Brands Use Trademark To Get Toronto To Pull Clever Anti-Litter Campaign Just Because

from the thanks,-guys dept

Tue, Sep 16th 2014 8:46pm — Timothy Geigner

Recall that trademark law is chiefly about protecting consumers from confusion via the limitation of words, images and logos for use in specific forms of commerce -- specifically used in ways that might confuse the consumer about the origin of the product. In other words, consumers should be able to reasonably discern whether a brand is represented by the inclusion of that brands identifiable name and image in when seen. Simple right?

Then explain to me why a whole bunch of brands decided to torpedo a City of Toronto campaign that cleverly used some of their imagery to tell people to stop littering?

The city is now pulling the campaign because of trademark infringement concerns. The ads, which launched earlier this month, received attention for their humorous use of some very recognizable product packaging. The campaign slogan was, “Littering says a lot about you.” The ads featured discarded candy boxes, plastic bottles and other packaging arranged to spell the unflattering message that littering conveys.

The combinations included a bag of Lay’s potato chips and a Krazy Glue package arranged to spell “Lazy”; Reese’s Pieces and a bottle of Gatorade put together to spell “Pig”; Alka-Seltzer and Goldfish crackers saying “Selfish”; and a pack of Sweet'N Low and Lifesavers put together to say “Low Life.”

Some examples:

Clever, right? Apparently, several of the companies whose brands were used called to complain, simultaneously assuring the city that they fully supported the campaign to end littering, but that they were miffed over the use of their brands. The chief concern appears to be the potential for damage to the brands in question. The theory, I guess, being that the use of parts of recognizable brand names would result in consumers associating those brands with litter... or something.

Regardless, the City of Toronto caved to the pressure, even though they were likely completely in the clear. We reached out to some experts and couldn't find any who found this reasonable. One Canadian trademark lawyer told us he couldn't see how there was a legitimate trademark claim, while law professor Eric Goldman had this to say:

"I'm not sure about Canadian trademark law, but I can discuss it from the US perspective. I believe the ads are probably OK under trademark law because I doubt the trademark owners could establish the requisite consumer confusion. Looking at the ad in total, there's almost no risk that the consumers will think the ads are for anyone other than the anti-litter agencies. (There is a greater risk that the eye-catching use of third party logos would constitute "initial interest confusion," but that doctrine almost never succeeds in court any more). The trademark owners' strongest argument is that consumers will think the trademark owners authorized or sponsored the ads. That's an empirical question that would cost each side over $100k to answer via consumer surveys, plus hundreds of thousands more for legal fees. The large costs associated with adjudicating that question creates the opportunity for plaintiff bullying and defendant stonewalling."

Which is exactly what happened. It would take a lot of strain to convince one's self that the ads were about anything other than the city promoting a cleaner environment. Now that campaign has been lost to the trademark lawyers of brands that claim to support the effort.

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Filed Under: anti-litter campaign, creativity, litter, toronto, trademark

38 Comments

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That One Guy (profile), 16 Sep 2014 @ 6:55pm

PR for Idiots: Extend leg, pull out gun, aim at foot, pull trigger
The trademark owners' strongest argument is that consumers will think the trademark owners authorized or sponsored the ads.

That argument doesn't hold water either, it's an anti-littering campaign, what company wouldn't want people to think they had something to do with that? If people thought that the brands shown were involved in the campaign itself that would be all for the better for them, as people would think that they were supporting a campaign to reduce littering.

Instead, by going after the campaign, they've shown that they care more about 'protecting' their brands than they care about reducing littering.
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Anonymous Coward, 16 Sep 2014 @ 8:57pm

I'm so confused about where to find my fav junk food.
Is it found on the side of the road or is it bought at the Big Fat Toad?
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Anonymous Coward, 16 Sep 2014 @ 9:00pm

I already think some of those brands are garbage.
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Anonymous Coward, 16 Sep 2014 @ 9:06pm

There is 1 product in those photos I wont purchase anymore due to their obvious anti-anti littering campaign.

how dumb of them.
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Erik Grant, 16 Sep 2014 @ 9:25pm

Fighting a little and then caving could also be seen as a way to get a little more distance out of your ads, for free. Well played, Toronto.
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That One Guy (profile), 16 Sep 2014 @ 9:37pm

Re:
Hardly for free, even if it didn't reach the point of going to court, as soon as you involve lawyers, which they would have had to to push back at all, things get expensive, fast.
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Deputy Dickwad (profile), 16 Sep 2014 @ 11:01pm

I always knew Canadians were pussies!
Serious folk would have told those companies to to go fuck themselves with ebola infected chainsaws!

But I guess like Yahoo, Toronto, and that pussy-assed, brown, Canadian I pulled over this morning that had the $8,500 in USD, fast food wrappers in a bag on the passenger seat, a little green tree from the rear-view, and an Altoids tin on the dash, and no stomach for being shot with eight 9mm slugs in the back while trying to commit suicide just rolled over and let The Man put "It" where ever the hell we wanted to!

Fuck Yeah! It is GREAT TO BE IN CHARGE!!!
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ACasey (profile), 16 Sep 2014 @ 11:24pm

Annnd this is why most trademark laws are pieces of crap, folks.
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Anonymous Coward, 16 Sep 2014 @ 11:29pm

Re: PR for Idiots: Extend leg, pull out gun, aim at foot, pull trigger
Sometimes I think IP owners have a compulsive need to compete with each other - to see who can be the bigger idiot.
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Devonavar (profile), 17 Sep 2014 @ 12:24am

I don't think it's a stretch to see why these companies are upset
I don't think it's a big leap to see why the companies are upset: The campaign more or less fingers the brands as "sources" of litter, and it's understandable they wouldn't want that to contaminate their brand.

I'm glad the legal case is in the favour of the city here ... I don't think their right to integrity of brand should trump their responsibility for using packaging that turns into litter, but I don't find it even slightly surprising that they are upset about it.

Kind of makes me want to create a campaign that specifically calls these brands out for the type of packaging that they use (and the lifestyle that they encourage).
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ACasey (profile), 17 Sep 2014 @ 1:01am

Re: I don't think it's a stretch to see why these companies are upset
That's pushing the scope of the ad, though - they could have generic brands from grocery stores, but it would be much harder to get across the message.
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Julian Bond (profile), 17 Sep 2014 @ 1:03am

Re: PR for Idiots: Extend leg, pull out gun, aim at foot, pull trigger
"consumers will think the trademark owners authorized or sponsored the ads".

Super simple solution: Get the trademark owners to authorise and sponsor the ads. "This PSA brought to you by Frito-Lay".
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totalz (profile), 17 Sep 2014 @ 3:06am

Most of them are junks anyway! I guess those brands worry about people will finally realize that from the ads. "Smart move"!!
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Jeff Green (profile), 17 Sep 2014 @ 3:06am

Suggested new ad campaign
Toronto now run a campaign saying

These companies were pleased to support our anti litter campaign
List in large letters of firms that did not object"

And these companies opposed it
"List of those that sent TM notices"

Send proofs to each company's PR dept saying ads start on Monday ...
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Violynne (profile), 17 Sep 2014 @ 3:16am

I don't see these companies going after people who litter, since throwing their brand on the ground constitutes a form of trademark abuse by their idiotic reasoning.

But they'll go after a campaign to stop their trademark abuse?

That's just stupid.
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Anonymous Coward, 17 Sep 2014 @ 3:52am

Re: Re: PR for Idiots: Extend leg, pull out gun, aim at foot, pull trigger
Well yeah, they hoard their imaginary properties like dragons.
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Anonymous Coward, 17 Sep 2014 @ 4:47am

Re:
Litter is part of their ad campaign to get brand recognition. If they didn't want you to spread the litter, er, word, they would have refundable deposits. Maybe $0.02 isn't much to you for a coffee cup or a chip bag, but I can guarantee that there are kids out there who would pick them up for that money.
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Michael, 17 Sep 2014 @ 4:56am

The first of these companies to come out and say "it wasn't us" by partnering with this Toronto anti-litter campaign by putting out an eco-friendly package with some nod to Toronto would have my business forever.

I just do not understand how these companies can still miss these opportunities. Legal and marketing groups at some of these large companies are so underwhelming these days.
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Anonymous Coward, 17 Sep 2014 @ 5:00am

Sorry but I happen to be siding with these companies because the city is using the trademark product names of these companies in a very unflattering way.

Seriously. Lazy? Dipstick? Lowlife They clearly violated the trademarks of these brands and it reflects a poor image on these company brands.
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Anonymous Coward, 17 Sep 2014 @ 5:12am

Re: Re: PR for Idiots: Extend leg, pull out gun, aim at foot, pull trigger
That is hardly a solution, more like a capitulation.

The whole idea that one needs permission from our masters prior to doing anything is complete nonsense.
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Anonymous Coward, 17 Sep 2014 @ 5:15am

Re: I always knew Canadians were pussies!
Super Troopers
Altered State Police
part deux
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Anonymous Coward, 17 Sep 2014 @ 5:19am

Re:
How dare anyone confront us about how our products contribute to litter/pollution, and/or other societal ills - the nerve of those people, there ought to be a law whre they would be put in jail for their uppity behavior.
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Michael, 17 Sep 2014 @ 6:21am

Re:
They clearly violated the trademarks of these brands

Certainly not clearly, probably not at all - according to several IP lawyers.

Using product names and packages in an unflattering way does not cause consumer confusion. They may not like the ads, they may have some other claims (although I cannot think of any), but they don't really have a trademark claim here.

As I said above, a smart company would have used this as a marketing opportunity. Clearly, they are not promoting littering with their products. Putting out some ads that piggyback on this could have been a big win - instead they had an ad that SHOWED THEIR PRODUCT pulled. I'm not sure how they could possibly have thought that made sense. Here was a chance to change to some eco-friendly packaging, or donate to cleaning up litter and get people to purchase more of their product. They just threw it away.
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Anonymous Coward, 17 Sep 2014 @ 6:42am

Then it equates to slandering the product company's image and that the city may be liable for damages.
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Mike Masnick (profile), 17 Sep 2014 @ 6:48am

Re:
Sorry but I happen to be siding with these companies because the city is using the trademark product names of these companies in a very unflattering way.

Seriously. Lazy? Dipstick? Lowlife They clearly violated the trademarks of these brands and it reflects a poor image on these company brands.

Violating trademark requires use in "commerce." Can you explain the commercial use here?

Thanks.
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scotts13 (profile), 17 Sep 2014 @ 6:59am

Re:
Yes, but there's no law against that. The worst that could be said is the implication the CONSUMERS of these products are associated with the negative terms. There's nothing derogatory or unflattering about the brands or products themselves.
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art guerrilla (profile), 17 Sep 2014 @ 7:46am

Re:
@ 5am anon cow-

1. another authoritarian outed ! ! ! only about 2-3 billion more to go ! ! !
2. urine idjit: IF the 'purpose' is to not prevent consumer confusion, HOW IS THAT HAPPENING in this case ? ? ?
are consumers of those products wandering around road rights-of-way looking for where they can buy their junk food ? ? ?
3. would you deny that THESE ACTUAL PRODUCTS are OFTEN found as trash ? ? ? without the purposeful juxtaposition, you could go out on ANY STREET ANY WHERE and find MILLIONS of instances of these products being trash on the side of the road and take unaltered pictures of 'their' products...
4. further, FORGET about all the other bee ess, is this or is this not a 'fair use' example where it is CLEARLY and unambiguously a 'parody' of sorts...
5. no, these companies are being butt-hurt babies and entitled little dicks; i only wish canada had doubled down and put a billboard in front of EVERY corporate office who got huffy about this...
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art guerrilla (profile), 17 Sep 2014 @ 7:47am

Re:
oh, grow up, you butt-hurt-by-proxy authoritarian douche...
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jupiterkansas (profile), 17 Sep 2014 @ 7:49am

Re: Re: Re: PR for Idiots: Extend leg, pull out gun, aim at foot, pull trigger
Permission no, but money yes. They could have approached these companies to pay for the entire campaign.
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Michael, 17 Sep 2014 @ 8:01am

Re:
How would anything they have done be deemed untruthful?
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Anonymous Coward, 17 Sep 2014 @ 8:17am

These company CEOs must be smoking crack.
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jH, 17 Sep 2014 @ 8:53am

American Corporations
Ahhhhh, the fragile ego of American Corporations. Don't want to help anyone but them selves.
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Another Anonymous, 17 Sep 2014 @ 12:03pm

Re:
The socially-beneficial anti-litter messages do not confuse consumers about the source of a product they are purchasing.

So discussing a negative impact of a product does not cause confusion, and does not come even close to violating a trademark.
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trixtag (profile), 17 Sep 2014 @ 12:18pm

Littering says a lot about you.
You who?

Who you?

Yes, you in the picture.
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John Fenderson (profile), 17 Sep 2014 @ 1:02pm

Re:
"I happen to be siding with these companies because the city is using the trademark product names of these companies in a very unflattering way."

I don't know Canadian trademark law, but in the US whether or not a portrayal is flattering has no bearing on whether or not it's a trademark infringement.

And, quite clearly, this is not a trademark infringement. There is no potential for consumer confusion here.
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John Fenderson (profile), 17 Sep 2014 @ 1:03pm

Re:
Oh? And what is the campaign saying about the products that is not true?
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John Fenderson (profile), 17 Sep 2014 @ 3:26pm

A wild theory
I was thinking about why the companies would object so strongly to the use of their packaging in this campaign. Their arguments don't make sense to me at all, so I can't help but think that their objection is really something else entirely.

Here's a wild theory: there is a mandatory deposit/return system in my state for soda beer, and other containers to encourage recycling. This is been so successful that almost nobody has thrown these bottles away for decades. It's become ingrained in the culture.

A number of years back, stores started using automated bottle return machines instead of using a person to add up returned bottles. Those machines are the absolute worst -- they stink, they're filthy, they take forever, and they break down a lot.

They're so awful that I know a lot of people who stopped using them entirely, and the way they stopped using them is that they stopped buying things in cans and bottles instead of just starting to throw them away instead (it's strongly ingrained that you don't throw them away, after all.) So the desire of stores to save money by using the machines has led a number of people to stop buying the product completely.

My wild theory is that these companies fear that the campaign will lead to a day when people will want to avoid littering so much that they'll buy less of the products that make the most litter.
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Canada Litter King, 1 Jan 2015 @ 7:09am

Toronto Anti Litter Campaign
What Toronto needs now is to have some millionaire secretly dish out a million bucks and flood Toronto with Tee Shirts identical to the ads displayed and get the young young generation wearing them everywhere & I guarantee
you the younger generation would love to do...I would create so much controversy that the litter supply chain would gladly come on board !
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