1. Introduction
Does the law have a sense of humour? This
question is raised whenever the irresistible force of free
expression, in the form of parody, meets
the immovable object of property rights, in the form of trademark
protection. And if international experience is anything to go by, it
would seem that far from providing clear guidance court decisions on
the topic have been as variable as judicial humour itself.
Sachs J in Laugh It Off
Promotions v. South African
Breweries International (Finance)
B.V. t/a Sabmark International1
In May 2005, the Constitutional Court of South Africa considered
whether a series of transgressive T-shirts infringed the trade marks
of the manufacturers of Carling Beer. The case was a cause
célèbre highlighting the protection of famous
trade marks, culture jamming and “adbusting”, and the
freedom of political and artistic expression [Figure 1].
Laugh It Off Promotions2
makes and sell T-shirts that employ "social satire or parody".3
Its principal, Justin Bartlett Nurse, a journalism graduate, has
explained that he is one of many "conscientious objectors to
niche-market selfhood and mass-market mediocrity" who "grew
up to be brand atheists".4
He employs what he calls "ideological jujitsu".5
Nurse articulates his credos of culture jamming:
Jujitsu is a form of martial art that sees a
fighter using his opponent’s massive weight against him. In
this same way, Laugh it Off has used the force of a massive entity
(namely, the Black Label brand) back on itself… Like the
political cartoonist scribbles on his inkpad, like the comedian does
his interpretations on stage, we put our message on T-shirts. We
have accepted that we operate in a capitalist economy and we have
found a medium that affords us the opportunity of earning enough
money to continue saying what we want to say.6
Laugh It Off Promotions lampoons well-known, registered trade marks
of large corporations to make a statement about corporate policies
or practices. It also seeks to probe issues bearing on the broader
society; to assert free expression and in so doing to challenge the
inordinate use of trade mark laws to silence expressions that are
unflattering about brands.
Laugh It Off Promotions marketed T-shirts
using a range of brands - including those of Carling Beer. Sabmark
International was the owner of trade marks, which it licensed to
South African Breweries Ltd for use on beer bottles and related
products. One of the trade marks states: "America’s
lusty, lively beer; Carling Black Label Beer; Brewed in South
Africa" [Figure 2]. South African Breweries discovered that
Laugh It Off Promotions had marketed T-shirts, which bore a print
that was markedly similar, in lettering, colour scheme and
background, to that of the "Carling Black Label" trade
marks. The words “Black Label” on the registered trade
marks were replaced, on the T-shirt, with “Black Labour”.
The trade mark "Carling Beer" was substituted with “White
Guilt”; and the words "America’s lusty lively beer"
and “enjoyed by men around the world” were replaced with
the print "Africa’s lusty lively exploitation since 1652”
and "No regard given worldwide" [Figure 3]. South African
Breweries brought legal action against Laugh It Off Promotions on
the grounds that the unauthorised use of its registered trade marks
by the applicant in the course of trade offended the anti-dilution
provisions of South African trade mark law.
In addition to the complaints of South African Breweries, Laugh It
Off Promotions has also had to grapple with a host of complaints
from other disgruntled trade mark owners. In Kirkbi v Laugh
It Off Promotions, Lego brought a legal action against Laugh It
Off Promotions over a T-shirt design, which featured two block
figures in a suggestive position, with the word “Legover”
printed underneath it.7
Lego argued that the T-shirts were “detrimental to the
distinctive character or repute” of its trademarks. Justin
Bartlett Nurse responded that it was not Lego behind the action but
“expensive patent lawyers trying to scrounge Christmas bonuses
from their wealthy clients.”8The
trade mark owners of “Mr Min” complained about the
parody of the term “Mr Min” – used in associated
with cleaning products - with T-shirts, bearing the logo “Mr
Sin” and featuring representation of the United States
President, George W. Bush [Figure 4].9
The trade mark owners complained about the parody of the term
“Weet-bix” with T-shirts featuring the logo “Weed-brix”
in connection with marijuana use [Figure 5].10
The holders of trade marks in respect of Red Bull objected to the
sale of T-Shirts by Laugh It Off Promotions bearing the slogan “Dead
Bull” [Figure 6].11
The owners of the trade mark in respect of “Dettol” were
offended by the T-shirt, “Death Toll” [Figure 7].12
Similarly, the owners of the trade mark “Demostos” did
not like the use of the sign “Domestic Violence”.13
The trade mark owners of the trade mark “Diesel for Successful
Living” objected to T-shirts bearing the slogan “Denial
for Successful Loafing” [Figure 8].14
The holders of copyright and trade marks in respect of the Billabong
Wave Logo objected to its use by Laugh It Off Promotions.15
Colgate Palmolive objected to the use of its trade mark “Black
Like Me” [Figure 9].16There
were also complaints from trade-mark owners about the use of the
trade marks, “Husky Dog”, “Incredible Connection”,
“Joshua Doore” and “Ouma”, in what they felt
was unsavoury contexts.17The
Coca-Cola Company accused Laugh It Off Promotions of trade mark
infringement and passing off in respect of its “Corruption”
T-Shirt [Figure 10].18
This litany of trade mark infringement notices illustrates that
action by the South African breweries was not merely an isolated
occurrence.
Other trade mark owners refrained from taking action against Laugh
It Off Promotions. In other T-shirts, Kentucky Friend Chicken was
depicted as “Unlucky Fried Chicken”; “Standard
Bank” turned into “Standard Wank”; Shell Ultra
City became “Hell Ultra Shitty”; McDonalds was adorned
with the logo, “Moo, Make every day a cow’s last”
[Figure 11]; “Virgin” became “Viagra”
[Figure 12] and the National Lottery was depicted as “National
Robbery”.19A
commentator has observed of the work of Laugh It Off Promotions:
“Culture jamming draws on the carnivalesque, anaesthetic that
sites resistance in humour, the grotesque(just think of the
“Standard Wank” shirt), the disguised, the turning of
common sense on its head”.20
This article uses the dramatic conflict in Laugh It Off
Promotions v. South African Breweries International (Finance)
B.V. t/a Sabmark International to consider the relationship
between trade mark dilution, culture jamming, and freedom of
expression. It advances three main arguments. First, this paper
recognises that the owners of famous trade marks have legitimate
rights to protect their brands from dilution – whether through
tarnishment or blurring. Nonetheless, it maintains that there is a
need for trade mark owners to demonstrate material and economic harm
in order to establish a case for trade mark dilution. Second, this
analysis considers the impact of trade mark dilution laws in the
context of cultural discourse. Patricia Loughlan notes that there is
increasing conflict between trade mark owners and culture jammers:
Famous trade marks can and do become
significant cultural resources and important elements of public
discourse and popular expression. The problem is that trade mark
proprietors have and increasingly assert an interest in controlling,
not just the traditional "badge of origin" use of their
trade marks by rivals in the market-place, but also these other,
potentially culturally significant uses of the marks.21
It is contended that trade mark owners should
not be able to limit parody, satire, or culture jamming on the basis
of arguments about trade mark dilution. Third, this article explores
the long-standing tension between the rights accorded to trade mark
owners and freedom of speech.22It
is argued that courts should not assume that intellectual property
laws are necessarily compatible with constitutional protections of
freedom of speech.23
There is a need to subject trade mark rights to strict scrutiny to
ensure that they do not have an adverse impact upon the protections
of freedom of speech afforded by constitutional law and other legal
doctrines.
This article considers how a succession of South African courts have
interpreted the transgressive image of the "Black Labour, White
Guilt" T-shirt. It highlights the range of hermeneutic
strategies that were deployed to make sense of this unstable,
ambiguous icon. Indeed, the "Black Labour, White Guilt"
T-Shirt proved to be a Rorschach ink blot for judicial
methodologies. There are three parts to this piece. Part 2 considers
the dispute over the appropriation of the Carling Black Label mark
in the context of wider debates over trade mark law, culture
jamming, and the No Logo anti-global capitalism movement. Part 3
explores the various approaches of the High Court of South Africa,
the Supreme Court of Appeal and the Constitutional Court of South
Africa to the "Black Labour, White Guilt" T-shirts. The
lower courts maintained that the appropriation of the mark was an
instance of "hate speech", and an abuse of freedom of
speech. Moseneke J in the Constitutional Court of South Africa
maintained that trade mark dilution requires economic or material
harm. Sachs J emphasized the importance of parody, laughter, and
freedom of expression. Part 4provides a comparative analysis of the
protection of well known and famous trade marks. It charts the
evolution and the development of trade mark dilution in the United
States; and considers recent reforms to the legal doctrine. It is
contended that the decision in Laugh It Off Promotions CC v.
South African Breweries International could be a useful
precedent to guide superior courts in dealing with litigation over
parodies of well-known and famous trade marks.
2. Culture Jamming
By attempting to enclose our shared culture in sanitized and
controlled brand cocoons, these corporations have themselves created
[a] surge of opposition... By thirstily absorbing social critiques
and political movements as sources of brand “meaning,”
they have radicalized that opposition still further. By abandoning
their traditional role as direct, secure employers to pursue their
branding dreams, they have lost the loyalty that once protected them
from citizen rage. And by pounding the message of self-sufficiency
into a generation of workers, they have inadvertently empowered
their critics to express that rage without fear.
Naomi Klein, No
Logo: Taking Aim At The Brand Bullies24
The dispute in Laugh It Off Promotions CC
v. South African Breweries International is
not a mere isolated skirmish between a group of provocateurs
and a disgruntled corporation. It is emblematic of a larger cultural
conflict between social activists and owners of famous trade marks.
Justin Bartlett Nurse draws his strategies and tactics from a
well-established aesthetic tradition of culture jamming.
He is sympathetic to the cause of a socially-progressive,
anti-capitalist politics. A number of pundits and commentators have
championed the No Logo movement. The Canadian journalist and
political philosopher, Naomi Klein, has helped popularize the
tactics and strategies of culture jamming in her manifesto. She has
described the dispute over the Carling Black Label as “potentially
bigger than the McLibel case”.25
Rosemary Coombe, Kembrew McLeod, and David Bollier have sought to
analyse the use of trade mark infringement and dilution actions.
Sonia Katyal has suggested that the adoption of culture jamming
techniques is a form of “semiotic disobedience”. There
has been a strong counter-reaction to such popular and academic
critiques of trade mark law and practice. The Economist
magazine has attacked and ridiculed the No Logo thesis presented by
Naomi Klein. Trade mark traditionalists have defended the
value of trade marks, maintaining that they fulfil the original
objectives set for them. Marketing experts have protested that trade
marks can serve useful and progressive purposes. Such sceptics of
the No Logo movement have questioned its revolutionary credos. They
have suggested that, far from being an economic critique, culture
jamming is ultimately complicit with consumer capitalism.
2.1 The No Logo Movement
The phrase culture jamming was inspired by the technique of
electronically interfering with broadcast signals.26
The agitprop band, Negativland, coined the phrase “culture
jamming” in 1984 to describe a range of subversive activities.
In 1993, Mark Dery wrote the provocative pamphlet, “Culture
Jamming: Hacking, Slashing and Sniping in the Empire of Signs”.
He sought to define provide a short history of the aesthetic and
political credos of culture jamming:
Culture jamming... is directed against an ever more intrusive,
instrumental technoculture whose operant mode is the manufacture of
consent through the manipulation of symbols...
Part artistic terrorists, part vernacular critics, culture
jammers, like Eco's "communications guerrillas," introduce
noise into the signal as it passes from transmitter to receiver,
encouraging idiosyncratic, unintended interpretations. Intruding on
the intruders, they invest ads, newscasts, and other media artifacts
with subversive meanings; simultaneously, they decrypt them,
rendering their seductions impotent. Jammers offer irrefutable
evidence that the right has no copyright on war waged with
incantations and simulations. And, like Ewen's cultural
cryptographers, they refuse the role of passive shoppers, renewing
the notion of a public discourse.
Finally, and just as importantly, culture
jammers are Groucho Marxists, ever mindful of the fun to be had in
the joyful demolition of oppressive ideologies.27
Dery noted that culture jamming had a number of historical
antecedents – including samizdat, underground literature;
Situationistdetournement; and subculturalbricolage. He noted that
culture jamming could assume a number of guises – such as
sniping and subvertising; media hoaxing; audio agitprop; and
billboard banditry. Dery predicted that hackers, slashers, and
snipers would take advantage of the possibilities presented by the
Internet and virtual communities.
There are a range of groups and collectives employing culture
jamming strategies. In a contribution to Censoring Culture,
Giselle Fahimian provides case studies of the long term-goals and
organizational styles of three famous organisations - ®TMark,
Adbusters, and Negativland.28
®TMark
is an anonymous group of media provocateurs who engage in acts of
cultural sabotage – perhaps most famous for swapping the voice
boxes of Barbie and G.I. Joe Dolls.29
Fahimian notes: “In order to limit the legal liability of its
members, ®TMark
is structured in the most decentralized and anonymous manner
possible.”30
The Adbusters Media Foundation is
“a global network of artists, activists, writers, pranksters,
students, educators and entrepreneurs who want to advance the new
social activist movement of the information age”.31
The non-profit organization engages in the publication of a
monthly magazine, Adbusters, an advertising advocacy campaign
called “PowerShift”, and the maintenance of a culture
jammers network [Figure 13]. Negativland is a musical collective,
which have engaged in the appropriation of copyright works and trade
mark signs in their sound recordings.32
The group has sought to promote a philosophy of free artistic
appropriation.33
In No Logo: Taking Aim at the Brand Bullies, Naomi Klein
launched a polemic against the corporate control of well-known
brands and trade marks [Figure 14].34
She explored the growing opposition among culture jammers to
corporate rules. Naomi Klein considers the treatment of well-known
brands and trade marks. She explains the title of her best-selling
book: “The book is hinged on a simple hypothesis: that as
more people discover the brand-name secrets of the global logo web,
their outrage will fuel the next big political movement, a vast wave
of opposition squarely targeting transnational corporations,
particularly those with very high name-brand recognition”.35
Klein first examines the surrender of culture and education to
marketing. She reports on how the promise of cultural choice was
betrayed by the forces of mergers, predatory franchising, synergy
and corporate censorship. Klein considers the corporate assault on
employment, civil liberties, and civil space. She focuses upon the
growing opposition among culture jammers to corporate rules. Klein
seeks to explain the popularity of the practice of “culture-
jamming”:
Culture jamming is enjoying a resurgence, in
part because of technological advancements, but also more
pertinently, because of the good old rules of supply and demand.
Something not far from the surface of the public psyche is delighted
to see the icons of corporate power subverted and mocked. There is,
in short, a market for it. With commercialism able to overpower the
traditional authority of religion, politics and schools,
corporations have emerged as the natural targets for all sorts of
free-floating rage and rebellion. The new ethos that culture jamming
taps into is go-for-the-corporate jugular.36
Klein warned against seeing culture jamming as merely an aesthetic
practice, without political significance or import: “Perhaps
the gravest miscalculation on the part of both markets and media is
the insistence on seeing culture jamming solely as harmless satire,
a game that exists in isolation from a genuine political movement or
ideology”.37She
notes: “It is simply a tool – one among many –
that is being used, loaned, and borrowed in a much broader political
movement against the branded life”.38
Klein comments that the tactics of culture jamming have been
particularly effective when targeted against the labour practices of
corporations:
The more ambitious a company has been in
branding the cultural landscape, and the more careless it has been
in abandoning workers, the more likely it is to have generated a
silent battalion of critics waiting to pounce. Moreover, the
branding formula leaves corporations wide open to the most obvious
tactic in the activist arsenal: bringing a brand’s production
secrets crashing into its marketing image. It’s a tactic that
has worked before.39
Klein considers the emergence of the “Fair Trade”
movement: “Ethical shareholders, culture jammers, street
reclaimers, McUnion organizers, human rights hacktivists,
school-logo fighters and Internet corporate watchdogs are at the
early stages of demanding a citizen-centered alternative to the
international rule of the brands”.40
She notes: “That demand, still sometimes in some areas of the
world whispered for fear of a jinx, is to build a resistance –
both high-tech and grassroots, both focused and fragmented –
that is as global, and as capable of coordinated action, as the
multinational corporations it seeks to subvert.”41
Her subsequent books, Fences and Windows, and The Shock
Doctrine, further explore the politics of globalization.42
In her classic text, The Cultural Life of Intellectual
Properties, Rosemary Coombe discussed "the lure of
trademarks as visual symbols of hegemonic power and as vehicles for
alternative articulations in consumer societies".43
She considered the increasing commodification of the public sphere,
the branding of cityscapes, the role of trade marks in national
imagery, struggles around the prohibition of racial stereotypes as
forms of trade mark, as well as rumours that circulate about the
origins of trade marks. In “Fear, Hope and Longing for the
Future of Authorship and a Revitalized Public Domain in Global
Regimes of Intellectual Property,” Rosemary Coombe comments:
Copyright and trademark are increasingly used
as tools of corporate harassment and censorship. This is, moreover,
no longer the position of a few critical legal scholars - the
enormous success of Naomi Klein's book No Logo (and the
anticorporate politics it both documents and incites) is evidence
that the issue is becoming one of widespread social concern (and not
just amongst teenagers who want free music, as conservative legal
theorists dub those who are committed to creating alternative moral
economies of sharing intellectual work, creativity, and democratic
dialogue in digital environments).44
Elsewhere, Coombe has remarked: “Protests against sweatshop
labour practices, and the movement of big box stores and fast food
franchises into communities, suggest that the trademark now provides
a site and a symbol around which to resist forms of commodification
that people find contrary to their understandings of community and
social justice”.45
She wonders: “If the trademark serves as a surrogate for the
goodwill that consumers have towards the company, can we also use
them as a means to hold corporations accountable for their
activities?”46
She poses the question: “To what extent are ‘rogue
websites,’ ‘culturejamming,’ ‘subvertizing’,
and ‘No Logo’ movements effective forms of resistance to
the hegemony of commodified signs?”47
In Freedom of Expression(R), Kembrew McLeod
complains about the incursions by trademark law into freedom of
political speech and artistic expression.48
In 1998, he obtained a trade mark from the United States Patent and
Trademark Office in respect of the phrase "freedom of
expression", as an ironic comment to demonstrate how the
American culture had become commodified and privately owned [Figure
15].49
He sought to publicise this event through a media prank. McLeod
hired a lawyer to write a cease-and-desist letter to a colleague who
was complicit in the joke:
Your company has been using the mark Freedom
of Expression. Such use creates a likelihood of confusion in the
market and also creates substantial risk of harm to the reputation
and goodwill of our client. This letter, therefore, constitutes
formal notice of your infringement of our client's trademark rights
and a demand that you refrain from all further use of freedom of
expression.50
Dealing with reporters, McLeod observed poker-faced: "I didn't
go to the trouble, expense, and the time of trademarking freedom of
expression(R) just to have someone else come along and
think they can use it whenever they want".51
His stooge responded that McLeod was an "opportunist".
This staged dispute was reported, with great earnestness, by the
Hampshire Gazette. This incident has echoes of the
controversy in Australia over a Melbourne patent attorney, John
Keough, obtaining innovation patent for a wheel - a "circular
transportation device".52
In Brand Name Bullies, David Bollier is critical of the
development of the Federal
Trademark Dilution Act1995 (US), observing:
The perverse result is that the more power and
influence a company acquires, the more able it is to stifle robust
public discussion about it and its products – even where no
consumer would be confused. As if from the sky, well-heeled
trademark holders can figuratively deploy a gigantic Monty Python
foot to squash unauthorized uses of a trademarked name or image, no
matter how innocent, non-commercial, or trivial. All that matters is
whether the offending reference to the trademark “dilutes”
or “tarnishes” it.Often, the legal merits of an
offending usage may be irrelevant because the hapless defendant
cannot begin to consider litigation against the likes of McDonald’s
or Microsoft. This imbalance of power enables large trademark
holders to make threats they know to be legally dubious or
erroneous. Very few of the bullied victims can afford to ascertain
their rights, let alone fight back in court.53
Bollier complains that the legislation is a "blunt instrument
of cultural intimidation and censorship".54
He maintains that "there is no reason that trademark
protection should trump all other interests in our society,
especially free speech and artistic commentary".55
In her paper, “Semiotic Disobedience”, Sonia Katyal
notes: “Principles of trademark and copyright ownership have
allowed corporations to consecrate their symbols and images,
allowing for a particularly robust form of incontestability”.56
Katyal observes that “semiotic disobedience has created new
and particularly vexing problems for lawyers and law enforcement
officials, both of whom are often bemused by artists’
increasingly creative and confrontational approaches”.57She
seeks to analyse the tactics of “semiotic disobedience”:
Just as previous discussions of civil
disobedience focused on the need to challenge existing laws by using
certain types of public and private property for expressive
freedoms, today’s generation seeks to alter existing
intellectual property by interrupting, appropriating, and then
replacing the passage of information from creator to consumer. In
many cases, the object of artistic attention is the appropriation
and occupation of intellectual, tangible, or even bodily property. I
call these recent artistic practices examples of ‘semiotic
disobedience’ because they often involve the conscious and
deliberate re-creation of property through appropriative and
expressive acts that consciously risk violating the law that governs
intellectual or tangible property.58
Katyal maintains that “semiotic disobedience offers a
cautionary lesson for intellectual property enforcement: as law
attempts to suppress creativity, it may also give rise to an even
more innovative process of comment and criticism than was previously
imagined.”59
2.2 The Pro Logo Counter-Movement
Against this new genre of cultural criticism of advertising and
marketing, there has been a rearguard defence of the value and
integrity of trade marks.
In response to the Naomi Klein book No Logo, The Economist
magazine released a special edition on branding entitled Pro
Logo, with the tag line "Why brands are good for you".60
Its front cover is a replication of the cover of the book “No
Logo”, with “No” replaced with “Pro”
and the tag line “Why brands are good for you” [Figure
16]. The Economist attacks Naomi Klein's book No Logo
as the representative of a wider anti-branding movement.
Brands have thus become stalking horses for
international capitalism. Outside the United States, they are now
symbols of America's corporate power, since most of the world's best
known brands are American. Around them accrete all the worries
about environmental damage, human-rights abuses and sweated labour
that anti-globalists like to put on their placards. No wonder
brands seem bad.61
First, The Economist defends trade marks in terms of their
original objectives: "[Brands] began as a form not of
exploitation, but of consumer protection ".62
Second, The Economist offers a defence of trade marks, with
the case statement: "Far from being instruments of oppression,
they make firms accountable to consumers".63
The editorial notes: “A failed advertising campaign, a
drop-off in quality or a hint of scandal can all quickly send
customers fleeing".64
The leader states: "Indeed, protestors, including Ms Klein's
anti-globalisation supporters, can use the power of the brand
against companies by drumming up evidence of workers ill-treated or
rivers polluted.”65Third,
The Economist accuses Naomi Klein of claiming that consumers
are merely pawns: “Her thesis is that brands have come to
represent 'a fascist state where we all salute the logo and have
little opportunity for criticism because our newspapers, television
stations, Internet servers, streets and retail spaces are controlled
by multinational corporate interests.'”.66
The Economist concludes that Naomi Klein’s arguments
are wrong-headed: “The idea is utterly wrong-headed. Brands do
not rule consumers; consumers rule brands.”67
Taking umbrage at the piece, Naomi Klein wrote a letter to The
Economist complaining that her views had been misrepresented and
placed out of context.68
She scornfully replied: “Your publication, on the other hand,
appears to believe that political activism is unnecessary since we
apparently can rid the world of corporate abuses simply by shopping
for better brands.”69
In Pro Logo, a pair of Gallic marketeers, Michel Chevalier
and Gerald Mazzalovo, sought to rebut the notion that brands are
inherently evil; that they are the foundation of a system of
hegemony and alienation; and that, by attacking them, one is
attacking the heart of the "capitalist machine" [Figure
17].70
Indeed the writers contend that brands are authentic indicia of
social progress:
Brands exist and are neither good nor evil in
themselves. They can be criticized, but calling for their abolition
is absurd. They are and will remain an essential tool of marketing,
international competition, and contemporary social life. It’s
impossible to imagine that supermarkets would suddenly begin selling
exclusively generic products. If that were to happen, the need for
differentiating these products would immediately arise – and
brands would reappear, or else the store’s name would take
their place. In fact, there is no such thing as a world without
brands.71
Chevalier and Mazzalovo conclude that “brands are a force for
progress to the degree that they are well managed and that the
consumer behaves responsibly.”72
The authors seek to “convince consumers determined to defend
their rights that brands are not The Enemy, and companies
that they have everything to gain by making their customers’
point of view a priority.”73
It is perhaps worth interpolating that certain social movements have
relied upon trade marks to promote progressive social causes.
Fairtrade Labelling Organizations International uses Fairtrade marks
to provide an independent guarantee that disadvantaged producers in
the developing world are benefiting from the sale of goods.74
A product can only display the Fairtrade mark if it meets
international Fairtrade standards. The “Make Poverty History”
campaign was designed to promote trade justice, humanitarian aid and
the reduction of debt.75
The name and logo “Make Poverty History” was registered
as a trade mark by Comic Relief, and licensed to member
organisations who met certain guidelines as to the use of the brand.
“(Red)”
is a brand created to raise awareness and money for the Global Fund
to Fight AIDS, Tuberculosis and Malaria by teaming up with the
world's most iconic brands to produce “(Red)”branded
products. A portion of profits from each product sold goes directly
to the fund to invest in African AIDS programs, with a focus on
women and children.76
The various initiatives of “Fairtade”, “Make
Poverty History” and “(Red)” all use and deploy
trade marks to advertise and raise awareness for certain progressive
causes. The ventures can be contrasted with the tactics of culture
jamming, which seek to undermine trade marks in order to promote
social and political causes.
In The Rebel Sell: Why the Culture Can't Be Jammed, Joseph
Heath and Andrew Potter engaged in a critique of the culture jamming
strategies of Naomi Klein, Adbusters, and Michael Moore
[Figure 18].77
The authors observe: "In a world of this type,
countercultural rebellion is not just unhelpful, it is positively
counterproductive".78
Heath and Potter comment:
Books like No Logo, magazines like Adbusters
and movies like American Beauty do not undermine consumerism; they
reinforce it. This isn’t because the authors, editors or
directors are hypocrites. It’s because they’ve failed to
understand the true nature of consumer society. They identify
consumerism with conformity. As a result, they fail to notice that
it is rebellion, not conformity, that has for decades been the
driving force of the marketplace.79
The authors maintain that Naomi Klein offers little in the way of a
positive, constructive, political agenda: “One of the biggest
ironies of the anti-globalization movement in general is that for
all its opposition to consumerism, it effectively reduces
citizenship to consumer action”.80
Heath and Potter observe, acerbically: “The reason No Logo
has had such dramatic success is that it serves as a how-to manual
for the virtuously hip shopper, full of case studies in how
consumers can try to influence corporate behaviour”.81
The pair lament that Klein “focuses entirely on corporate
awareness campaigns, consumer boycotts, street protests, and culture
jamming, while completely ignoring the role played by citizens
working through government”.82
The scholar of academic publishing, Simone Murray, comments that the
book No Logo is itself open to being co-opted:
Canadian journalist Naomi Klein's handbook of
the anti-corporate movement, No Logo: Taking Aim at the Brand
Bullies (2000), was published in Australia and the UK by News
Corporation subsidiary HarperCollins and has, perhaps even to its
publisher's surprise, achieved bestseller status internationally.
Yet, the exceptionalism of this text's print history in the current
media environment tends rather to confirm the dominant publishing
industry rule that individual media products reinforce the market
profile of their parent corporation. There may well be leeway for
abstract critique of the political and economic philosophies to
which the company's directors subscribe, but rarely for explicit and
extended criticism of the corporation's activities per se.83
She notes the ironies of No Logo being marketed by a
publisher under the ownership of the powerful News Corporation:
‘Explicitly oppositional books are always themselves open to
commodification in a marketplace hungry for new ideas and willing to
pay for them’.84
The ebullient Jeremy Phillips devotes a whole chapter of his
scholarly text, Trade Mark Law: A Practical Anatomy, to a
rejoinder to the “No Logo” thesis of Naomi Klein.85
The section is entitled “Trade marks, Images, Icons and Social
Responsibility”. Phillips responds to the manifesto of “No
Logo” thus:
Naomi Klein’s anxieties concerning the
power and influence of major brands are not misplaced, but the
abuses which she addresses are not confined to owners: they are
found within large corporations of many descriptions. The
rectification of those abuses is not the exclusive province of the
trade mark and brand-protection community. While it helps to protect
brand manipulators by granting them a powerful exclusive right, that
same body of law provides for a wide range of defences to
infringement in the interests of freedom of speech, competition and
honest use. 86
Phillips contended that Klein's case did not relate to the
misfeasance of all brand owners in respect of all brands. Rather,
he emphasized that the target of her criticism was a small number of
brand-mighty corporate potentate. Phillips doubted whether the
“consumer apocalypse” or “Armageddon”
predicted by Klein would in fact eventuate.87
2.3 Culture Wars
It is useful to contextualise the dispute over the appropriation of
the Carling Black Label mark in the context of wider debates over
trade mark law, culture jamming, and the No Logo anti-global
capitalism movement. The dispute between Laugh It Off Promotions and
the brewers of Carling Black is part of a larger struggle over
well-known and famous trade marks. In this context, there has been
an intense discussion over the value and worth of trade marks. Trade
mark owners and their legal representatives, economists, and
marketing agents have defended the value of trade marks, saying that
they fulfil their original aims and objectives. Thus, they have
maintained that trade marks serve as a badge of origin of goods and
services; they guarantee the quality of goods and services; and
promote consumer welfare.88
By contrast, the No Logo movement has emphasized the economic,
social and cultural costs associated with the expansive protection
of trade marks. The civil society activists complain that
corporations have deployed trade marks to mesmerize and indoctrinate
consumers. There has been much debate over the legitimacy of the
tactics and strategies of culture jamming, “adbusting”,
and the No Logo Movement. The owners of well-known and famous trade
marks would maintain that such conduct constitutes trade mark
infringement and dilution. The No Logo movement would justify such
methods of resistance as a form of “semiotic disobedience.”
There has also been larger debate about the political intentions and
motivations of the No Logo movement. Trade mark owners have
questioned the political efficacy of culture jamming, suggesting
that it does as much to reinforce consumer capitalism, as critique
it. The No Logo movement maintains that the appropriation of
well-known and famous marks is a useful means of promoting fair
trade.
3. Black Labour, White Guilt
South Africa has suffered so many interferences with the rights
of free speech that the tendency to let everybody say what they
want, when they want, how they want is very strong. At the same
time there is an awareness that racism can ignite explosive passions
and destroy the very fabric of a tolerant and democratic society...
The problem, then, is how to reconcile the need for openness and the
right to speak one's mind with the necessity for healing the wounds
created by racism.
Justice Albie Sachs89
The South African Breweries sued Laugh It Off Promotions under South
Africa’s anti-dilution trade mark laws. Section 34 (1) (c) of
the Trade Marks Act 1993 (RSC) provides that the rights
acquired by registration of a trade mark are infringed by "the
unauthorized use in the course of trade in relation to any goods or
services of a mark which is identical or similar to a trade mark
registered, if such trade mark is well known in the Republic and the
use of the said mark would be likely to take unfair advantage of, or
be detrimental to, the distinctive character or the repute of the
registered trade mark, notwithstanding the absence of confusion or
deception."
The directors of the company, JaapRomein, and Graham Holford,
observed in papers tended to the court:
We take particular objection to the wording on
their label... We have worked extremely hard to avoid racial
discrimination in our labour practices, to the extent the SAB has
recently received recognition as the best employer in South Africa.
The mark applied to clothing by Laugh It Off is undoubtedly intended
to suggest that improper racial discrimination is a factor in the
business of SAB and to harm our reputation and the reputation of
Black Label marks and products. It is distasteful and undesirable.90
South African Breweries was concerned that the racial slur was
likely to erode the exclusiveness of the mark, discourage people
from purchasing the respondent’s Black Label Beer and
adversely curtail its opportunities to sponsor domestic sport.
In response, Laugh It Off Promotions contended that its use of the
trade marks had not infringed the anti-dilution provisions because
the likelihood of detriment to the reputation of the marks had not
been established. In any case, the group maintained that it was
exercising freedom of expression protected by the South African
Constitution 1996 (RSC). Section 16 (1) of the South African
Constitution 1996 (RSC) provides: "(1) Everyone has the
right to freedom of expression, which includes– (a) freedom of
the press and other media; (b) freedom to receive or impart
information or ideas; (c) freedom of artistic creativity; and (d)
academic freedom and freedom of scientific research." Section
16 (2) of the South African Constitution1996 (RSC) provides:
"The right in subsection (1) does not extend to – (a)
propaganda for war; (b) incitement of imminent violence; or (c)
advocacy of hatred that is based on race, ethnicity, gender or
religion, and that constitutes incitement to cause harm.”
The advocate for Laugh It Off, Peter Hodes, argued: "We are
dealing here with a form of creative expression ... that should
endure protection by the constitutional right to freedom of
expression".91
He submitted that South African Breweries had not succeeded in
proving that the shirts caused the brewery economic harm: "If
you want to limit someone’s freedom of expression, you will
have to establish economic harm."92
Hodes maintained that the T-Shirt conveyed a social comment, rather
than a racial attack on South African: "It says nothing about
beer, about SAB or about their labour practices."93
Hodes also argued that freedom of expression should be considered a
more important right than protecting intellectual property rights.
The Supreme Court of Appeal and the Constitutional Court of South
Africa admitted the Freedom of Expression Institute (FXI) as an
amicus curiae, a friend of the court The FXI observed that
South African Breweries should tolerate some criticism and mockery
because the brewery has “opted to place a particular brand
identity with certain images, virtues and values in the public
domain”.94
In a statement, FXI observed:
SAB must not enjoy special immunity from the
spoofing and criticism that is generated by its own choice of
branding. The words 'Black Labour - White Guilt' are a parody and
constitute nothing more than the fair use of a registered trademark,
which is protected by the constitutional right to freedom of
expression. The right to parody is one of the hallmarks of the
right to freedom of expression and in order for parody to be
exercised effectively, an individual must be able to borrow, copy or
imitate an original work, mark or object.95
FXI stated that the case is also about the relation between trade
mark law and freedom of expression: "We accept there cannot be
an a priori hierarchy."96
FXI maintained that the form of the communication was acceptable:
"It lies in the essence of freedom of expression that it
includes the freedom to choose the means of communication."97
FXI noted: "In the 21st century we do not shout messages
from rooftops or hang them on lamp posts."98
The FXI submitted that trade mark dilution law should allow parody
as an instance of "fair use" in the light of the
constitutional right to freedom of expression.
This section considers how a succession of South African courts have
interpreted the transgressive image of the "Black Labour, White
Guilt" T-shirt. It highlights the range of hermeneutic
strategies that were deployed to make sense of this unstable,
ambiguous icon. Indeed, the "Black Labour, White Guilt"
T-Shirt proved to be a Rorschach ink blot for judicial
methodologies. It first considers the "Pro Logo"
approach of the High Court of South Africa, and the Supreme Court of
Appeal to the "Black Labour, White Guilt" T-shirts. Such
lower courts maintained that the appropriation of the mark was an
instance of "hate speech", and an abuse of freedom of
speech. It secondly evaluates the judgment of Moseneke J in the
Constitutional Court of South Africa that trade mark dilution
requires economic or material harm. It also examines the jurist's
reluctance to address wider constitutional issues. It finally
examines the judgment of Sachs J in the Constitutional Court of
South Africa, and his discussion of the importance of parody,
laughter, and freedom of expression.
3.1 The High Court of South Africa (the Cape of
Good Hope Provincial Division)
The litigation in the High Court of South Africa (the Cape of Good
Hope Provincial Division) attracted a great deal of media attention
– with the supporters of Laugh It Off Promotions staging
colourful protests outside the court.
In the course of argument, the advocate for South African Breweries,
Philip Ginsberg, SC, alleged that Laugh It Off Promotions had
tarnished the Carling Black Label trade marks:
His [Nurse’s] purpose is to create
something that is controversial, eye-catching and sells T-shirts.
This is shown by his other T-shirts that range from pornographic to
derogative. The message of Laugh It Off is degrading and racially
inflammatory, and it cannot be seen as humour or a parody. The
purpose of the message is to attract attention in order to sell
T-shirts and make money at the expense of someone else’s
property. If you allow T-shirts now, it will be mugs tomorrow.
Inevitably, it will be everywhere and it will be the death of the
trademark.99
South African Breweries was concerned that the racial slur was
likely to erode the exclusiveness of the mark, discourage people
from purchasing the respondent’s Black Label Beer and
adversely curtail its opportunities to sponsor domestic sport.
At first instance, the High Court of South Africa (the Cape of Good
Hope Provincial Division) considered the claims of South African
Breweries that the words used on the T-Shirts conveyed the message
that "the applicant has, in the past, exploited and continues
deliberately to exploit black labour and is guilty of racial
discrimination."100
It was furthermore alleged: "The words used conjure up South
Africa’s racist past by falsely attributing to the applicant
the “Lusty” and “lively exploitation of Black
Labour since 1652”."101
It was submitted that such messages were racially inflammatory.
The High Court of South Africa held that the message on the T-shirts
carried a likelihood of material detriment to the distinctive
character or repute of the marks. Cleaver J considered that Laugh
It Off Promotions could not raise the defence of free expression
because they had exploited the marks for gain: "The dividing
line between the freedom of speech and the statutory protection
afforded the applicant is a thin one, but is nonetheless one which
has been transgressed by the respondent."102
The High Court held that the use of the marks was not mere parody
that poked fun at the trade marks. Rather, it intimated that the
publication engaged in "hate speech":
Its lampooning or parodying of the applicant’s
marks is not a “harmless clean pun which merely parodies or
pokes fun” at the respondent’s marks. It goes further
than that by introducing the race factor, something which our
Constitution and our new democracy are at pains to avoid. While the
respondent’s use of the marks may not amount to hate speech as
contemplated in sections 16 (2) (c) of the Constitution, it can, I
believe, be said to border on hate speech. The provisions of the
Promotion of Equality and Prevention of Unfair Discrimination Act,
No 4 of 2000 highlight the importance which the legislature places
on eliminating racial friction.103
The judge concluded: "In my view the use by the respondent of
the applicant’s marks can be said to demonstrate an intention
to be hurtful or harmful to the applicant inasmuch as they are based
on race, ethnic or social origin, and colour."104
The decision for the High Court shows an antipathy towards culture
jamming. First, the judgment suggests that Laugh It Off Promotions
is contemptuous of law. It suggests that the T-shirts show a wilful
disobedience and disrespect for the authority of the court. Second,
the ruling maintains that the T-shirts display more than mere bad
taste; there are a form of hate speech. The decision suggests that
Laugh It Off Promotions is a purveyor of racial taunts and ethnic
slurs. Third, the judgment shows no sympathy or understanding for
the cultural modes of production used by Laugh It Off Promotions.
The decision suggests that the work of the agent provocateurs shows
bad taste and poor artistic standards, which do not meet the high
standards of puns, parodies, and fun. Finally, the language of the
decision shows a peculiar anthropomorphism. The judge attributes to
a corporate entity – South African Breweries – hurt
feelings and a wounded disposition. The phrase “hate speech”
is usually directed towards groups and collectives – rather
than a corporate entity.
Arguably, this is a peculiar misreading of the facts of the case. It
would seem to be a distortion of the controversy to view it as an
aggressive racist attack by Laugh It Off Promotions upon the
delicate sensibilities of a helpless corporation.
3.2 The Supreme Court of Appeal
The Supreme Court of Appeal considered the arguments of Laugh It Off
Promotions and FXI that the message was a parody of Sabmark’s
trade marks and, as such, entitled to freedom of expression
protection.105
In the course of the appeal, Harms JA considered comparative law on
trade mark law and freedom of expression: "Although reliance
will be placed in the course of this judgment on foreign case law it
must be understood that it is done principally in order to
illustrate or to compare."106With
such caveats in mind, the judge considered legal developments on
trade mark law and parody in the United States, Canada, and the
European Union.
After this somewhat selective review of the comparative case law on
trade mark law and parody, the Supreme Court of Appeal doubted
whether the T-Shirts of Laugh It Off Promotions qualified as "fair
parody". The judge observed:
Mr Nurse, who should know, ironically enough,
described his use as satire and not as parody. MrWelz, the editor of
Noseweek who filed an affidavit in support of Nurse, was able to
give a number of examples of true parody of trade marks as used in
his publication. And as counsel for FXI accepted during argument,
some of the appellant’s other caricatures can be classified as
parody and others not.107
The judge held that the appellant’s reliance on parody as a
defence was misconceived: "The appellant is using the
reputation of Sabmark’s well-known trade mark, which has been
established at considerable expense over a lengthy period of time,
in the course of trade in relation to goods to the detriment of the
repute of the mark without any justification."108
The judge concluded that the use and detriment was unfair and
constituted an infringement of the trade mark dilution provisions.
The Supreme Court of Appeal held that the mark on the T-shirts
conveyed the message that Sabmark was guilty of exploiting black
labour and of racial discrimination, and that the message is likely
to take unfair advantage or cause detriment to the trade marks.
The judge acknowledged that a T-shirt could be a vehicle for
political communication:
One should recognise that in latter-day
societies one-liners, sound bytes and SMS messages have become the
favourite method of communication, replacing political, religious
and social monographs and tracts. T-shirts fall in the same class
and provide a powerful medium for making socio-political comments.
As PJ O’Rourke once remarked somewhat sardonically –‘If
Martin Luther were a modern ecologist, he would have to nail
ninety-five T-shirts to the church door at Wittenberg.’109
The judge noted that "courts are in general not amused by sex-
and drug-related ‘parodies’, even if they are clever or
funny, simply because the prejudice to the trade mark tends to
outweigh freedom of expression."110
His Honour also observed: "On the same principle, unfair or
unjustified racial slurs on a trademark owner (even if not hate
speech or approximating it) should in general not be countenanced,
more so in a society such as ours."111
The judge concluded that the constitutional
right to freedom of expression did not protect Laugh It Off
Promotions because it fed off the reputation of the trade mark in
order to sell T-shirts, and could still express itself in other ways
that do not harm Sabmark. His Honour noted: "The appellant’s
reliance on the freedom of expression is misplaced. It did not
exercise its freedom, it abused it."112
The judgment was received with acclaim by some commentators. Writing
in the European Intellectual Property Review, Dario
F. Tanziani enthused:
This is a
landmark decision by the Supreme Court of Appeal which sets out the
limits to freedom of speech in using a trade mark to
criticise the activities of the trade mark
proprietor.
Not only did the court set out limits to what would normally be
regarded as parody or
satire, but much emphasis was placed on the fact that Sabmark's
trade marks were
used by the infringer in relation to goods or services and in the
course of trade.113
The suggestion here is that Laugh It Off Promotions merely used the
guise or semblance of parody and satire to engage in commercial
activities.
However, the "Pro Logo" reasoning of the Supreme Court of
Appeal can be criticised on a number of grounds.
First, the lower courts are too quick to accept that the "Black
Labour, White Guilt" T-shirt tarnishes and dilutes the trade
mark, without any firm evidence of economic or material harm. It is
unclear how the corporate behemoth of South African Breweries has
been harmed by the T-Shirt released by Laugh It Off Promotions.
There is no evidence that the parody has resulted in a diminution in
the sales of alcohol to South African consumers. Moreover, the
judges tend to be selective in their reading of international
precedents, ignoring the clear trend towards providing a safe
harbour for parodies under trade mark law.
Second, the judges are rather prim and puritanical in misreading the
T-shirt as a racial slur, without any qualities of humour or parody.
It could be questioned whether the T-shirt produced by Laugh It Off
Promotions constitutes “hate speech”.114
The academic, Katharine Gelber, has sought to explain the phenomenon
of “hate speech”:
Hate speech enacts hatred, not just a
psychological dislike for another human being but a manifestation of
prejudice; systematic and institutionalised marginalisation which
can be identified via considerable historical evidence. The ‘hate’
in hate speech is shorthand for a broader conception. Thus hate
speech enacts prejudice in complex ways, and with concrete negative
consequences for its targets. Subjected to an assessment of the
operative principle of what it is that an expressive activity does
in the saying of it, the minefield of whose free speech claims may
be regarded as valid, and whose may not, becomes easier to navigate.
Difficult cases, and differences of opinion, will always arise. But
the primary consideration ought to be a measure of the impact of
one’s expressive activities on oneself and others.115
In light of such a definition, it is difficult to accept that the
T-Shirt disseminated by Laugh It Off Promotions is an instance of
“hate speech” designed to enact racial hatred. It also
appears to be very strange to characterise criticism of a
corporation as “hate speech”, and attribute to such an
entity hurt and wounded feelings. It would be more accurate to say
that the South African Breweries are complaining of so-called
“corporate libel” and “product disparagement”.116
It is not clear that trade mark law should provide such collateral
protection for corporate reputation.
Third, the Supreme Court of Appeal tended to crudely define the
cultural production of Laugh It Off Promotions. The judges draw a
binary opposition between “parody” and “satire”.
The Supreme Court of Appeal suggests that “parody” –
or at least “fair parody” is acceptable, because it
involves the criticism of the trade mark itself. However, in its
view, “satire” is not acceptable, because it involves
larger political and social commentary. The judges seem to accept
that the arguments of the South African Breweries that the
particular T-shirt in question is something less than a “parody”;
but might constitute a “satire”. Confusingly, the judges
accepted the argument of the South African Breweries that some of
the appellant’s other caricatures can be classified as parody
and others not. Such quibbling, pettifogging reasoning is
questionable. Scholars have shown that there are strong
inter-connections between the practices of “parody” and
“satire”.117
Margaret Rose notes that “there are several distinct
differences between parody and satire – such as the way in
which the parody may make its target contribute to its own text –
but that parody may be used by the satirist to attack an author or
reader through the evocation and mockery of a particular work with
which they may be associated.”118
In any case, it is arguable that “satire” is more
deserving of protection as free speech because of its political
content. A larger concern is that the terminology of “parody”
and “satire” seems aesthetically distant and remote from
the cultural practices of culture jamming. There is a failure on the
part of the Supreme Court of Appeal to comprehend the aesthetic
tradition of culture jamming and “adbusting” that Laugh
It Off Promotions is working in.
Finally, the lower courts wrongly give short shrift to
constitutional protections of freedom of expression in their
analysis. Eric Barendt has complained about the tendency of courts
to avoid dealing with the constitutional ramifications of
intellectual property rights: “These areas of law have
developed apart from free speech jurisprudence”.119
He maintains: “No historical or doctrinal account can justify
the immunity of these rights from careful free speech
scrutiny.”120Similarly,
Neil Netanel has noted similar tendencies at work in the field of
copyright law.121
He comments that copyright law has failed to be an “engine of
free expression”: “Copyright’s speech burdens cut
a wide swath, chilling core political speech such as news reporting
and political commentary, as well as church dissent, historical
scholarship, cultural critique, artistic expression, and quotidian
entertainment”.122
There is a need to subject intellectual property rights to much
greater constitutional scrutiny as to their impact upon freedom of
speech. The scope, nature and character of intellectual property
rights should be shaped according to its impact upon the
constitutional goals of “robust debate and expressive
diversity”.123
3.3 The Constitutional Court of South Africa
In Laugh It Off Promotions v. South African Breweries
International, the Constitutional Court of South Africa upheld
the appeal by Laugh It Off Promotions against the decisions of the
lower courts that it had committed trade mark dilution.124
Moseneke J wrote the lead judgment for the unanimous Constitutional
Court of South Africa. There is a supplementary judgment from Sachs
J. Although respectful of the judgment of Moseneke J, his Honour
believed that the decision failed to grasp some of the substantive
matters at hand: "I believe that when balancing the different
interests involved it failed to appreciate why the parodic use of
the trademark in the milieu in which Laugh it Off operated was
central to its critical project."125
The Constitutional Court of South Africa considered four key issues:
the role of trade mark dilution protection; the need for evidence of
material harm; the nature of culture jamming; and the ramifications
of constitutional protection of freedom of speech.
First, the judges considered the history and nature of trade mark
dilution as a legal doctrine.
Moseneke J observes that the dilution of a trade mark can occur in
two ways, by blurring or by tarnishment. He notes: "Blurring
takes place when the distinctive character or inherent uniqueness of
the trade mark is weakened or reduced."126
By contrast, he observes: "Tarnishment occurs where
unfavourable associations are created between a well-known
registered trade mark and the mark of the unauthorised user."127
Moseneke J commented that the South African provisions
similar were to those found in the European Directive,128
United Kingdom trade mark law,129
and the United States Federal
Trademark Dilution Act
1995 (US).130However,
there was one important difference. The South African legislation
required a likelihood of unfair advantage or detriment - rather than
proof of actual detriment or unfair advantage.
In his judgment, Sachs J recognises the social importance of trade
mark protection. He cites the words of Frankfurter J, "The
protection of trade-marks is the law’s recognition of the
psychological function of symbols."131
Sachs J comments:
From the producer’s side, trademarks
promote invention, protect investment and enhance market-share by
securely identifying a product or service. From the consumer’s
point of view, they facilitate choice by identifying the product and
guaranteeing its provenance and presumed quality. Furthermore,
although this case has been presented as a David and Goliath
contest, it is not only the Goliaths of this world who need
trademark protection. Small entrepreneurs fighting to increase their
share of the market against the Goliaths strive energetically to
identify their uniqueness and that of their products and services.132
His Honour observed: "In a society driven by consumerism and
material symbols, trademarks have become important marketing and
commercial tools that occupy a prominent place in the public mind."133
The judge commented: "Consequently, companies and producers of
consumer goods invest substantial sums of money to develop,
publicise and protect the distinctive nature of their trademarks; in
the process, well-known trademarks become targets for parody."134
Second, the judges questioned whether South African Breweries had
provided sufficient evidence of material harm, which could be
attributed to the T-shirts of Laugh It Off Promotions.
Citing the Supreme Court of the United States decision in Moseley
v. Victoria'sSecret Catalogue, Inc,135
Moseneke J emphasized that "in order to succeed the owner of
the mark bears the onus to demonstrate likelihood of substantial
harm or detriment which, seen within the context of the case,
amounts to unfairness."136
Moseneke J comments that the evidence that there had been material
detriment in this particular case was weak:
It is appropriate to observe that the mere
fact that the expressive act may indeed stir discomfort in some and
appear to be morally reprobate or unsavoury to others is not
ordinarily indicative of a breach of section 34(1)(c). Such a moral
or other censure is an irrelevant consideration if the expression
enjoys protection under the Constitution. Of course freedom of
expression is not boundless but may not be limited in a manner other
than authorised by the Constitution itself such as by the law of
defamation. The constitutional guarantee
of free expression is available to all under the sway of our
Constitution, even where others may deem the expression unsavoury,
unwholesome or degrading. To that extent ordinarily such meaning
should enjoy protection as fair use and should not amount to
tarnishment of the trade marks.137
His Honour comments that "in a claim under section 34 (1) (c),
a party that seeks to oust an expressive conduct protected under the
Constitution must, on the facts, establish a likelihood of
substantial economic detriment to the claimant’s mark."138
The judge stressed the need for economic and trade harm: "In
essence the protection is against detriment to the repute of the
mark; and not against the dignity but the selling magnetism of the
mark."139
The judge noted: "In an open democracy valuable expressive
acts in public ought not to be lightly trampled upon by marginal
detriment or harm unrelated to the commercial value that vests in
the mark itself."140
Considering the facts of the case, Moseneke J
commented: “There is not even the slightest suggestion that,
from the time the T-shirts saw the light of day to the date the
interdict proceedings were launched, there had been a real
possibility of a reduction of its market dominance or compromised
beer sales”.141
Sachs J agrees with the central proposition of the lead judgment -
"namely, that in the context of our country's free speech
values SAB have failed to prove the likelihood of any appreciable
detriment to the marketability of their beer."142
The judge considers the argument that
the imputation of racist labour practices in the past would tarnish
the goodwill associated with the trade mark thereby creating unfair
detriment. His Honour doubts that the sale of the T-Shirts had a
negative impact upon the image of the Carling Black Label: “There
is no proof whatsoever that imputations of racist labour practices
in the past by SAB would in any way affect the eagerness of present
day customers to down another glass of Carling Black Label”.143
The judge observed ruefully: “There is hardly an institution
in South Africa that has not in the recent period been accused of
being associated in one way or another with racist practices”.144
Indeed, the judge noted that the evidence suggested that the
small community of media-literate purchasers acquired the T-shirt
precisely because it poked fun at enterprises considered as taking
themselves too seriously: "The game in which they participated
was one of vivacious word-play, not solemn social history."145
The judge concluded: "The Laugh it Off campaign was to get
them to laugh, not to hate; and laugh, it appears, is what they
did."146
Third, the judges discussed whether the cultural content of the
Laugh It Off Promotions T-Shirt was relevant to a determination of
trade mark infringement and dilution.
Moseneke J observed that parody is a relevant factor in determining
whether the use of a work is fair within the meaning of section 34
(1) (c) but not an absolute defence to a claim of infringement of a
trade mark. He considered whether the message on the T-Shirt was an
unjustified racial slur, or a justified parody. Moseneke J
considered the competing interpretative meanings given to the
protest:
The difficult issue is whether the
interpretation of the offending message in this case yields more
than one plausible meaning. Before us the respondent argued that
like the SCA this Court must grasp the nettle and support only one
plausible meaning of the message. The applicant and the amicus argue
that the message lends itself to at least one other reasonable
meaning being that the statement is a critical but parodic comment
on the methods used by SAB to market its beer by targeting male
workers and in particular black male workers and should therefore be
protected as fair use under section 34 (1) (c) read with the
Constitution. 147
However, Moseneke J refrained from making any finding on the
question of the fair use of a trade mark under section 34 (1) (c)
and freedom of expression. His Honour observed that it was
unnecessary to consider the fairness of the parody or the satire
because "no likelihood of economic prejudice has been
established."148
The judge concluded: "It must always be
kept in mind that, unlike in the US, in our jurisprudence there are
no enclaves of protected expression such as parody or satire and
therefore the mere characterisation of an expression as such would
not be decisive of what is fair use under our anti-dilution
protection of section 34(1)(c) because ordinarily all categories of
expression, save those excluded by the Constitution itself, enjoy
constitutional shield and may be restricted only in a way
constitutionally authorised."149
By contrast, Sachs J is much more appreciative of the cultural
practices of culture jamming. Sachs J argued that the earlier
decisions had "over-emphasised the fact that the T-shirts were
sold at a profit" and at the same time "gave far too
little regard to the uniquely expressive weight of the parodic form
used".150
Sachs J notes: "At the heart of this matter lies the legal
dilemma posed by the fact that Laugh it Off utilised the SAB brand,
not adventitiously, but deliberately and precisely in order to
challenge SAB’s use of branding".151
His Honour recognised that Laugh It Off "employed
the enemy’s brand to denounce the power of branding in
general, and to confront the employment of trademark law, in our
country as elsewhere, to suppress free speech."152The
judge noted: "There is nothing in our law to suggest
that parody is a separate defence."153
Rather, in his view, it was a factor that should be considered as
an element in the overall analysis. Citing the United States Court
of Appeals decision in Dr Seuss Enterprises v. Penguin
Books,154Sachs
J observed: "Parody, like any other use, has to work its way
through the relevant factors and be judged case by case, in light of
the ends of trademark law and the free speech values of the
Constitution."155His
Honour observes that an independent observer must "say that the
harm done by the parody to the property interests of the trademark
owner outweighs the free speech interests involved."156The
judge held: "The fact that the comedian
is paid and the newspaper and T-shirts are sold, does not in itself
convert the expression involved into a mere commodity."157
He noted that Laugh It Off Promotions "chose parody as a
means, and invited young acolytes to join their gadfly laughter."158
Finally, the judges considered the relationship between
anti-dilution protection and freedom of expression.
Moseneke J emphasized that the litigation in this matter was not a
frivolous matter:
The interplay between free expression and
intellectual property in the form of trade marks is not merely
academic. It is a matter that has important and abiding
implications for the workings of our economy and is of concern to
the broader public.159
His Honour highlights the key constitutional issue at play in the
litigation: "This case brings to the fore the novel, and
rather vexed, matter of the proper interface between the guarantee
of free expression enshrined in section 16 (1) of the Constitution
and the protection of intellectual property rights attaching to
registered trade marks as envisaged by section 34 (1) (c) of the
Trade Marks Act 194 of 1993."160
The judge favoured a construction of trade mark law,
which was compatible with the right to free expression: “The
anti-dilution provision must bear a meaning which is the
least destructive of other entrenched rights and in this case free
expression rights”.161
The judge cites with approval the earlier decision in Klimax
Manufacturing Ltd v. VanResnburg162
which emphasized that the new trade mark dilution laws must be
interpreted, so “that the legitimate interests of proprietors
of well-known trade marks are protected while, at the same
time, not creating an absolute monopoly or a form of copyright in a
trade mark.”163
In his judgment, Sachs J expressed concern from a constitutional
point of view that even the threat of litigation can stifle
legitimate debate. He notes that companies have a significant power
advantage in such conflicts because of their access to wealth, the
media, and the government: “The
companies that own famous trademarks exert substantial influence
over public and political issues, making them and their marks ripe
and appropriate targets for parody and criticism.”164
Sachs J comments:
Yet when applied against non-competitor parody
artists, the tarnishment theory of trademark dilution may in
protecting the reputation of a mark’s owner, effectively act
as a defamation statute. As such it, could
serve as an over-deterrent. It could chill public discourse because
trademark law could be used to encourage prospective speakers to
engage in undue self-censorship to avoid the negative consequence of
speaking – namely, being involved in a ruinous lawsuit. The
cost could be inordinately high for an individual faced with a
lawsuit aimed at silencing a critic, not only in terms of general
litigation expenses, but also through the disruption of families and
emotional upheaval. Such protracted vexation can have the effect of
discouraging even the hardiest of souls from exercising their free
speech rights.165
Sachs J considers that constitutional law should seek to prevent the
suppression of subversive acts of laughter and humour: “The
Constitution cannot oblige the dour to laugh. It can, however,
prevent the cheerless from snuffing out the laughter of the blithe
spirits among us”.166
The judge observed that "we are obliged to interpret the law in
a manner which protects the right of bodies such as Laugh it Off to
advance subversive humour."167
His Honour noted: "The protection must be there whether the
humour is expressed by mimicry in drag, or cartooning in the press,
or the production of lampoons on T-shirts."168
Sachs J emphasized: "What has been relevant in the present
matter is that the context was one of laughter being used as a means
of challenging economic power, resisting ideological hegemony and
advancing human dignity."169
The judge concluded: "Indeed, if our society became
completely solemn because of the exercise of state power at the
behest of the worthy, not only would all irrelevant laughter be
suppressed, but temperance considerations could end up placing
beer-drinking itself in jeopardy."170
The decision of the Constitutional Court of South Africa is an
enlightened judgment on trade-mark dilution, culture jamming, and
freedom of expression. The decision provides a strong explanation of
the origins, nature, and evolution of the doctrine of trade mark
dilution. The judges emphasize, though, the need for trade mark
owners to prove the likelihood of any appreciable detriment to the
reputation of trade marks. The two judgments of the Constitutional
Court of South Africa consider the culture nature of the work of
Laugh It Off Promotions. The decision of Sachs J is superior in this
regard because it shows a particular sensitivity and understanding
of the practices of culture jamming. The
ruling of the Constitutional Court of South Africa also considers
the interplay between intellectual property and constitutional law
in a deft and elegant way. The two judgments offer a
thoughtful meditation on the how intellectual property rights should
be read in light of larger constitutional considerations about
freedom of political expression and freedom of artistic creativity.
3.4 Aftermath of the Litigation
Laugh It Off Promotions was understandably elated by the decision of
the Constitutional Court of South Africa. The t-shirt company's
founder Justin Bartlett Nurse observed: "It's cool: I feel
like Steven Gerrard [sublime Liverpool and England football player],
except without the boots".171
He conjectured: "It is an important
case, and in some respects an international legal precedent has been
set."172
In celebration of the decision, Laugh It Off Promotions auctioned
1,000 “Black Labour/ White Guilt” t-shirts off on its
website, and donated the proceeds to an anti-alcohol abuse charity.
The group has been emboldened and reinvigorated by the decision of
the Constitutional Court. Laugh It Off Promotions has released its
latest annual book under a Creative Commons licence that permits
copying and re-mixing. A partner of the company observed: "If
people want to use the work as an inspiration or a point of
departure for a new work and they give the authors credit, that’s
great." 173
The judgment of the Constitutional Court of South Africa has also
deterred and discouraged various trade mark owners from pursuing
actions for trade mark infringement and dilution against Laugh It
Off Promotions.
FXI emphasized that the decision "sends a strong message to
commercial companies in the country who attempt to trump freedom of
expression in future that the Court will speak with one voice in
rejecting the Constitutionality of such attempts."174
FXI hailed the judgment:
The ruling represents a triumph of freedom of
expression over intellectual property rights. The Court has
prioritized the right of cultural activists to engage in speech that
is critical of the pervasive power of trademarks in everyday life
over the right of SAB to protect its intellectual property; in the
process, it has opened the space for activists who engage in
'cultural jamming' - or the criticism of commercial speech through
parody - to have their activities constitutionally protected.
Trademarks such as the 'Black Label' logo are pervasive in South
African public space; they command significant public attention
given the financial resources they command to get their messages
across. It is correct that cultural activists like the Laugh it Off
team are allowed to put their parodies of these trademarks into
public space as well, and that this right should be protected.175
FXI noted that the fact that Laugh it Off gained commercially from
the sale of their T-shirt mattered little, because it had not
resulted in significant prejudice to the Black Label trade mark. It
observed: "The SAB action can only be interpreted as bully-boy
tactics trying to stamp on the rights of ordinary people, and the
FXI welcomes the fact that the Court has put them in their place."176
FXI concluded: "The judgement should hopefully ensure that
commercial companies will desist from using their financial muscle
to play corporate bullies, threatening to run those who parody the
commodification of public space out of business".177
The decision has had immediate repercussions for other South African
cases dealing with intellectual property and freedom of expression.
As a result of the decision, the South African telecommunications
carrier, Telkom, withdrew its defamation and copyright infringement
case against the creators of Hellkom, a satirical site protesting
against the high tariffs and poor service of the company [Figures 19
and 20].
In response to the decision, South African Breweries complained that
trade marks were threatened by the decision of the Constitutional
Court that a t-shirt maker has the right to mock its Carling Black
Label brand:
The decision suggests the dignity or reputation of a trademark
will not be afforded protection in itself. In other words, you can
disparage a brand as long as the sales of that brand are not likely
to be reduced. This, we believe, could be of concern to trademark
holders.
We fully support freedom of expression.
However, it has always been our view that this issue is not one that
involves genuine freedom of expression. Trade marks are important
commercial assets of a company and, like any other company, large or
small, we have an obligation to protect our trade mark rights and
brand equity and reputation.178
Perhaps the company needs to reconsider its
policy in respect of trade mark enforcement. As Jeremy Phillips
counsels, "brand owners should be taught that litigation need
not be the first step but the last course of action, after all else
fails."179
He also recommends that "brand owners have to realize that
trade mark laws have built-in mechanisms which require them to face
criticism, even if that criticism explicitly mentions the trade
marks upon which it is based."180
Indeed, it is striking that a number of trade mark owners targeted
by Laugh It Off Promotions – including such well-known
entities such as Kentucky Fried Chicken,
Shell, e-tv, Diesel, McDonald’s,181
Virgin, and National Lottery – refrained from litigation. Some
of those parties, though, have been willing to take action for trade
mark infringement in other factual circumstances and scenarios.
4. Trade mark dilution
Trade marks are often selected for their effervescent qualities,
and then injected into the stream of communication with the pressure
of a firehose by means of mass media campaigns. Where trade marks
come to carry so much communicative freight, allowing the trade mark
holder to restrict their use implicates our collective interest in
free and open communication.
Justice Alex
Kozinski182
The decision of the Constitutional
Court of South Africa in Laugh It Off Promotions v.
South African Breweries International has
attracted the odd admirer outside South Africa – particularly
for the eloquent prose of Sachs J.183However,
the decision has been thus far overlooked by superior courts in
other jurisdictions. Arguably, the ruling in Laugh It Off
Promotions v. South African Breweries International is a
persuasive precedent, which should be followed in other
jurisdictions. Katja Weckström
has observed that there is a need to take notice of decisions of
superior courts, such as the Constitutional Court of South Africa:
“Since national trademark
rules share a common source, national courts should look to prior
decisions on the issue by other courts and engage in an
international dialogue”.184
It remains to be seen whether other jurisdictions will
follow the decision of the Constitutional Court of South Africa,
especially those with weaker constitutional protections of civil and
political rights to freedom of expression. As Sachs J notes: "The
tension in modern society between the need to protect both free
speech and intellectual property... results in court decisions that
are highly fact-sensitive, and not easily transported."185
Arguably, the decision of the
Constitutional Court of South Africa in Laugh It Off
Promotions CC v. South African Breweries International could
be helpful in resolving policy disputes over trade mark dilution in
other jurisdictions. The judges in the Constitutional Court
of South Africa demonstrate a larger awareness of comparative law
dealing with trade mark dilution and parodies. Particular reference
is made to United States case law on trade mark dilution and
parodies. The Supreme Court of the United States considered the
operation of the Federal Trademark Dilution Act 1995 (US) in
Moseley v. Victoria's Secret Catalogue, Inc.186
There has been much consternation about this decision, especially
from trade mark loyalists who fear that the Bench has set the
standard of harm for trade mark dilution far too high. There has
been concern that lower courts have inconsistently applied the
principles of trade mark dilution. Certainly, there have been
conflicting outcomes and results in respect of trade mark actions
against parodists. In response to such concerns, the United States
Congress has passed the Trademark Dilution Revision Act 2006
(US). This legislation seeks to lower the standard of harm for trade
mark owners, and clarifying the meaning of key concepts; but
broadening the available defences for trade mark users. Arguably,
there is a need to subject such intellectual property rights to
constitutional scrutiny to ensure that they do not have a chilling
effect upon freedom of speech, and freedom of communication.
4.1 Trade Mark Dilution and Victoria’s
Secret Catalogue
The phrase, “trademark dilution”, was first coined by
Frank Schechter in the Harvard Law Review in 1927.187
He observed that “dilution” involved "the
gradual whittling away or dispersion of the identity and hold upon
the public mind of the mark or name by its use upon non-competing
goods".188
The magisterial treatise writer on trade mark law, J. Thomas
McCarthy, has lamented that trade mark dilution has been the source
of great confusion and misunderstanding in the judiciary, the
profession, and the academy:
No part of trademark law that I have
encountered in my forty years of teaching and practicing IP law has
created so much doctrinal puzzlement and judicial incomprehension as
the concept of ‘dilution’ as a form of intrusion on a
trademark. It is a daunting pedagogical challenge to explain even
the basic theoretical concept of dilution to students, attorneys and
judges. Few can successfully explain it without encountering stares
of incomprehension or worse, nods of understanding which mask and
conceal bewilderment and misinterpretation.189
There has been much debate about the merits of trade mark dilution.
Some commentators see trade mark dilution as an unwelcome sui
generis regime, which distorts the traditional balances laid by
trade mark law. Robert Klieger has argued that trade mark dilution
law poses an anti-competitive threat to market efficiency and
consumer welfare.190However,
others have embraced trade mark dilution as a welcome judicial and
legislative innovation. Jason Bosl and has defended the merits of
trade mark dilution: “Trade mark dilution is not only a
private concern for the trade mark owner - it also involves a
concurrent public detriment in the lessening of a relatively stable
language by which to contribute to public and cultural discourse”.191
On January 16, 1996, United States President Bill Clinton signed
into law new federal trade mark dilution laws. Section 43 (c) (1)
of the Federal Trademark Dilution Act 1995 (US) provides:
"The owner of a famous mark shall be entitled, subject to the
principles of equity and upon such terms as the court deems
reasonable, to an injunction against another person’s
commercial use in commerce of a mark or trade name, if such use
begins after the mark has become famous and causes dilution of the
distinctive quality of the mark, and to obtain such other relief as
is provided in this subsection." The legislation stipulated a
number of factors to be taken into account in such
determinations.192Section
45 provided: “The term ‘dilution’ means the
lessening of the capacity of a famous mark to identify and
distinguish goods or services, regardless of the presence or absence
of(1) competition between the owner of the famous mark and other
parties, or (2) likelihood of confusion, mistake, or deception.”
In Moseley v. Victoria's Secret Catalogue, Inc., the
Supreme Court of the United States considered a claim for trade mark
dilution by the lingerie store, Victoria's Secret, against a
Kentucky store selling lingerie under the brand "Victor's
Little Secret".193
The decision offered the bench an opportunity to rule upon the
Federal Trademark Dilution Act1995 (US).
There were a number of submissions from amicus curiae,
friends of the court. Moseley was supported in part by the United
States Government. An intellectual property professor, Malla
Pollack, contended that trade mark dilution required evidence of
actual harm because of larger constitutional concerns: “Removing
the actual harm element of the Federal Trademark Dilution Act 1995
(US) would unnecessarily multiply constitutional issues under both
the First Amendment and the Copyright and Patent Clause”.194
Victoria’s Secret Catalogue Inc. was supported by the
International Trademark Association, the American Bar Association,
the American Intellectual Property Law Association, Intellectual
Property Professors, the Intel Corporation, Ringling Bros-Barnum &
Bailey Combined Shows and various other trade mark owners.
In the course of oral argument, the parties discussed the impact of
trade mark law upon parodies. On behalf of the respondents, Moseley,
Mr Dellinger observed: “Congress... made it absolutely clear
that it wanted the safe harbors read as broadly as possible to
ensure that there was no restriction on First Amendment rights, so
the courts are warmly invited to create as large a safe harbor for
parody.”195
He observed that tarnishment had been
restricted in case law to unsavoury associations, with sex and drug
use:
People
can use the term, Victoria's Secret, for any purpose they want in
parody and commentary, on the steps of the courthouse. They just
can't make this one use of it, that is a commercial use in commerce
that lessens the capacity of that mark to carry out its function
that Congress so clearly had in mind when it passed the Federal
Trademark Dilution Act 1995 (US).196
His
suggestion was that the Moseley brand
"Victor's Little Secret" did not
constitute trade mark dilution.
In the leading opinion, Stevens J observed that the Federal
Trademark Dilution Act 1995 (US) intended "to protect
famous trademarks from subsequent uses that blur the distinctiveness
of the mark or tarnish or disparage it."197
His Honour emphasized that actual dilution had to be established,
not merely a likelihood of dilution:
The record in this case establishes that an
army officer who saw the advertisement of the opening of a store
named "Victor's Secret" did make the mental association
with "Victoria's Secret," but it also shows that he did
not therefore form any different impression of the store that his
wife and daughter had patronized. There is a complete absence of
evidence of any lessening of the capacity of the Victoria's Secret
mark to identify and distinguish goods or services sold in
Victoria's Secret stores or advertised in its catalogs. The officer
was offended by the ad, but it did not change his conception of
Victoria's Secret. His offense was directed entirely at petitioners,
not at respondents. Moreover, the expert retained by respondents had
nothing to say about the impact of petitioners' name on the strength
of respondents' mark. 198
Stevens J observed that "direct evidence of dilution such as
consumer surveys will not be necessary if actual dilution can
reliably be proven through circumstantial evidence -the obvious case
is one where the junior and senior marks are identical".199
He concluded that the evidence in the present record was
insufficient to support the summary judgment on the dilution count.
Concurring, Kennedy J provided this gloss on the meaning of trade
mark dilution: “If a mark will erode or lessen the power of
the famous mark to give customers the assurance of quality and the
full satisfaction they have in knowing they have purchased goods
bearing the famous mark, the elements of dilution may be
established”.200His
Honour concluded: "Diminishment of the famous mark’s
capacity can be shown by the probable consequences flowing from use
or adoption of the competing mark."201
4.2 Trade Mark Parodies
There has been a large amount of litigation on trade mark law and
parodies in the United States, which has attracted significant
commentary.202
In a grand overview of this field, Bruce Keller and Rebecca Tushnet
comments that there have been two major developments in the United
States law of trade mark parodies since the mid-1990s.203
First of all, the judiciary has applied the fair use test developed
in relation to copyright law and parody in the context of trade mark
law.204Second,
the courts have been forced to consider whether parodies are
diluting of trade marks in light of the new Federal Trademark
Dilution Act 1995 (US). Keller and Tushnet observe:
Parodies can be funny or offensive. What is
certain is that they are frustrating, enough so that intellectual
property owners may litigate out of a sense of wounded dignity even
when there is a strong fair use defense. Because parody
determinations are fact-intensive – and sometimes dependent on
a judge’s response to their humor or lack thereof –
predictions remain extremely difficult. We have no ready answer to
this problem; we can only suggest that the parody/ satire divide has
proved a frolic and detour ill suited to proper intellectual
property policy. Courts should take a broader view of transformation
when they address humorous (and nonhumorous) unauthorized uses of
works, marks or images.205
The authors lamented that “courts generally have responded to
parodies accused of dilution by ignoring the First Amendment value
of parodic commentary or by defining dilution narrowly rather than
by invoking Campbell-type First Amendment concerns are providing
special solicitude for parodies.”206
Some of the earlier case law is very much hostile to parodies in
trade mark law. In Dallas Cowboys Cheerleaders v. Pussycat
Cinema Ltd, the United States Court of Appeals for the Federal
Circuit granted an injunction to Dallas Cowboys against a
pornographic film, “Debbie Does Dallas”.207
The judge rejected the argument that the film constituted a parody:
“Although,
as defendants assert, the doctrine of fair use permits limited
copyright infringement for purposes of parody, defendants' use of
plaintiff's uniform hardly qualifies as parody or any other form of
fair use.”208
In San Francisco Arts and Athletics Inc. v. US
Olympic Committee, the Supreme Court of the United States upheld
the United States Olympic Committee’s rights to the words
“Olympic” and held that it could prohibit any uses of
the term “Olympic” that it found offensive – in
this case, the “Gay Olympic Games”.209
In Mutual of Omaha Insurance Co v. Novak, the court
considered the use of the trade mark of an insurance company on
T-shirts and coffee mugs to make a point about nuclear proliferation
[Figure 21].210
This use was found not to be parody because the defendant was not
commenting on the plaintiff’s trade mark or business. In
Anheuser-Busch Inc v. Balducci Publications, the court
considered a fake advertisement, in which the plaintiff’s beer
Michelob was represented as an oily product [Figure 22].211
The intended message concerned an oil spill which had no connection
with Michelob and water pollution in general. In balancing the
trademark owner’s rights against that protected under the
First Amendment, the court found that the First Amendment defence
had to yield to Michelob’s rights.
In New Kids On The Block v. News America Publishing Inc,
a boy band brought a law suit for trade mark infringement against
newspapers which used telephone polls to judge who was the most
popular member of the band. Kozinski J observed: "Most useful
social and commercial discourse would be all but impossible if
speakers were under threat of an infringement lawsuit every time
they made reference to a person, company or product using its trade
mark".212
His Honour held that, in the trade mark context, nominative use
becomes fair use when a plaintiff proves three elements: “First,
the plaintiff's product or service in question must be one not
readily identifiable without use of the trademark; second, only so
much of the mark or marks may be used as is reasonably necessary to
identify the plaintiff's product or service; and third, the user
must do nothing that would, in conjunction with the mark, suggest
sponsorship or endorsement by the trademark holder”.213
Kozinski J held that the newspapers were entitled to a nominative
fair use defence. His Honour maintained that the fact that
newspapers had used toll telephone numbers to conduct a poll did not
make the defence unavailable.
In Hormel Foods Corp. v. Jim Henson Productions Inc, Hormel,
the producers of the processed meat product Spam®
sued Jim Henson Productions for trade mark infringement and dilution
for including a pig character named Spa’am to its film Muppet
Treasure Island.214
The Court of Appeals reiterated that a parody of a strong mark is
less likely to be confusing than a parody of a weak mark. The
appellate court also noted that the Muppets were well-known for
parodies, which would increase the likelihood that viewers would
expect and get the joke.
In Dr Seuss Enterprises v. Penguin Books, the Court of
Appeals also considered whether there was a trade mark infringement
as a result of confusion in the market place as to the source of
Penguin and Dove's The Cat NOT in the Hat! Penguin and Dove
argue that their identical and confusingly similar use of Seuss'
marks was offset by the work's parodic character [Figure 23].215
The Court of Appeals noted: "In several cases, the courts have
held, in effect, that poking fun at a trademark is no joke and have
issued injunctions".216
It concluded that the "claim of parody is no defense 'where
the purpose of the similarity is to capitalize on a famous mark's
popularity for the defendant's own commercial use'".217
The Court of Appeals warned that “the
cry of ‘parody!’ does not magically fend off otherwise
legitimate claims of trademark infringement or dilution.”218
In Elvis Presley Enterprises v. Capece, the Elvis
Presley estate sued restaurant operators, alleging, inter alia, that
their service mark, "The Velvet Elvis," infringed or
diluted plaintiff's federal and common-law trade marks, and violated
its right of publicity in Elvis Presley's name.219
The Court of Appeals observed that "parody is not a defense to
trade mark infringement, but rather another factor to be considered,
which weighs against a finding of a likelihood of confusion".220
It cited the view of a treatise:
Some parodies will constitute an infringement,
some will not. But the cry of "parody!" does not magically
fend off otherwise legitimate claims of trademark infringement or
dilution. There are confusing parodies and non-confusing parodies.
All they have in common is an attempt at humor through the use of
someone else's trademark. A non-infringing parody is merely amusing,
not confusing.221
The Court of Appeals held that the district court failed to consider
impact of defendants' advertising practices on their use of the
service mark and misapplied the doctrine of parody. It found that
the plaintiff was entitled to an injunction because "The Velvet
Elvis" mark infringed the plaintiff's marks.
In
Starbucksv.Dwyer,
Kieron Dwyer was sued by Starbucks for copyright
infringement, trade mark infringement, trade mark dilution and
unfair competition.222
The cartoonist had created a parody of Starbucks’ siren logo –
which featured the tag “consumer whore”. He placed the
picture on coffee mugs, t-shirts, and stickers that he sold on his
website and at comic book conventions. The United States District
Court for Northern California held that that the corporation was
unlikely to succeed on its copyright and trade mark infringement
claims because Dwyer’s drawing was likely to be deemed a
legitimate parody. However, the court granted an injunction because
it also found that the defendant’s parody tarnished Starbucks’
image, and constituted trade mark dilution. Dwyer was asked to
remove the parody from his website. The case was ultimately settled
out of court because Dwyer was unable to afford the costs of any
appeals.
The academic Kembrew McLeod has observed that there has been a shift
in United States jurisprudence towards the protection of parodies:
The internal policies that regulate the
behaviour and output of universities, movie studios, book-publishing
houses, and other culture-producing entities have grown more
conservative and cautious in recent years. At the same time,
ironically, some American judges have increasingly been reaffirming
the value of free speech when commenting on privately owned images,
logos, or phrases. Although no tidal wave has swept across the
judicial system, washing away all overzealous trademark bozos, a few
key recent cases have established important precedents.223
The pundit cites the precedent of Mastercard v. Nader,
in which the United States District Court ruled that Ralph Nader’s
parody of MasterCard’s “Priceless” advertising
campaign in the 2000 presidential race did not constitute trade mark
infringement because it created little likelihood of consumer
confusion.224
In this matter, the District Court held “that
Ralph Nader's use of plaintiff's trademarks is not commercial, but
instead political in nature and that therefore, it is exempted from
coverage by the Federal Trademark Dilution Act 1995 (US)”.225
Since that the ruling, there has been a broad range of political
parodies – from satirical political groups, such as
“Billionaires for Bush”, to “mash-up”
Internet videos of United States Presidential candidates, such as
Hillary Clinton and Barack Obama, and even Australian politicians.226
In Mattel Inc. v. MCA Records Inc, the Ninth Circuit
considered Mattel's claim of a trade mark infringement and dilution
against the producers of a 1997 top 40 hit song by the band Aqua
entitled "Barbie Girl".227
Kozinski J characterized the facts of the case with his customary
legal wit: "If this were a sci-fi melodrama, it might be
called Speech-Zilla meets Trademark Kong".228
Kozinski J commented that trade marks can transcend their
identifying purpose and enter into the public discourse and become
part of the general vocabulary: "Once imbued with such
expressive flavour, the trademark becomes a word in our language and
assumes a role outside the bounds of trademark law". 229
His Honour emphasized that the First Amendment protects such
expressive uses of trade marks: "The trademark owner does not
have the right to control public discourse whenever the public
imbues his mark with a meaning beyond its source-identifying
function".230
Kozinski J observed: "The song does not rely on the Barbie
mark to poke fun at another subject but targets Barbie herself".231
His Honour concluded that MCA Records' use of Barbie was not an
infringement of Mattel's trademark. Kozinski J held that the use of
trade mark was not purely commercial speech, and therefore was
protected against a claim of trade mark dilution. His Honour
observed that "the song also lampoons the Barbie image and
comments humorously on the cultural values Aqua claims she
represents".232
Finally, Kozinski J dismissed a counterclaim by MCA Records for
defamation based on a representative of Mattel accusing the company
of being a "bank robber" engaged in "heist",
"crime", "theft", and "piracy". His
Honour quipped: "No one hearing this accusation understands
intellectual property owners to be saying that infringers are
nautical cutthroats with eye patches and peg legs who board galleons
to plunder cargo".233
Dismissing such terms as "rhetorical hyperbole", Kozinski
J concluded: "The parties are advised to chill".234
The decision of Kozinski J cannot be dismissed as the musings of a
maverick judge. The Supreme Court of the United States upheld the
judgment by refusing to give the company Mattel leave to appeal the
decision of the Ninth Circuit.235
More recently, in Mattel
Incv.Walking Mountain Productions, the United States
Federal Court considered a legal action brought by Mattel against an
artist who produced photographs which parodied
the lifestyle represented by Barbie dolls.236
The court considered the claims of Mattel that Forsythe was
engaged in trademark infringement [Figure 24].237
The judge cited McCarthy's opinionthat"[t]arnishment caused
merely by an editorial or artistic parody which satirizes
plaintiff's product or its image is not actionable under an
anti-dilution statute because of the free speech protections of the
First Amendment".238
His Honour dismissed the claims of Mattel: "Forsythe's
artistic and parodic work is considered noncommercial speech and,
therefore, not subject to a trademark dilution claim."239
It is striking that this large corpus of jurisprudence makes no
specific mention of the aesthetic practices of culture jamming,
notwithstanding its influence and significance. The courts instead
reduce the various cultural practices to the dialectic of legitimate
“parody” versus trade mark infringement and dilution.
There is a need for the judiciary to show a greater level of
cultural awareness, and transcend such schematic oppositions. There
is a need to enlarge the scope of protection afforded to cultural
discourse to protect a range of transformative works –
including culture jamming, “adbusting”, and “mash-ups”
– from the threat of action for trade mark infringement and
dilution.240
4.3 Trademark Dilution Revision Act 2006 (US)
The House of Representatives Subcommittee on Courts, the Internet,
and Intellectual Property held an inquiry into the operation of the
trade mark dilution laws.
The International Trademark Association lobbied the United States
Congress for a revision of trade mark dilution law. The President of
the organisation, Anne Gundelfinger, lamented that trade mark
dilution was in need of repair: “Nine years and hundreds of
cases after the Federal Trademark Dilution Act 1995 (US) was
enacted, virtually everyone—courts, litigants, commentators
alike— agree that the law is a mess”.241The
President observed: “This means more costly litigation, forum
shopping, inconsistent application of the law, and greater risk to
the ability of famous marks to function effectively as strong brands
for their owners and for American consumers.”242
In the proceedings, the American Civil Liberties Union raised the
concerns about the over-reaching impact of trade mark dilution laws
upon freedom of speech and artistic criticism. Its spokesperson,
Marvin Johnson, commented: “Trademark law provides an
important tool for preventing confusion or deceptive marketing, but
trademark laws should not be used as a pretext to stifle criticism,
parody or legitimate competition when there is no reasonable
likelihood of confusion and no actual dilution caused by use of the
trademark.”243
He illustrated his concerns with an example:
An example is Adbusters Media Foundation and
its magazine, Adbusters. This publication features advertisement
parodies, called ‘‘subvertisements,’’ which
use trademarks and corporate logos to generate awareness about
social and political issues. One issue featured “Joe Chemo,”
a parody of the “Joe Camel” character used by Camel
cigarettes, to raise awareness of the health issues surrounding
smoking. These ads represent a type of important civic speech that
is traditionally protected under the First Amendment. It makes
critical commentary on the trademark holder, furthering the
traditional goals of trademark law by informing the consumer about
the goods and services they purchase. While the speech is
predominantly civic in nature, the commercial element of selling the
magazine could well mean that the trademark holder under the Federal
Trademark Dilution Act 1995 (US) could silence its critical speech.244
He concluded: “Where, however, a trademark is used for parody,
commentary, or criticism of a product or service, confusion is far
less likely, and the government’s interest in protecting a
trademark over free speech is minimal.”245
In 2006, the United States Congress passed the Trademark
Dilution Revision Act 2006 (US).246
Republican Representative Lamar Smith explained that the
legislation “clarifies a muddied legal landscape and enables
the Federal Trademark Dilution Act 1995 (US) to operate as Congress
intended”.247
He observed that the legislation was designed to respond to, and
overturn, “a 2003 Supreme Court decision involving Victoria's
Secret ruled that the standard of harm in dilution cases is actual
harm”.248The
legislation has three main sets of legislative provisions. First
of all, the legislation overrrules the decision of the Supreme Court
of the United States, and establishes that actual harm is not a
necessary requirement; it is sufficient to demonstrate that a mere
likelihood of harm is established.249
Second, the Trademark Dilution
Revision Act 2006 (US) was intended
to resolve disputes between regional circuits have as to the
meaning of what constitutes a "famous" mark, and the
definitions of "distinctiveness," "blurring,"
and "tarnishment."250
Thus, the legislation provides further
definitions of such critical concepts.251
Finally, Smith commented that the “amendments developed
by the subcommittee and the other body will more clearly protect
traditional first amendment uses, such as parody and criticism”.252
The legislation provides that certain activities shall not be
actionable as dilution by blurring or dilution by tarnishment –
including “any fair use, including a nominative or descriptive
fair use, or facilitation of such fair use”, “all forms
of news reporting and news commentary” and “any
non-commercial use of a mark.”253
The new
legislation has been tested in a recent case. In Louis
Vuitton Malletier S.A. v. Haute
Diggity Dog,
the manufacturer of luxury handbags sued maker
of plush dog chew toys, alleging trade mark infringement, trade mark
dilution, and copyright infringement.254
The United States District Court for the Eastern District of
Virginia granted summary judgment for toy maker. The manufacturer
appealed. Niemeyer J of the Court of Appeals held: “We agree
with the district court that the “Chewy Vuiton” dog toys
are successful parodies of LVM handbags and the LVM marks and trade
dress used in connection with the marketing and sale of those
handbags”.255The
judge ruled that there is no blurring or tarnishment of the original
trade mark: “Even as Haute Diggity Dog's parody mimics the
famous mark, it communicates simultaneously that it is not the
famous mark, but is only satirizing it”.256The
judge concluded: “And because the famous mark is particularly
strong and distinctive, it becomes more likely that a parody will
not impair the distinctiveness of the mark.”257
The American Civil Liberties Union remains concerned about the
operation of the legislation, noting: “Unfortunately, courts,
in construing trademark law have often undertaken a parsimonious
parsing of the statutory language instead of applying broader
constitutional principles.”258
The organisation observes: “If the trademark holder can stop
criticism through the use of trademark law, it diminishes free
speech and impoverishes the marketplace of ideas the First Amendment
was intended to nurture.”259
In his magnum opus, Freedom of Speech, Eric Barendt has
observed that, theoretically, satire and parody should be afforded
protection under First Amendment constitutional guarantees of
freedom of speech:
Trade mark laws confer on the proprietor of a
mark an exclusive right to use a particular sign or symbol in
connection with specified commercial activities. Trade marks give
consumers information about the origin of the goods or services;
they, therefore, imply that the products are of an established
quality, and in a sense promote or advertise it. For a business to
use the trade mark of its competitor to market its own goods
misleads consumers and clearly amounts to unfair competition. Even
if such use were treated as commercial speech, its restriction would
clearly be justified. Harder free speech questions are posed by the
use of another’s trade mark for the purpose of satire or
parody. In principle, that should certainly be covered, and perhaps
protected, by a free speech provision.260
Nonetheless, in United States jurisprudence, Barendt noted that “it
seems that while free speech is often considered more important than
the privacy or dignity of individuals, it is not as important as the
ability of an organization to protect its monopoly right to use
particular words and symbols”.261There
is a need to ensure that trade mark dilution law does not stifle
forms of cultural production, such as the various strategies of
culture jamming, and new artistic forms, such as “mash-ups”.262
5. Conclusion
In the case of Laugh It Off Promotions v. South African Breweries
International, the Constitutional Court of South Africa has
provided succour for “adbusters”, culture jammers, and
the No Logo movement against claims of trade mark owners. In his
judgment, Sachs J comments upon the need for constitutional
protection of levity and humour:
A society that takes itself too seriously
risks bottling up its tensions and treating every example of
irreverence as a threat to its existence. Humour is one of the great
solvents of democracy. It permits the ambiguities and contradictions
of public life to be articulated in non-violent forms. It promotes
diversity. It enables a multitude of discontents to be expressed in
a myriad of spontaneous ways. It is an elixir of constitutional
health.263
The ruling of the Constitutional Court of South Africa provides
support for the reformation of trade mark law to provide greater
latitude for the practices of culture jamming.264
A high standard of proof should be demanded in respect of
trade mark dilution – the actual harm standard articulated by
the Supreme Court of the United States is preferable to lesser
thresholds. Graeme Austin has observed: “Smarter,
more self-critical, more engaged, less mesmerized consumers are less
likely to be easily confused”.265
Accordingly, there should also be a re-conception of consumer
impressions of “confusion”, “deception”,
“blurring” and “tarnishment”.
As Megan Richardson suggests, there is a
need to expand the range of exceptions and limitations for trade
mark law, in light of the expansion of protection for well-known and
famous trade marks.266There
is a need to particular for broad latitude to be given not only to
parody and satire, but various forms of culture jamming. The
decision in Laugh It Off Promotions v. South
African Breweries International
demonstrates the need to take into account larger constitutional
considerations about freedom of speech. The case shows a need to
carefully consider the interplay between intellectual property
rights and constitutional law.267
Furthermore, the litigation highlights the need for a change in
attitudes amongst trade mark owners and their legal advisers.
Giselle Fahimian hopes that intellectual property lawyers become “a
bit more appreciative of the importance of parody, artistic
reworking, and social commentary in shaping a diverse and creative
culture, and a bit more concerned with balancing zealous client
advocacy with respect for creativity and free speech”.268
Justin Bartlett Nurse of Laugh It Off Promotions emphasizes the
social benefits of free speech and criticism in a deliberative
democracy:
We scream a lot about free speech, because it
achieves a very simple and powerful thing: Where the half-lies of
both sides clash and burn each other out, the truth emerges from the
ashes. Without that intellectual exchange of fire, you don't even
have the beginnings of a progressive, forward-looking society. You
have mental quicksand, a group of people slowly sinking into their
own half-formed ideas of the world, because that's the only way they
know to survive. Keeping our mental channels open is the only way to
avoid that, and more people everyday are convinced that can't be
done if an emotive symbol like a brand is considered untouchable.269
It is imperative that the courts prevent trade mark owners from
relying upon trade mark dilution laws to stifle artistic expression
and freedom of speech – particularly in respect of the
creative activities of culture jamming and “adbusting”.
Figure Annex
