London rapper Mathangi "Maya" Arulpragasam pka M.I.A. is known for being an artist who is not afraid to express her political opinions and promote causes about which she is passionate through her art form.
Late last year M.I.A. released a music video for her song entitled 'Borders' (the Video), in which she denounces the treatment and living conditions of refugees - a well-intentioned and commendable message many would think. In the Video M.I.A. wears a modified football jersey of, the French football club, Paris Saint-Germain (PSG). M.I.A. changed the jersey so that the logo of Emirates, one of PSG's sponsors, read 'Fly Pirates' instead of 'Fly Emirates'.
Subsequent to the Video's release, on 14 December 2015 PSG's deputy CEO sought to instigate legal action and issued M.I.A. with a letter of claim asserting PSG's legal rights in their brand and requiring that M.I.A. cease broadcasting images on any media which showed the PSG jersey, because, PSG stated, 'we consider the use of our brand and image in a video clip denouncing the treatment of refugees is a source of discredit for our club'.
The letter asserts that M.I.A. caused PSG an image prejudice and adversely took advantage of the club's reputation which has caused them economic loss, and for which M.I.A. can be held liable under Article 1382 of the French Civil Code. Article 1382 relates to tortious liability and broadly states that 'any act whatever of man, which causes damage to another, obliges the one by whose fault it occurred, to compensate it'.
There are similar causes of action under English law which protect the rights of brand owners in their names or marks including their look and feel, such as passing-off. In a passing-off action under English law, PSG would have to successfully establish:
- that they built-up a reputation or goodwill as at the time of the act complained of;
- that M.I.A. made a misrepresentation to the public (whether or not intentional) which has caused or is likely to cause an erroneous belief that M.I.A. is endorsed by or associated with PSG; and
- as a result, that PSG have suffered damage and/or loss
Potential remedies for a passing-off action include damages or account of profits; an order for delivery up; and an injunction.
Although PSG's letter did not refer to trade mark infringement in respect of the changes to the Emirates logo, we do not know whether, as a sponsor, Emirates prompted or encouraged PSG to issue the letter in an attempt to protect its brand or trade mark. Similarly, presumably PSG would be inclined to do so to preserve its relationship with its sponsors.
M.I.A. seemingly decided to fight against PSG's claims in a controversial and non-conventional manner, for which she has built a reputation, by Tweeting photos of the letter to her 664,000 strong followers on 11 January 2016. She also posted an Instagram photo of her wearing the jersey asking her followers how they thought she should respond to PSG's demand that the images cease being broadcast. In an undaunted fashion, M.I.A. has also chosen a photo of her in the jersey as her Twitter profile picture and is using her Twitter account to retweet comments of support.
Not only is M.I.A. getting greater exposure for herself and, particularly, her Borders release but, PSG is the recipient of much negative attention and commentary from M.I.A.'s fan base and beyond - an aftermath which PSG and its lawyers most likely did not consider a possibility, or severely underestimated the aftermath's potency. It also appears as though PSG and their lawyers did not appreciate the quiddity of their prospective defendant. Presumably, if they had they would not have dealt with the protection and enforcement of their brand and legal rights in the way that they did. Arguably PSG's actions have caused themselves, and their sponsor Emirates, more damage and loss than if they had not taken any action at all.
This aftermath demonstrates the danger of rights holders and their legal advisers not fully considering and appreciating the, often far-reaching, context in which they are in (including any common ground for resolution); and the significance of making a sound judgement call based on that context - which is a crucial lesson for all.