he had no real prospect of opposing the transfer of the domain name to the Claimant.
Passing off and malicious falsehood
Samherji's passing off claim was brought on the basis that the registration of the domain name (and use of the website) amounted to a misrepresentation that damaged Samherji's goodwill and reputation. The Court agreed that both the domain name and the website were instruments of fraud in that they were set up with the deliberate intent to deceive, knowing that their content was false. The same logic was applied to the malicious falsehood claim, which was also successful.
Copyright
The Court also observed that it was clear that the website design infringed Samherji's copyright in its logo and the brochure which was downloadable from the website.
The copyright claim required the Court to consider a number of the fair dealing exceptions in the Copyright, Designs and Patents Act 1988. These include fair dealing for the purposes of criticism or review or quotation, and for the purposes of parody or pastiche. The Court also considered the fair dealing defence for the purposes of reporting current events. However, it concluded that none of these exceptions were available to Odee for the following reasons:
- The use of the logo and the brochure was intended to give the website authenticity, and not for the purpose of criticism or review, or for quotation.
- The website did not amount to a parody or a pastiche. As confirmed in the Shazam case (concerning a dining experience found to infringe copyright relating to the show Only Fools and Horses), a parody must evoke an existing work whilst being noticeably different from it. It must also constitute an expression of humour or mockery. Likewise, a pastiche must imitate the style of an existing work whilst being noticeably different from it. Here the logo and website were intended to make it appear that it was the Claimant's official website.
- Whilst the Fishrot scandal was a current event, the means by which the Defendant had sought to draw attention to it did not amount to fair dealing. In contrast to the artwork at the Museum of Art in Reykjavik, his creation of the website and press release had "crossed the boundary between fair and unfair dealing".
Comment
The Court's decision highlights a delicate balancing act between freedom of expression and protection of IP, as well as the potential pathways for lawful parody and criticism. The challenge of course for the artist in this case was that if the use of the mark to had been unmistakably parodic, it may not have had the impact intended.