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Last Updated: 7 December 2004
THE SUPREME COURT OF APPEAL
OF SOUTH
AFRICA
Reportable
Case No 242/2003
In the matter between:
LAUGH IT OFF PROMOTIONS CC Appellant
and
SOUTH AFRICAN BREWERIES
INTERNATIONAL Respondent
(FINANCE) B V T/A SABMARK INTERNATIONAL
Coram: HARMS, STREICHER, NAVSA, MTHIYANE
JJA AND COMRIE AJA
Heard: 30 AUGUST 2004
Delivered: 16 SEPTEMBER 2004
Subject: Trademark infringement – Trade Marks Act 194 of 1993 s 34(1)(c) – dilution – effect on freedom of expression
J U D G M E N T
HARMS JA/
HARMS JA:
Introduction
[1] This appeal relates to trademark
infringement and more particularly infringement by way of dilution through
tarnishment. Section
34(1)(c) of the Trade Marks Act 194 of 1993 provides the
statutory basis for such a claim by stating that the rights acquired by
registration of a trade mark are infringed by –
‘(c) 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: Provided that the provisions of this paragraph shall not
apply to a trade mark referred to
in section
70 (2).’[1]
The related
question is whether or not, on the facts of this case, a finding of infringement
would impinge on the appellant’s
entrenched freedom of expression, which
is contained in s 16(1) of the Constitution, and 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.’[2]
[2] The
trademark owner (‘Sabmark’) – the respondent in this court
– is a Dutch company which forms part of
the SAB group of companies. It
holds the trade marks of the group. A local member of the group is The South
African Breweries Ltd.
It produces and sells beer and uses a series of Carling
Black Label trade marks under licence from
Sabmark.[3] It is common cause that
the name mark ‘Carling Black
Label’[4] has not been infringed
and the case concerns two marks which consist of a representation of Black Label
stickers on the neck and
body of a beer
bottle.[5] The discussion will be
limited to one of these because it is not in dispute that what applies to the
one applies to the other.
[3] The label (see the annexure to the judgment)
on the neck contains the words ‘Carling’ and ‘enjoyed by men
around
the world’, all in black uppercase type on a red background between
two golden lines. The sticker for the body of the bottle
is much larger and is
oblong. The background is red. There are also two gold lines, the upper one
containing the phrase ‘America’s
lusty, lively beer’ and the
lower one ‘Brewed in South Africa’, all in black upper case. In a
parallelogram with
a black background the words ‘Carling Black Label
Beer’ appear – ‘Carling’ and ‘beer’ in
red
typeface and ‘Black Label’ in white script.
[4] The appellant is
a close corporation and the alter ego of Mr JB Nurse. He graduated in journalism
and politics at Rhodes University
and holds a postgraduate diploma in enterprise
management. He has a special interest in the effect of trade marks and branding
on
society. The appellant, he says, is the result of the thought, research and
input of a collective of graduates and students from
Rhodes. ‘They’
are ‘conscientious objectors to niche-market selfhood and mass-market
mediocrity’ who ‘grew
up to be brand atheists’. In order to
bring this point home, the appellant markets clothing – mainly, it would
seem,
T-shirts – using well-known logos and trade marks ‘back
on’ themselves. Nurse calls it ‘ideological jujitsu’
in which
the weight of a brand is used against itself.
[5] In relation to the Black
Label neck and body mark, the jujitsu grip consists of what may be characterised
as a caricature of the
said trade mark used on T-shirts shown as an annexure. It
employs the general lay-out and colours of the registered mark. However,
the
message is different. The words ‘Black Label’ were replaced with
‘Black Labour’ and ‘Carling Beer’
with ‘White
Guilt’. The laudatory part on the label was replaced by
‘Africa’s lusty, lively exploitation
since 1652’ and ‘No
regard given worldwide’.
The litigation
[6] In the court
below the trademark owner applied for an interdict based on s 34(1)(c).
Initially the appellant raised the constitutionality
of the provision but later
abandoned it. (As will appear later, anti-dilution provisions are common in
major democracies that hold
freedom of expression in high regard.) Cleaver J
found against the appellant. He apparently accepted the submission that the
message
conveyed by the T-shirts was that SAB has in the past exploited and
continues to exploit black labour and is guilty of racial discrimination
and
that the words conjure up this country’s racist past by falsely
attributing to SAB the lusty and lively exploitation of
black labour since 1652,
the year during which the Dutch settled in the Cape. This message, he held,
established that the appellant’s
use of its caricature of the Black Label
trade mark would be likely to take unfair advantage of or be detrimental to the
distinctive
character or repute of the trade marks in question. Freedom of
expression, the learned judge held, did not justify the actions of
the appellant
because the appellant deliberately exploited the marks for commercial gain (it
is an admitted fact that it will not
be able to sell its T-shirts without using
caricatures of well-known marks) and its lampooning or parodying was not a
harmless clean
pun which merely parodies or pokes fun but bordered on hate
speech. He accordingly held that the appellant’s conduct was covered
by s
34(1)(c) and issued an interdict. (I shall revert to its terms in due course.)
[7] Cleaver J granted the necessary leave to appeal to this court. We
granted the Freedom of Expression Institute (‘FXI’)
leave to
intervene as amicus curiae and it was duly represented by counsel. As
will become apparent, the issues before us on appeal were limited. In
particular, it should
be noted, the constitutionality of s 34(1)(c) was accepted
by all.
The approach to trademark infringement
[8] Concern is
expressed from time to time about the pervasiveness of trade marks, the fact
that trademark owners tend to be voracious
and that trademark protection is not
always kept within its legitimate bounds. Nurse, in his affidavit, raises this
as a justification
for attacking well-known marks. He says, for instance, that
‘they’ (presumably he and his colleagues) are doing their
bit to
promote freedom of expression in a world where commercial expression and debate
is being crowded out in the name of the protection
of a brand. He also believes
that brands tend to control ideas and concepts. Some of this, but not all, is
hyperbole.[6]
[9] Prof David Vaver,
for one, has pointed out that intellectual property cannot be treated as an
absolute value. Its value should
be weighed up against a range of values of at
least equal importance such as the ‘right of people to imitate others, to
work,
compete, talk, and write freely, and to nurture common
cultures.’[7] This court, too,
on occasion emphasised that intellectual property rights should be confined
within their legitimate
boundaries.[8] If so confined, the
concerns expressed can be accommodated considerably.
[10] On the other hand,
and in spite of some judicial resistance in certain
quarters,[9] trade marks are property,
albeit intangible or incorporeal. The fact that property is intangible does not
make it of a lower order.[10] Our
law has always recognised incorporeals as a class of things in spite of
theoretical objections thereto.[11]
Also, simply because, as the appellant has it, trademark protection and branding
are the result and part of a ‘capitalistic’
economy does not mean
that trade marks may be disregarded by those who do not believe in such an
economy.
[11] But then again, intellectual property rights have no special
status. The Constitution does not accord them special protection
and they are
not immune to constitutional challenge. Even if constitutional, their
enforcement must be constitutionally
justifiable.[12] The problem, as
will appear later, is that the question of how far guarantees of freedom of the
media and expression affect intellectual
property rights, is, except for the
USA, somewhat virgin
territory.[13]
Anti-dilution
and trademark infringement
[12] In Beecham Group plc v Triomed (Pty)
Ltd[14] we pointed out that the
function of a trade mark, in terms of the definition in the Act, is to indicate
the origin of the goods or
services. In a footnote we quoted the European Court
of Justice where it held that the essential function of the trade mark is to
guarantee the identity of the origin of the marked product to the consumer or
end user by enabling him, without any possibility of
confusion, to distinguish
the product or service from others which have another origin.
[15]
[13] Beecham also pointed
out that the protection granted to a trade mark by s 34(1) and its secondary
commercial functions extend beyond the
‘badge of origin’ concept.
Section 34(1)(c) in particular is not concerned with either origin or confusion.
It protects
the economic value of a trade mark, more particularly its reputation
and its advertising value or selling
power.[16] As summed up by Tony
Martino:[17]
‘A trademark
is a “creative ‘silent salesman’” stimulating sales by
creating goodwill and assuring buyers
that all goods bearing the same mark have
the same quality. “The mark actually sells the goods”; the
more distinctive the mark, the greater its selling
power.’[18]
[14] The
anti-dilution doctrine can be traced to German jurisprudence but was first
formulated with a measure of precision by Frank
I
Scheckter.[19] What Scheckter
principally had in mind was dilution by means of blurring of a trade mark when
used on non-competing goods. He gave
the example of the blurring of Rolls-Royce
if the mark were to be used for restaurants, cafeterias, pants or candy. A
modern German
example is the use of the trade mark Dimple for whiskey in
relation to cosmetics.[20]
[15] The instant case is, however, not concerned with blurring but rather
with tarnishment. FW Mostert[21]
quotes another German case to illustrate: the owner of the well-known perfume
‘4711’ was able to interdict a sewer company
from using the number
on a malodorous tank truck even though the number only formed part of its
telephone number. Courts in different
jurisdictions have come to similar
conclusions on similar facts in this regard. For instance, the use of the
American Express charge
card and the slogan ‘Don’t leave home
without it’ in relation to condoms was not acceptable to a US
court.[22] In Germany, the Federal
Supreme Court found that the use of the confectionary trade mark Mars and its
slogan that it will liven you
up in relation to a gag item consisting of a
condom, tarnished Mars.[23] And in
England an attempt to register Visa as a trade mark, also in relation to
condoms, was dismissed on the same
ground.[24]
[16] In the USA some
states adopted anti-dilution statutes, the first being Massachusetts in
1949.[25] The problem is that these
laws are not in identical terms. As far a the federal position is concerned,
Congress in 1995 amended
s 43 of the Trademark Act of 1946 (the Lanham Act) to
provide a remedy for the dilution of famous
marks.[26] That amendment, the
Federal Trademark Dilution Act (FTDA), provides that –
‘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.’
FDTA describes the factors that determine whether a mark
is ‘distinctive and famous,’ and defines ‘dilution’
as
‘the lessening of the capacity of a famous mark to identify and
distinguish goods or services.’ It sets out a number
of specific defences
namely fair use of a famous mark by another person in comparative commercial
advertising or promotion to identify
the competing goods or services of the
owner of the famous mark; non-commercial use of a mark; and all forms of news
reporting and
news commentary.
[17] A European Community
directive[27] provides in relation
to trademark infringement, inter alia, as follows in art
5:
‘2. Any Member State may also provide that the
proprietor shall be entitled to prevent all third parties not having his consent
from using in the course of trade any sign which is identical with, or similar
to, the trade mark in relation to goods or services
which are not similar to
those for which the trade mark is registered, where the latter has a reputation
in the Member State and
where use of that sign without due cause takes unfair
advantage of, or is detrimental to, the distinctive character or the repute
of
the trade mark.’
‘5. Paragraphs 1 to 4 shall not affect
provisions in any Member State relating to the protection against the use of a
sign other
than for the purposes of distinguishing goods or services, where use
of that sign without due cause takes unfair advantage of, or
is detrimental to,
the distinctive character or the repute of the trade mark.’
[18] This
led to a White Paper on the ‘Reform of Trade Mark Law’, 1990 in the
United Kingdom. The subsequent UK Trade
Marks Act 1994 (ch 26) deals with the
issue in s 10(3):
‘A person infringes a registered trade mark if he
uses in the course of trade a sign which –
(a) is identical with or similar to the trade mark, and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered,
where the trade mark has a
reputation in the United Kingdom and the use of the sign, being without due
cause, takes unfair advantage
of, or is detrimental to, the distinctive
character or the repute of the trade mark.’
(According to the
‘Memorandum on the Objects of the Draft Trade Marks Bill’ an object
of our current Act, was to harmonise
our law with that of the European
Community, taking into account the said White
Paper.)[28]
[19] 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. The different statutory setting of all these cases must always be kept
in mind. It is also
not suggested that the outcome in those cases would
necessarily have been the same had the case been decided under our legislation
and in our social context.
Interpreting s 34(1)(c)
[20] This
provision has arisen but parenthetically in our case
law.[29] At first blush its meaning
is clear. In order to establish infringement, the owner of the trade mark must
establish:
(a) the unauthorized use by the defendant of a mark
(b) in the course of trade
(c) in relation to any goods or services
(d) the mark must be identical or similar to a registered trade mark,
(e) the trade mark must be well known in the Republic, and
(f) the use of the defendant’s mark would be likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the registered trade mark.
As mentioned, the defendant’s
use need not be in relation to similar goods or services and the
liability is not dependent on confusion or deception.
[21] Nothing as far as
interpretation is concerned turns on integers (a) to (e), but (f) on the other
hand requires some elucidation.
It must, obviously, be interpreted in the light
of the Constitution and its application must be such that it does not unduly
restrict
a party’s freedom of
expression.[30] This requires a
weighing-up of the freedom of expression and the trademark owner’s rights
of property and freedom of trade,
occupation or profession.
[22] In the
ordinary course of events acts proscribed by the provision will not impinge on a
defendant’s freedom of expression
but since there are instances where it
may, some limitation should be found or implied in the provision or in its
application insofar
as it may be required by a balancing of divergent rights and
interests. The express terms of s 34(1)(c) do place important limitations
on its
scope. First, it provides protection to well-known marks
only.[31] Second, the prohibited use
must be ‘in the course of trade’. This accords for instance with the
position in the USA[32] and the EC.
And then, significantly, the use must be in relation to goods or
services.[33] Integer (f) contains
an important limitation namely that a defendant may not take ‘unfair
advantage’ of the distinctive
character or repute of the trade mark
– according to Mostert something akin to misappropriation or unjust
enrichment.[34] This allows for a
proper balancing of freedoms, rights and interests.
[23] The word
‘detrimental’ is not qualified in express terms. However, it is
inconceivable that any detriment could suffice and it is implicit that
detriment, in order to be actionable, has to be unfair in the sense that the
relief
sought may not unfairly or unduly encroach on the rights of others
– including the freedom of expression. There is another
qualification: The
law, as a general proposition, concerns itself with matters of substance only
and, accordingly, insubstantial
prejudice to the trademark owner is not
enough.[35] Since neither freedom of
expression nor trademark rights are absolute, it will be necessary to consider
how they should be balanced.[36]
Before doing that it is necessary to consider whether the appellant has
otherwise infringed the trade marks in issue.
Infringement
[24] It
is common cause that integers (a) to (e) have been established and all that
remains is whether the use by the appellant of
its Black Labour White Guilt mark
would be likely to take unfair advantage of, or be detrimental to, the
distinctive character or
the repute of the Black Label mark. That depends,
amongst other things, on its message, which is a matter of interpretation
through
the eyes not only of the typical purchaser of such T-shirt but also
through the eyes of those who are perforce exposed to the purchaser’s
attire.
[25] Sabmark submitted that the message conveyed is that since time
immemorial SAB has exploited and still is exploiting black labour
and that it
has or should have a feeling of guilt and that SAB worldwide could not care
less. That is more or less in accordance
with the finding of the court below.
Counsel for both the appellant and for FXI had some difficulty in explaining
what the message
was. Initially appellant’s counsel asked us to ignore
Nurse’s evidence that the intention was to satirise the mark and
to find
that the T-shirt says nothing about SAB but says something in general about
whites having exploited black labour. In reply
he retracted and adopted
FXI’s submission which was that it is a complex message which criticises
the methods used by SAB to
market its beer by targeting black workers. It should
be emphasised that the appellant accepts that it has no ground for attacking
the
employment practices of SAB. Nowhere on the papers is any case made out of the
exploitation of black labour. On the contrary,
in a radio interview shortly
after proceedings were instituted, Nurse said that ‘it’s obviously
not a statement about
SAB and their labour practices’. What Nurse
intended is not the issue, it is what he in fact said or did. I have only
referred
to this evidence in order to indicate that the appellant does not rely
on a defence akin to truth and public interest or fair comment
in the law of
defamation.[37]
[26] I find the
interpretation contended for by counsel for the appellant and for FXI strained
to say the least and that the interpretation
contended for by Sabmark to be
evidently the correct one. That leads to the next question namely whether a
T-shirt with such a message
is substantially detrimental to the repute of the
marks (I shall return to deal with ‘unfairly’ in due course).
Sabmark
submits that the impression created and left in the mind of the public
that SAB has always been and still is guilty of exploiting
its black labour
will, in the light of the history of the country, in all likelihood be seriously
damaging to its trade marks. Appellant’s
counsel did not attempt to meet
the point head-on because it could not be met. It would be fair to pose the
question whether the
message is not likely to create in the mind of consumers a
particularly unwholesome, unsavoury, or degrading association with
Sabmark’s
marks.[38] The
answer must be yes. Otherwise put, will anyone who has seen the
appellant’s T-shirt be able thereafter to disassociate
it from
Sabmark’s trade marks?[39] The
answer must be no.
[27] The appellant attempted to find the answer to the
question of detriment to repute elsewhere. It contends that SAB has not
established
that there has been a loss of sales as a result of the
appellant’s T-shirt sales but on the other hand it accepts that s 34(1)(c)
does not require proof of actual loss but only the likelihood of
loss.[40] It then contends that
because the appellant is a small concern with relatively limited sales there can
be no detriment to the trade
marks but counsel simultaneously recognised that
the size of an infringing operation is never relevant in determining
infringement.
There was also a refrain about the need to establish irreparable
harm for a permanent interdict. Quite a novel proposition.
[28] I therefore
find that the message on the T-shirt is materially detrimental to the repute of
the trade marks concerned. This leaves
for consideration the freedom of
expression justification.
Freedom of
expression[41]
[29] 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.’[42]
[30] It is
important to note what s 34(1)(c) does not forbid and the extent to which it
does not impinge on freedom of expression.
The appellant is free to use its
caricature in the course of trade subject to a proviso: it may not use it in
relation to goods or
services. The appellant may use it in relation to goods or
services by placing the caricature on T-shirts, flags or whatever provided
it is
not so used in the course of trade. That is more or less why Canadian courts
have found that the caricature of an employer’s
trade marks by a trade
union during a labour dispute does not amount to trademark
infringement.[43] The appellant may
declaim the message about black labour and white guilt from rooftops, pulpits
and political platforms; and it may
place the same words (without appropriating
the registered mark’s repute) on T-shirts, and sell them. In other words,
its freedom
of expression is hardly affected. A Canadian court has held that
freedom of expression is not at all affected if the appellant is
able to say
what it wants to say in another
manner.[44] US courts have also held
that trade marks need not yield to First Amendment rights under circumstances
where adequate alternative
avenues of communication
exist.[45] Whether these statements
are correct in absolute terms one need not decide since it suffices to say that
the availability of adequate
alternative avenues is a relevant factor to
consider in this context.
[31] Returning to the fact that trade marks are
property: Some courts have held that the freedom of expression does not entitle
a
party to damage private
property.[46] No-one would suggest
that painting graffiti on private property (or even public property) is not an
abuse of free speech. Why should
it be different simply because the property is
a trade mark? That is not to suggest that puns and the like are not countenanced
or
that trademark owners’ over-sensitivity should be humoured. However,
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.[47] 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. The whole point about reputation is that, like
sanity, it operates
as a working assumption – to question it is, in
itself, to devalue it.[48]
[32] Another factor to be taken into account is the predatory intent of the
defendant.[49] T-shirts are
primarily a marketable commodity and not only a communication medium. It is not
the appellant’s case that they
were used in this case otherwise than in
the course of trade. It is also not the appellant’s case that the mark was
not used
in relation to goods. On the contrary, the appellant is in the business
of marketing clothing. Using well-known marks for the marketing
of its goods is
the whole basis of the appellant’s commercial existence.
[33] Purely
derisory ‘parody’ of a mark should also not be entitled to
protection.[50] In this regard
defamation principles may be of assistance and matters such as truth, public
interest and fair comment may play a
role in determining whether the use of a
caricature is justified. That is a reason why the nature of the message conveyed
by the
T-shirt is important.
Parody
[34] Appellant and FXI submitted that the message was a
parody of Sabmark’s trade marks and, as such, entitled to freedom of
expression protection. In this regard much reliance was placed on American
jurisprudence, more often than not on copyright cases.
It is necessary to place
all this in a proper perspective.
[35] The leading case on copyright parody
in the USA is the judgment of the Supreme Court in Campbell v Acuff-Rose
Music Inc.[51] It concerned the
question whether a song which parodied Roy Orbison's song, ‘Oh, Pretty
Woman,’ may be a fair use within
the meaning of the US Copyright
Act.[52] The ‘fair use’
of a copyright work for purposes of criticism or comment is in terms of the
statute not infringing use.
To determine whether parody falls within the meaning
of ‘criticism’ the court defined ‘parody’ and it did
so
in these terms:
‘The germ of parody lies in the definition of the Greek parodeia, quoted in Judge Nelson's Court of Appeals dissent, as "a song sung alongside another." 972 F.2d, at 1440, quoting 7 Encyclopaedia Britannica 768 (15th ed. 1975). Modern dictionaries accordingly describe a parody as a "literary or artistic work that imitates the characteristic style of an author or a work for comic effect or ridicule," or as a "composition in prose or verse in which the characteristic turns of thought and phrase in an author or class of authors are imitated in such a way as to make them appear ridiculous." For the purposes of copyright law, the nub of the definitions, and the heart of any parodist's claim to quote from existing material, is the use of some elements of a prior author's composition to create a new one that, at least in part, comments on that author's works. If, on the contrary, the commentary has no critical bearing on the substance or style of the original composition, which the alleged infringer merely uses to get attention or to avoid the drudgery in working up something fresh, the claim to fairness in borrowing from another's work diminishes accordingly (if it does not vanish), and other factors, like the extent of its commerciality, loom larger. Parody needs to mimic an original to make its point, and so has some claim to use the creation of its victim's (or collective victims') imagination, whereas satire can stand on its own two feet and so requires justification for the very act of borrowing.’[53]
[36] A finding that an allegedly infringing work is a parody does, however, not conclusively establish that its use of the senior work was fair. In order to determine whether ‘use’ constitutes fair use all relevant factors have to be taken into account, including those specifically listed in the US statute. One such factor is the purpose and character of the use. For example, as Campbell makes clear, the use of a copyright work to advertise a product, even in parody, is treated with less indulgence than the sale of the parody itself. (In Canada, on the other hand, parody is not regarded as fair use of a copyright work[54] and there is no indication that the position in the UK is any different.) Satire, on the other hand, differs from parody since it does not comment on the senior work and can, therefore, not be considered to be a comment or criticism of the copyright work.[55] Even then, as a literary critic said –
‘a satirical intention, however sincerely felt, does not supersede the requirements of ordinary decency.’[56]
Mr Nurse, who should know, ironically enough, described his use as satire and
not as parody. Mr Welz, 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.[57] And as
counsel for FXI accepted during argument, some of the appellant’s other
caricatures can be classified as parody and
others not.
[37] As in the case
of copyright infringement, parody cannot per se be a defence against
trademark infringement in terms of s 34(1)(c). It is nevertheless a factor like
the other factors mentioned
above that has to be considered in determining
whether a defendant’s use of a mark contrary to the provisions of s
34(1)(c)
is constitutionally
protected.[58] A good example of
fair parody is to be found in the judgment of the Paris Tribunal de Grand
Instance in Greenpeace France v
Esso.[59] Greenpeace used,
instead of the trade mark ESSO, the mark E$$O in a context in which it
criticised Esso’s ecological record.
The court found that to be
permissible because Greenpeace should be able to, in its writings or on its
internet site, denounce, as
it considers appropriate to the goal pursued, the
environmental impacts and human health risks caused by certain of Esso’s
industrial activities. The court pointed out that this freedom is not absolute
and it can be subject to the restrictions necessary
for the protection of the
rights of others. Although the mark E$$O refers to Esso’s trademark,
Greenpeace did not aim to promote
its products or service commercially but used
E$$O for polemical purposes. This underscores the view that parody in France is
not
a per se trade mark defence but that the exception of parody appears
to be allowed in relation to trade marks provided, inter alia, that the
parody was not made for commercial purposes and does not overstep the limits of
parody.[60]
[38] Another
illustration is the recent decision in Mattel Inc v Walking Mountain
Productions.[61] The defendant
produced artistic photographs which parodied the lifestyle represented by Barbie
dolls. The court dismissed the dilution
claim on the ground that tarnishment
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 protection provided by the First
Amendment.[62]
[39] On the other hand, in Mutual of Omaha Insurance Co v
Novak,[63] the defendant, who
was protesting nuclear proliferation, used the trade mark of an insurance
company to make his point on T-shirts
and coffee mugs. 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[64] the defendant
placed a fake advertisement, which it thought humorous, in which the
plaintiff’s beer Michelob was represented
as an oily product. The intended
message concerned an oil spill which had no connection with Michelob and water
pollution in general.
No other justification was proffered for the damaging
implication that Michelob contained oil. 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.
[40] German law appears to be similar. According to Nicola Dagg and
Emma Alanko[65] –
‘German legal protection against dilution is subject to the condition that it is "without due cause". In applying this provision, German courts attempt to strike a balance between the interests of the trade mark owner and - most usually - the constitutionally protected right to free expression. In striking this balance, German courts have considered:
1. Use of the slogan "Bild Dir keine Meinung" (do not form your own opinion), which alluded to the advertising slogan "Bild Dir Deine Meinung" (form your own opinion) of the well-known tabloid paper Bild (which is also the German word for "picture" and "to form"). This was held to be a critical expression with regard to the quality of the Bild newspaper, which did not amount to an infringement.
2. Use of the word Mordoro (Mord = murder) in a mock advertisement for Marlboro cigarettes which was included in a non-smokers calendar. This was held not to infringe the Marlboro trade mark because it was protected by the constitutional right to freedom of expression.
On the other hand, the use of the expression Deutsche Pest was held to be an infringement of the mark Deutsche Post because it did not contain a specific criticism of the German post office, but merely amounted to a mindless denigration of the post office.’
[41] It follows from this analysis that the appellant’s reliance on
parody as a defence is 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. Such use
and detriment is unfair and constitutes an infringement
of the said provision. The appellant’s reliance on the freedom of
expression
is misplaced. It did not exercise its freedom, it abused
it.
Order
[42] The order issued by the court below was formulated
in terms too wide. It does not limit the interdict to use in the course of
trade
or on use in relation to goods or services as required by s 34(1)(c). It
included the trade mark ‘Carling Black Label’
within its scope
although not infringed by the appellant. Restraining not only the appellant but
also its servants and agents was
unnecessary and extending the order beyond the
infringing mark to ‘any other mark’ was wrong. However, these
aspects
were not issues in the appeal and do not affect costs of appeal. The
appeal stands to be dismissed subject to the indicated changes
to the
order.
[42] The following order issues:
(a) Save as indicated in para (b), the appeal is dismissed with costs, including the costs of two counsel.
(b) The order of the court below is amended to read:
‘The respondent is interdicted from infringing registered trade marks 91/9236 and 91/9237 of the applicant by using in the course of trade and in relation to goods or services the mark depicted in annexure A7. The respondent is to pay the costs of the application, including the costs of two counsel.’
_______________________
L T C HARMS
JUDGE OF
APPEAL
AGREE:
Streicher JA
Navsa JA
Mthiyane JA
Comrie
AJA
[1] The proviso plays no role in the case.
[2] The proviso of ss (2) does also
not arise. It reads:
‘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.’
[3] In what follows no
clear distinction is drawn between SAB and the companies in the
group.
[4] TM
1979/03675.
[5] The marks are
1991/09236 and 1991/09237 registered in class 32 (schedule 3) in relation to
beer, ale and porter.
[6] Cf
First National Bank of SA Ltd v Barclays Bank plc 2003 (4) SA 337 (SCA)
para 10.
[7] ‘Canada’s
intellectual property framework: A comparative overview’ 17
Intellectual Property Journal 125 at 187-188. See the trenchant comments
of Kozinski J in White v Samsung Electronics America 989 F2d 1512
(1993).
[8] Cadbury (Pty) Ltd v
Beacon Sweets & Chocolates (Pty) Ltd
2000 (2) SA 771 (SCA) quoting Wagamama Ltd v City Centre
Restaurants Plc [1995] FSR 713 (Ch D)
728–729.
[9] Eg the minority
judgment in Mutual of Omaha Insurance Co v Novak 836 F2d 397
405-406.
[10] Ladbroke
(Football) Ltd v. William Hill (Football) Ltd [1964] 1 WLR. 273 (HL)
291.
[11] Cf MV Snow Delta :
Serva Ship Ltd v Discount Tonnage Ltd 2000 (4) SA 746 (SCA) para
9.
[12] Cf in general Thomas B
Nachbar ‘Intellectual property and constitutional norms’ [104] 2004
Columbia LR 272.
[13] As
to Canada: David Vaver Intellectual Property Law (1997) 19. More
generally Christine Steiner ‘Intellectual property and the right to
culture’ in Intellectual Property and Human Rights (1998), the
proceedings of a panel discussion published by World Intellectual Property
Organisation and the Office of the UN High
Commissioner for Human
Rights.
[14] 2003 (3) SA 639
(SCA).
[15] Canon Kabushiki
Kaisha v Metro-Goldwyn-Mayer Inc [1999] RPC 117 (ECJ) par
28.
[16] National Brands Ltd v
Blue Lion Manufacturing (Pty) Ltd 2001 (3) SA 563 (SCA) para 11; Webster
& Page SA Law of Trade Marks (loose-leaf ed) para 12.24 and the
authorities there quoted especially BR Rutherford ‘Misappropriation of the
advertising value
of trade marks, trade names and service marks’ in J
Neethling (ed) Onregmatige Mededinging/Unlawful Competition (1990); P
Ginsburg ‘Trade-mark dilution’ in Coenraad Visser The New Law of
Trade Marks and Designs (1995). In the German Mars case – see
below – reference was made to a promotional advertising right (Case I ZR
79/92, 1995 [26] IIC 282). FW Mostert,
in his doctoral thesis, spoke of the
‘reg op die reklamebeeld’: Grondslae van die reg op die
reklamebeeld (Rand Afrikaans University
1985).
[17] Trademark
Dilution (1996) 25. Further at p 72 et
seq.
[18] References
omitted.
[19] ‘The Rational
Basis of Trade Mark Protection’ [1927] 40 Harvard Law Review
813.’
[20] GRUR 1985 (7)
550. The judgment is quoted and discussed in Premier Brands UK Ltd v Typhoon
Europe Ltd [2000] FSR 767 (Ch)
786.
[21] Famous and
Well-Known Marks (1 ed) 59-60; (2 ed)
1-103.
[22] American Express
Co v Vibra Approved Laboratories Corp 10 USPQ 2d 2006 (SDNY
1989).
[23] Case I ZR 79/92, 1995
[26] IIC 282.
[24] A Sheimer
(M) SDN BHD’s Trade Mark Application [2000] RPC 13 (p
484).
[25] Tony Martino ch 6.
Canada has an anti-dilution provision in s 22 of its Trade Marks Act but it is
said to be poorly drawn and that
it does its job equally poor: David Vaver
‘Need intellectual property be everywhere? Against ubiquity and
uniformity’
2002 [25] Dalhousie LJ 1 at 20. The Australian Trade
Marks Act 1995 s 120 does not have a similar
provision.
[26] The detail can be
found in Moseley dba Victor’s Little Secret v V Secret Catalogue
Inc 123 S Ct 1115; 65 USPQ 2d
1801.
[27] First Council
Directive 89/1988 of the Council of the European Communities ‘To
approximate the laws of the Member States relating
to trade marks’. To be
found at David Kitchin et al Kerly’s Law of Trade Marks and Trade
Names (13 ed) 1017.
[28]
Notice 808 of 1991 GG 13482 of 30 August
1991.
[29] Bata Ltd v Face
Fashions CC 2001 (1) SA 844 (SCA); Triomed (Pty) Ltd v Beecham Group
plc 2001 (2) SA 522 (T) 554H-557J; National Brands Ltd v Blue Lion
Manufacturing (Pty) Ltd 2001 (3) SA 563 (SCA) para 11; Klimax
Manufacturing Ltd v Van Rensburg [2004] 2 All SA 301
(O).
[30] On the value of the
freedom of expression: S v Mamabolo (E TV and others intervening) 2001
(3) SA 409 (CC) esp para 72; Islamic Unity Convention v Independent
Broadcasting Authority 2002 (4) SA 294 (CC) para 25 et
seq.
[31] As to the importance of
this qualification: FW Mostert Famous and well-known marks (2 ed)
1-97.
[32] On commercial speech
in the USA cf Sanette Nel ‘Freedom of commercial speech: evaluating the
ban on advertising of legal products
such as tobacco’ XXXVII CILSA
65 68 (2004).
[33] Cf LL Bean
Inc v Drake Publishers Inc 811 F2d 26 (1987): a parodic article in a
magazine was held not to infringe the senior
mark.
[34] FW Mostert Famous
and well-known marks (2 ed)
1-115.
[35] Cf Pfizer Ltd and
Pfizer Inc v Eurofood Link (UK) Ltd [2000] ETMR 896 (Ch) para 37. A mere
conjuring up of the trade mark is not enough: cf Cliffs Notes Inc v Bantam
Doubleday Dell Publishing Group Inc 886 F 2d 491 496
(1989).
[36] Ashdown v
Telegraph Group Ltd [2002] RPC 5 (CA) 235 at 242-243, [2001] EWCA Civ 1142;
Levi Strauss & Co v Tesco Stores Ltd [2003] RPC 18 (Ch) at 336;
Rogers v Grimaldi 875 F 2d 994 (1989)..
[37] Cf Khumalo v
Holomisa 2002 (5) SA 401 (CC) para 21 et seq. In his affidavit Nurse raised
a large number of serious social and political issues but these have nothing to
do with the issues in this case. Neither the appellant’s nor FXI’s
counsel relied on any of those matters.
[38] Cf Mutual of Omaha Insurance Company v Novak 648 F Supp 905; 231 USPQ 963 upheld on appeal: Mutual of Omaha Insurance Company v Novak 836 F2d 397.
[39] Cf Dallas Cowboys
Cheerleaders Inc v Pussycat Cinema Ltd 604 F2d
200.
[40] The position is
different in the UK: DaimlerChrysler AG v Javid Alavi (t/a Merc) [2001]
RPC 22 at p 842 and under US federal law: Moseley dba Victor’s Little
Secret v V Secret Catalogue Inc 123 S Ct 1115; 65 USPQ 2d
1801.
[41] FW Mostert Famous
and well-known marks (2 ed) 1-122 for a discussion of the free speech
defence.
[42] All the trouble
in the world.
[43] Compagnie Générale des Établissements Michelin"Michelin & Cie v National Automobile, Aerospace, Transportation and General Workers Union of Canada (CAW-Canada) (T.D.) [1997] 2 F.C. 306; Rotisseries St- Hubert LTEE v Le Syndicat des Travailleurs (EUSES) de la Rotisseries St- Hubert de Drummondville (CSN) 17 CPR (3d) 461.
[44] Compagnie
Générale des Établissements Michelin"Michelin & Cie
v National Automobile, Aerospace, Transportation and General Workers
Union of Canada (CAW-Canada) (T.D.); Mutual of Omaha Insurance Co v
Novak 836 F2d 397
(1987).
[45] Dallas Cowboys
Cheerleaders Inc v Pussycat Cinema Ltd 604 F2d 200
206.
[46] Eg Compagnie
Générale des Établissements Michelin"Michelin & Cie
v National Automobile, Aerospace, Transportation and General Workers
Union of Canada (CAW-Canada) (T.D.); Mutual of Omaha Insurance Co v
Novak.
[47] Tony Martino
Trademark Dilution
60-62.
[48] An adaptation of a
statement about status by Fintan O’Toole A Traitor’s Kiss
71.
[49] Tony Martino
Trademark Dilution
61-62.
[50] Gucci Shops Inc v
RH Macy’s Co 446 F Supp 838 (1977); Anheuser-Busch Inc v Balducci
Publications 28 F3d 769
(1994).
[51] 510 US 569; 29 USPQ
2d 1961.
[52] (1976) 17 U.S.C.
107.
[53] References have
generally been omitted.
[54]
Compagnie Générale des Établissements Michelin"Michelin
& Cie v National Automobile, Aerospace, Transportation and General
Workers Union of Canada (CAW-Canada) (T.D.) [1997] 2 F.C.
306.
[55] See in general: Dr
Seuss Enterprises LP v Penguin Books USA Inc 109 F3d 1394 (1997); Rogers
v Koons 960 F 2d 301 (1992); Suntrust Bank v Houghton Mifflin Co
268 F 3d 1257. In a recent Dutch case the court did not consider that
parodying Russian society justified the copyright infringement
of Harry Potter
books: Ilanah Simon ‘Parodies: A touch of magic’ [2004] European
Intellectual Property Review
185.
[56] Clive James The
Dreaming Swimmer 117.
[57]
The fact that a work is a parody may indicate that it is not a copy of the
senior work, only that it used the idea of the senior
work: Joy Music Ltd v
Sunday Pictorial Newspapers (1920) Ltd [1960] 1 All ER 703 (QBD) 708 but
that is another issue altogether. It is seems to be related to the
transformative test
for determining fair use: Cf Pierre N Leval ‘Toward a
fair use standard’ [103] Harvard LR 1105 and the response by Lloyd
L Weinreb ‘Fair’s fair: a comment on the fair use doctrine’
[103] Harvard LR
1137.
[58] Anheuser-Busch Inc
v Balducci Publications 28 F3d 769 (1994). In the US parody is often used to
answer the question whether there is a likelihood of confusion: Hard Rock
Café Licensing Corp v Pacific Graphics 776 F Supp 1454 (1991).
[59] 26 February 2003 General
index registration number: 2002/16307, 2002/17820.
[60] Olivier Bancheraeu in an
Intellectual Property newsletter at
http://www.lovells.com.
[61] US
Court of Appeals for the 9th Circuit. Reference not yet
available.
[62] Cf LL Bean Inc
v Drake Publishers Inc 811 F2d 26 (1987) and, in another statutory context:
Lighthawk, Environmental Air Force v Robertson 812 F Supp 1095, 25 USPQ
2d 2014
[63] 836 F 2d 397
402.
[64] 28 F3d 769
(1994).
[65] ‘Defining the
limits of parody’ in Managing Intellectual Property July/August
2004.
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