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About The Author

Samuel Cuthbert (Private Law Manager)

Sam read Philosophy at Durham University, followed by the GDL funded by the Lord Brougham Scholarship and a Hardwicke Scholarship from Lincoln's Inn. Sam is now spending a year, prior to undertaking the BPTC, to develop his legal interests in a paralegal capacity. His legal career is starting in a M&A paralegal role at a large Viennese firm. He is a passionate speaker and has his sights set firmly on a career at the bar.

Many a small thing has been made large by the right kind of advertising.

Mark Twain

One might be forgiven, so I am told, for expecting to find a certain amount of ‘cheese’ in the productions featured on the online adult platform Pornhub (the editorial team were unenthused at the prospect of a hyperlink here). However, it is unlikely that one might expect that cheese to be of the literal dairy variety, and possibly less likely still that one would expect that cheese to be the renowned Parmigiano Reggiano. The advert for the new live streaming service offered by the adult website makes reference to said cheese, the dialogue between the male and female protagonists following:

Woman: Don’t forget we need some cheese

Man: Why don’t we get this Parmigiano Reggiano?

Woman: [laughs inexplicably] When did you become such a foodie?!

Man: They say it’s the Pornhub Premium of cheeses…

Woman: [looks puzzled]

It’s not going to win awards, but it will certainly prick the ears of those trademark and defamation lawyers who happen to stumble across the clip.

Protected Designation of Origin (PDO)

Production of Parmigiano Reggiano is regulated by a consortium, which oversees all aspects of the business from production to ensuring respect for its protected designation of origin (PDO) status. The cheese production, from milking processes to packaging, takes place in the regions of Parma, Reggio Emilia, Modena, Bologna (to the west of the Reno River) and Mantua (to the east of the Po River). 

The status of PDO is one which is taken very seriously within the food production market. From Cornish Pasties, to Melton Mowbray Pork Pies, Stilton Cheese and Champagne, the regulations which govern the production processes of PDO foods and drinks are unfaltering. According to the European Commission website, the status is reserved for ‘agricultural products and foodstuffs which are produced, processed and prepared in a given geographical area using recognised know-how.’ The goods are governed by Regulation 1151/2012 and procedural Regulation 668/2014. Application is made to, and closely scrutinised by, the European Commission; a list of British products currently in the application stage for such status can be found on the government website.

In a statement, the cheese consortium said the advert was ‘not only distasteful and unacceptable, but offensive for our producers and their work’. There is now talk of this forming grounds upon which the consortium might litigate against the site, which clocks an eye watering 78.9bn views annually. The following discussion will explore how that litigation (hypothetically) might play out in Engish courts and the extent to which the cheese consortium might have grounds for a remedy.

Trademark Infringement

Given the stringent regulations, and the resulting work put in by producers to meet those standards, apparent belittling of the product will be invariably poorly received. There might even be grounds for criminal prosecution under s. 92 Trademarks Act 1994, if the relevant individual(s) were to be located. This statute contends, at subsection 2, that:

A person commits an offence who with a view to gain for himself or another, or with intent to cause loss to another, and without the consent of the proprietor—

(a) applies a sign identical to, or likely to be mistaken for, a registered trade mark to material intended to be used—

(i) for labelling or packaging goods,

(ii) as a business paper in relation to goods, or

(iii) for advertising goods, or

(b) uses in the course of a business material bearing such a sign for labelling or packaging goods, as a business paper in relation to goods, or for advertising goods,

The potential punishment is then laid out in subsection 6

(6)A person guilty of an offence under this section is liable—

(a) on summary conviction to imprisonment for a term not exceeding six months or a fine not exceeding the statutory maximum, or both;

(b) on conviction on indictment to a fine or imprisonment for a term not exceeding ten years, or both.

Initially, it appears that Pornhub is using the business material of the cheese consortium (the role of the consortium is discussed towards the end of the article) for its own advertising purposes, and thus the strict sentencing guidelines may well apply under subsection 6. However, it is questionable whether Pornhub, in its hitherto unsuccessful bid to create an amusing advertisement, actually gains from it (cf. the initial line of the statute).

There seems to be no discernible link between cheese connoisseurs and those with a penchant for live streamed pornography, which is not to say that the two are mutually exclusive but is to suggest that mention of the parmesan variety would not necessarily render additional subscriptions. As such, the benefit conferred to Pornhub by the advert is difficult to ascertain. Further, the male protagonist’s line ‘They say it’s the Pornhub Premium of cheeses’ is reminiscent of that ubiquitous Carlsberg marketing campaign: ‘Probably the best the lager in the world’. Both instances suggest their respective messages with a dose of uncertainty, nothing is actually claimed directly.

In any case, one might suggest that it would be impossible to locate one wholly culpable individual within a company with numerous employees (Mansef Inc and Interhub are the companies which run the site), many of whom would have had to approve the advert before it was released. It seems unlikely that the whole of the marketing department might find themselves serving prison time, and if they did they might expect something rather different – I am reliably informed - to the image of prison regularly portrayed in their productions. It is therefore difficult to conceive of any punitive action arising out of this statute.

More common in cases such as this, is civil action brought on the grounds of s10 Trademarks Act 1994. S10(3), whilst not the most lucid of statutory provisions, might well be more fruitful for the cheese consortium:

3) A person infringes a registered trade mark if he uses in the course of trade a sign which—

(a) is identical with or similar to the trade mark, and

(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered,

where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

The reason I question the lucidity of this provision centres on the difficulty in proving detriment (something far easier in a defamation claim, as laid out shortly). Quite what constitutes detriment or taking unfair advantage of the distinctive character of something is so unclear because it is near impossible to accurately measure the effects of trademark use on consumer preference. Would I feel differently the next time I reached for the Parmigiano Reggiano in a bid to take my pasta to untold levels of sumptuous richness? No, but I cannot speak for anyone else. Could such an effect be measured through observing revenue streams? Not accurately, because there are always an inconceivable number of factors influencing levels of consumption; it becomes impossible to tie down the precise implications of one advert.

Of course this is not the first time that cinematography has muddied its waters with unauthorised and unfavourable product placement. Traditionally, huge sums of money have been exchanged in order to secure product placement in films and television programmes alike. Heineken’s US arm was reported to have spent $45m in order to feature prominently in the James Bond film, Casino Royale. However, on the occasions that money is not exchanged, the resulting product placement often is not in the interests of those affiliated with that product. The film ‘Flight’ is a perfect example. It featured an alcoholic pilot with a particular weakness for bottles of Budweiser, and resulted in Anheuser-Busch (the company which controls the Budweiser brand) unsuccessfully requesting that Paramount Pictures removes the product from the movie. Jaguar Land Rover featured similarly poorly when the series Mad Men saw a central character attempt suicide by asphyxiation in a Jaguar. Whilst no legal action was brought, the sentiments expressed by the then CEO made it clear that it was not quite the product placement for which he had been hoping.

Such unfortunate brand exposure is becoming far more difficult to control, as the influence of social media continues to grow. Naturally, these platforms allow brands to communicate with their audiences, and allow their audiences to express a degree of loyalty too. However, there is little preventing a disgruntled or adversely principled internet user from writing a damning blog post or creating a meme or film with negative connotations for a particular brand. This is no more evident than if you were to find your way onto the social media page of any well known global company and regard the comments freely posted by members of the public. Whilst it is true that those internet users with a wide following are paid to write reviews of products, and those reviews are doubtless influenced by the monetary exchange, the internet nonetheless provides an enormous platform from which the most hostile of brand criticisms can be disseminated.

The question then is: can these companies do anything? Are these global economic powerhouses helpless against the onslaught of their keyboard wielding foes? Might they have overstepped the freedom of their speech afforded to them by Article 10 ECHR? Is there then scope to bring a defamation action against them? If so, where does the cheese consortium stand in its bid to attain remedial action for the reputation killing advertisement?

Defamation: Where’s The Harm?

The McLibel case ought to provide those companies considering defamation action with food for thought. The longest running defamation case in the history of UK law, it saw the hamburger giant McDonalds bring an action against two members of London Greenpeace for handing out flyers entitled ‘What’s wrong with Mcdonalds?’ McDonalds eventually won the case in 1997, but shortly afterwards the European Court of Human Rights held that the respondents ought to have had access to legal aid to assist them in their defence.

The pertinent aspect of this case though, was that McDonalds was given standing (locus standi) which facilitated the litigation. The food brand was considered a legal person for the purposes of the lawsuit, and it is conceivable, given the level of economic and procedural control enjoyed by the cheese consortium, that it too would qualify for standing in a British court. It is worth noting in this regard that there is to be no standing for a person referred to generally in a large group because they have not been directly subject to the offensive statement, nor are they a part of a group acting as an ascertainable legal entity.

According to the sterling Winfield and Jolowicz, ‘defamation is the publication of a statement which reflects on a person’s reputation and tends to lower him in the eyes of right thinking members of society’, a definition largely based on the test laid out by the great Lord Atkin in Sim v Stretch. The cheese consortium’s claim would be actionable per se as a Libel action, given the permanent nature of the production in which the offended cheese features. This is in line with the precedent set out in Youssoupoff v MGM, which saw the plaintiff complain that a character in the film ‘Rasputin, The Mad Monk’ was recognisable as her, and the fact that said character was raped insinuated that she too had been raped by the infamous monk.

In order to succeed with a defamation claim, it is necessary to show that a reference was made to the claimant in the statement in question. Whilst the reference here is not direct in the sense that the cheese consortium is not directly named, I would suggest that an indirect reference to the products which the cheese consortium regulates – as with the indirect affront to Russian Princess’ reputation by a fictional character – would satisfy this requirement.

Furthermore, an allegedly defamatory statement needs to have its defamatory nature proven in both fact and law so that it can be conclusively deemed defamatory. Defamation in law may be proven where the statement lowers the claimant in the eyes of right-thinking members of society, as per the aforementioned Sim v Stretch. There is strength in the argument which suggests that any association with a brand so heavily involved in the pornography industry would do exactly this. However, s. 1 Defamation Act 2013 codifies this requirement on far stricter terms, which would be unfavourable to the chances of the cheese consortium in establishing their claim. The statute contends that on the issue of serious harm:

(1) A statement is not defamatory unless its publication has caused or is likely to cause serious harm to the reputation of the claimant.

(2) For the purposes of this section, harm to the reputation of a body that trades for profit is not “serious harm” unless it has caused or is likely to cause the body serious financial loss.

(Emphasis added)

Pursuant to subsection 2, it is difficult to quantify the extent (if at all) of the financial loss that the cheese consortium would incur. Any financial effects caused would hit the producers and the sellers, but not the regulatory body, which is largely what the cheese consortium is. There may well be effects on the consortium but given its role is not a directly financial one, it is unlikely to incur serious financial loss, thus failing to meet the requirements of the defamation act. However, that is not to say that there is no scope for the consortium to prove serious financial loss if it can demonstrate sufficient levels of vested economic interest in the public perception of the production. For the sake of completeness, it is worth assuming that this is proven in order to explore all other aspects of the claim.

Defamation in fact can be established in any one of three ways. Firstly, by proving that the meaning is defamatory in an ordinary understanding of the statement. Secondly, if the statement contains ‘false’ legal innuendo i.e extended meanings following from colloquialisms. This is well explained by the example given by Justice Davies in Grubb v Bristol United Press, of describing somebody as a Casanova which, whilst not a word with an ordinarily derogatory association, would be understood by the man in the street as implying the individual was a ‘fornicator and adulterer’. Thirdly, ‘true’ legal innuendo may demonstrate defamation in fact, which is to be understood as having defamatory meaning born out of extrinsic knowledge possessed by those to whom the statement was communicated.

The latter was successfully pleaded in the case of Tolley v JS Fry, in which an amateur golfer was pictured teeing off with a Fry’s chocolate bar hanging out of his pocket. Aware that only professionals were permitted to profit from their involvement within the sport, Tolley brought a successful claim contending that the advertisement insinuated his endorsement of the product as a golfing personality and would subsequently be construed as a means of profiting from his involvement within the sport.

It is conceivable that Pornhub’s advertisement may be deemed to contain true legal innuendo, considering that those who know of Parmigiano Reggiano’s reputation for quality may consider that reputation as having been diminished by its association with, what some may consider to be, an irreputable company. Moreover, following Tolley v JS Fry there is clear precedent for defamation actions succeeding where advertisements use unauthorised product placement.

It is worth noting that the aforementioned Defamation Acts makes provision for a number of defences, these would have no obvious application for Pornhub in these circumstances.

Conclusion

In sum, criminal sanction is possible if improbable with regard to the unauthorised use of a trademark, whilst a civil claim would be extremely difficult to prove. The defamation claim has stronger grounds, with few issues arising in regard to proving defamation in fact. Yet establishing defamation in law will turn on the scope for proving serious financial loss; something dependent upon information not publicly available, sadly.

And so, while it may be an interesting academic exercise to deliberate over how a claim might be brought under the law of England and Wales, and the extent to which it might potentially succeed, the likely outcome is very difficult to ascertain. Suppose the cheese consortium proves the requisite serious financial loss, it ought to expect a considerable payout to cover it and further remedy the damage caused by the defamatory statement. If not, however, the only big cheeses in this case would be the lawyers.

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Tagged: Commercial Law, Intellectual Property, Technology

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