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[2005] ZACC 7
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Laugh It Off Promotions CC v South African Breweries International (Finance) BV t/a Sabmark International and Another (CCT42/04) [2005] ZACC 7; 2006 (1) SA 144 (CC); 2005 (8) BCLR 743 (CC); 2005 BIP 201 (CC) (27 May 2005)

Links to summary

CONSTITUTIONAL
COURT OF SOUTH AFRICA
Case CCT
42/04
LAUGH IT OFF
PROMOTIONS CC Applicant
versus
SOUTH AFRICAN
BREWERIES INTERNATIONAL
(FINANCE) B.V. t/a
SABMARK INTERNATIONAL Respondent
and
FREEDOM OF EXPRESSION
INSTITUTE Amicus Curiae
Heard on : 8 March
2005
Decided on : 27 May
2005
JUDGMENT
MOSENEKE J:
Introduction
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)
1
of the Constitution and the protection of intellectual property
rights attaching to registered trade marks as envisaged by section
34(1)(c)
2
of the Trade Marks Act 194 of 1993 (the Act) and consequently to
related marketing brands. The issue confronts us in the context
of
an application for leave to appeal against the whole of the
judgment and order of the Supreme Court of Appeal (SCA).
3
The SCA upheld the decision but amended the final interdict
granted against the applicant by the Cape High Court (High Court).
4
In its essence, the interdict prohibits the applicant from
infringing specified registered trade marks of the respondent by
using them without permission and in the course of trading
T-shirts.
The free
expression right conferred by section 16 of the Constitution is
couched in the following words:
“
16 Freedom of expression.–
(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.
(2) 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.”
On the other
hand, the protection of intellectual property contemplated in
section 34(1)(c) takes the form of a prohibition against
dilution
and in particular against blurring or tarnishment of a registered
trade mark. The section reads as follows:
“
34 Infringement of
registered trade mark.–
(1) The rights acquired by
registration of a trade mark shall be 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).”
5
Parties
The applicant
is Laugh It Off Promotions CC, a close corporation that occupies
itself with the appropriation of brands which inhere
in well-known
trade marks. This it does by altering the images and words on
trade marks and printing them onto T-shirts. The
applicant sells
the T-shirts for profit in order to make social comment. The
applicant was respondent in the interdict proceedings
before the
High Court and appellant in the SCA.
The respondent
is South African Breweries International (Finance) B.V. t/a Sabmark
International (now known as SABMiller Finance
B.V.) (SABMiller), a
company registered in Rotterdam in the Netherlands. The respondent
is the holder and owner of the registered
trade marks in issue.
The respondent approached the High Court as applicant.
The Freedom of
Expression Institute (FXI or amicus) has been admitted as an
amicus. FXI is a not for profit non-governmental
organisation
which pursues the principal objects of advancing freedom of
expression in South Africa and resisting censorship.
FXI was
admitted as amicus before the SCA.
Factual
Background
The material
facts of this case are undisputed and may be rendered briefly.
Besides being a trader largely of alcoholic and also
of
non-alcoholic beverages, the respondent holds, manages, maintains
and controls the use of a range of trade marks throughout
the
world. With effect from 31 December 1997, the respondent acquired
ownership of three South African registered trade marks
from a
company known as Sabmark International Inc. They are CARLING BLACK
LABEL trade marks in class 32.
6
Here follows a graphic representation of the trade marks and of
their challenged use on the T-shirts of the applicant.
Trade Mark No. 1979/03675:
Trade Mark No.
1991/09236:
Trade Mark No.
1991/09237:
Laugh
It Off T-shirt:
A domestic company
known as South African Breweries Ltd (SAB) is using the trade
marks, with the permission of the respondent.
SAB manufactures,
distributes, exports and sells alcoholic and other products,
particularly beer, under the CARLING BLACK LABEL
marks.
The respondent
and SAB tell us that the marks have become well-known and are used
extensively across South Africa in relation
to beer sales. In fact
Black Label beer has been sold in this country through a variety of
trade outlets, from shebeens to mega-wholesalers,
for over 30
years. The label and get-up of the beer were selected because they
have a very strong visual impact; something which,
we are told,
compliments the beer rather well. The product’s reputation has
progressed to become one of the leading beer products
in the
country. The volume of sales of Black Label beer for the 2000/2001
financial year is said to have exceeded 1.4 billion
340ml bottles.
This, we are assured, translates to 350 bottles of 340ml for every
man, woman and child of all 40 million of
us in this country. SAB
points out that these excellent beer sales volumes are owed to the
Black Label brand whose market popularity
derives from costly,
concerted and pervasive advertising in the form of sport
sponsorships, television, radio, print media, coasters,
posters,
flags, T-shirts, billboards and advertising on taxis.
At the end of
November 2001, the respondent came to know that the applicant had
produced and was offering for sale to the public
T-shirts, which
bore a print that was markedly similar, in lettering, colour scheme
and background, to that of the respondent’s
CARLING BLACK LABEL
trade marks. The only real difference was in the wording. The
words “Black Label” on the respondent’s
registered trade
marks were replaced, on the T-shirt, with “Black Labour”; the
respondent’s “Carling Beer” was substituted
with “White
Guilt”; and where written “America’s lusty lively beer” and
“enjoyed by men around the world”, the
applicant had printed
“Africa’s lusty lively exploitation since 1652” and “No
regard given worldwide”, respectively.
The marketing
of the T-shirts with the offending marks took the form of
advertising on the Internet. The applicant’s website
points to
two objectives of its enterprise. The one is to create a close
association with well-recognised branded materials
and the other is
to make fun of them. It is clear from the website that the
applicant’s effort was not limited to the respondent’s
marks.
It had been marketing T-shirts using at least eleven other brands.
However, no other brand holder has litigated against
it on grounds
similar to the present. These well-known brands include Coca-Cola,
Kentucky Fried Chicken, Shell, e-tv, Standard
Bank, Diesel,
McDonald’s, Virgin, National Lottery and Lego. Relying on
legislation regulating counterfeit goods,
7
seemingly Standard Bank made an unsuccessful attempt to confiscate
T-shirts produced by the applicant and carrying comment on
that
bank.
The respondent
was less than amused by the applicant’s conduct. During January
and again in February 2002 it dispatched letters
of demand calling
on the applicant to desist from using the trade marks. The demand
elicited neither compliance nor a substantive
response. Litigation
ensued.
In
the High Court
The respondent
approached the High Court for an interdict on the ground that the
unauthorised use of its registered trade marks
by the applicant in
the course of trade offended the anti-dilution provisions of
section 34(1)(c). The applicant resisted the
relief sought,
contending that its use of the trade marks had not infringed the
section inasmuch as the likelihood of detriment
to the reputation
of the marks had not been established and that, in any event, it
was exercising freedom of expression entrenched
in section 16(1) of
the Constitution.
The pith of
the applicant’s contention on free expression is that, properly
construed, section 34(1)(c) does not oust its constitutional
right
to comment on, lampoon or make fun of any trade mark and its
associated brand. Brands, the applicant asserts, are often
put to
work by powerful corporations to crowd out equally legitimate
expression. They tend to stifle the open and free flow
of ideas.
Brand building, the applicant argues, sets out to occupy cultural
space, social space and even one’s own “headspace”.
Since,
in time, marketing brands graduate to cultural icons, they should
not be beyond the reach of public disclaim or indeed
applause. The
purpose of copyright and trade mark laws in an open and democratic
society is not to shut out critical expression
or to throttle
artistic and other expressive acts in a manner that gives way to
inordinate brand sway.
The sole
member of the applicant, Mr. Justin Bartlett Nurse, explains that
he has grown to become a “brand atheist”; he is
intolerant of
brand sanctity and mass-market mediocrity. That, he says, explains
the applicant’s election to make and sell
T-shirts that display a
message of “social satire or parody”. To that end the
applicant employs what he calls “ideological
jujitsu”. The
brand is pitted against its own weight and popularity. The
technique entails using well-known, registered trade
marks of large
corporations, slightly altered but still recognisable as an
adaptation of the original brand. The purpose, the
applicant
explains, is to lampoon the brands; to make a statement about the
company’s policies or practices; 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.
The High Court
was unimpressed by the stance adopted by the applicant. It took
the view that the message on the T-shirts carried
a likelihood of
material detriment to the distinctive character or repute of the
marks. The court considered it not open to
the applicant to raise
the defence of free expression because the applicant exploited the
marks for gain. The court found that
the applicant’s use of the
marks was not mere parody that pokes fun at the trade marks. It is
rather publication which borders
on hate speech because it invokes
the race factor, something that our Constitution and our new
democracy are at pains to eschew.
The court concluded that the use
of the marks by the applicant manifests an intention to be hurtful
or harmful to the respondent
because it is premised on race, ethnic
or social origin and colour.
The High Court
upheld the respondent’s claim and granted with costs the
restraint order sought. Aggrieved by the decision,
the applicant
sought and was granted leave by that court to appeal to the SCA.
In
the SCA
The SCA dismissed the appeal on several grounds. At the outset,
the court recognised the concern often expressed about the

pervasiveness and ascendancy of trade marks.
8
It acknowledged that protection of trade marks has not always been
kept within its legitimate bounds and that the right to

intellectual property is not absolute but rather a value which must
be weighed against other values of arguably equal importance,
such
as the right to work, create, compete, talk, write and imitate
freely.
9
However, the court noted that the protection of trade marks is of
importance and that despite a measure of what it calls judicial
reluctance their status is that of property albeit incorporeal.
10
Even so, the court rightly observed, like other property
intellectual property does not enjoy special status under the
Constitution.
11
It is not immune from challenge and therefore its enforcement must
be constitutionally tenable.
12
The SCA
correctly held that section 34(1)(c) must be construed in the light
of the Constitution and applied in a manner that does
not unduly
trample upon freedom of expression. This approach would
necessitate the weighing-up of the constitutional safeguard
of free
expression of the unauthorised user against the right to
intellectual property of the trade mark owner and where appropriate
the owner’s freedoms of trade, occupation or profession. To this
I return later.
The court held
that in its express terms the section places important internal
constraints on its scope in order to avoid unduly
trampling upon
the freedom of expression of others. The language of the section
requires the defendant not to take “unfair
advantage” of the
distinctive character or repute of the trade mark. The advantage
that is proscribed is an unfair one. In
this way the section
anticipates the proper balancing of rights of others. Freedom of
expression is one such right. By the
same logic the court held
that the detriment proscribed must be substantial or material.
Flimsy or negligible prejudice would
not suffice.
Turning to the
merits of the infringement complaint, the SCA held that whether the
message of “black labour white guilt” inscribed
on the T-shirts
carries a likelihood of material detriment to the distinctive
character or repute of the Black Label marks comes
down to
interpretation. The meaning of the message must be assessed
through the eyes of the typical purchaser of the T-shirt
and of
others who are exposed to the purchaser’s attire. The respondent
had advanced the contention that the message is capable
of only one
reasonable meaning and urged its adoption. The amicus argued that
the T-shirt bore a complex expression, capable
of more than one
reasonable meaning. One such meaning, the amicus contended, is
that the message is critical of the methods
used by SAB to market
and to sell beer mainly to black workers. The court rejected the
contention of the amicus and instead
found the meaning advanced by
the respondent to be evidently correct. That meaning is that since
time immemorial SAB had exploited
and still is exploiting black
labour, that it has and should have a feeling of guilt and that SAB
worldwide could not care less.
The court
found that the expression on the T-shirt is substantially
detrimental to the repute of the marks; that it is likely
to create
in the minds of consumers a “particularly unwholesome, unsavoury,
or degrading association” with the marks because
it is an
“unfair” and “unjustified racial slur” on the trade mark
owner. The court found that the message questions
the reputation
of the marks and by that very act has unfairly and materially
tarnished the marks.
In argument
before the SCA the applicant had readily conceded that section
34(1)(c) did not require proof by the owner of the
marks of actual
loss but only the likelihood of loss. Even so, the applicant
argued, the claimant had to establish the likelihood
of detriment
to the repute of the marks. It had to show on the facts a
probability of serious trade harm or loss. On this argument,
in
the present case, the claimant had to show the likelihood of
unsavoury association by consumers with the mark or a likely
decline in sales of Black Label beer as a sequel to the sale of
T-shirts. The court dismissed this submission on the ground
that
proof of actual loss is not a requirement under the section. In
similar fashion, the court also disposed of the argument
that
because the applicant is a small concern with relatively minuscule
sales, there can be no detriment to the brand.
Having found
that the applicant’s conduct had infringed the trade marks, the
SCA turned to the applicant’s contention that
its right to
freedom of expression is a complete answer to a claim under section
34(1)(c). The court found that the section
does not forbid the use
of caricature in the course of trade, subject to it not being
utilised in relation to goods or services,
and provided further
that if it is used in relation to goods and services it is not used
in the course of trade. The court found
that the applicant is free
to express an identical message about “black labour” and “white
guilt” through other media
without appropriating the repute of
the registered marks onto T-shirts in order to sell them. In sum,
the court concluded that
the applicant’s freedom of expression
was hardly limited as there were adequate alternative avenues
available to it.
The court
found that the applicant is not exercising the right to free
expression but rather harbours a “predatory intent”
because the
T-shirts are primarily marketable commodities and not only a medium
of expression. It noted that the using of well-known
marks for the
marketing of its goods is the whole basis of the applicant’s
existence.
In the last instance the SCA considered the applicant’s defence
that the use of the marks amounts to parody and is therefore
permissible as fair use. The court observed that a favourable
finding that an infringing work is parody does not by that reason
only render the use of the senior work fair use.
13
It noted that, in balancing rights and interests of parties
concerned, a court has to take into account all relevant
considerations
listed in the section, amongst these being the
purpose and character of the use. The court held that the
applicant’s reliance
on parody is misconceived because its work
does not comment on the senior work; instead it abuses freedom of
expression. It
concluded that the unauthorised use of the marks is
not saved by the free expression guarantee. It is thus an
infringement of
the trade marks and impermissible under section
34(1)(c) of the Act.
Procedural
matters
It is now
convenient to get out of the way three preliminary matters of a
procedural kind. They are the application for leave
to appeal to
this Court, the respondent’s contention on mootness and the
application of the amicus for the admission of new
evidence.
Leave
to appeal
The applicant
seeks, on several grounds, leave to appeal against the decision of
the SCA. The applicant urges that the issues
before us are
important constitutional matters, which ought to be heard by this
Court. They engage the proper construction of
the intellectual
property protection found in section 34(1)(c) in the light of
section 39(2) of the Constitution
14
and of the constitutional guarantee of free expression. None of
the parties was heard to contend otherwise. We are indeed seized
with constitutional issues of considerable private and public
moment. Moreover, it cannot be said that no reasonable prospect
exists that this Court might materially alter the decision sought
to be appealed against. All relevant considerations weighed,
15
it is manifestly in the interests of justice for this Court to hear
the appeal.
Mootness
In
supplementary grounds of opposition, the respondent submits that
this matter has become academic in that there is no longer
a live
dispute between the parties.
16
This it says because, in other court proceedings between the same
parties, Mr. Nurse, on behalf of the applicant, has made an
affidavit stating that the applicant no longer conducts trade, has
become dormant and has since ceased producing the T-shirts
that
gave rise to the initial offence.
Mr. Nurse
admits the contents of the affidavit in issue. However, he refutes
the assertion that the dispute has become moot.
He explains that
the applicant ceased trading only because of the interdict
proceedings initiated in the High Court against
it. Should this
appeal succeed, he says, the applicant would probably resume
trading. Besides, the applicant argues, the matter
is one of
considerable public importance and ought to be heard and decided.
It can hardly
be gainsaid that a decision by this Court on the issues at hand
would be of importance to both litigants. Both
seek to assert
rights conferred directly or implicitly by our Constitution.
Should the applicant succeed in the appeal, it would
be in a
position to resume its business that is presently dormant only by
reason of present proceedings. Similarly, should the
respondent
succeed in its contention, its rights would be ascertained and
possibly vindicated. More importantly, the constitutional
issue,
which falls to be decided, has a bearing well beyond the litigants
before us. 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.
The dispute has not become moot and, in any event,
it is clearly in
the interests of justice to decide the matter.
New
evidence
Before the
hearing of the appeal the amicus gave notice, in terms of rule 31
of the rules of this Court,
17
of its intention to rely on factual material that does not appear
on the record. The amicus says that the material, consisting
of 15
pages of “brand photos and facts”, is incontrovertible. All
but three pages are said to emanate from SAB or its website
and the
balance from the website of its advertising agent. The contents of
the pages are presented as evidence of the manner
in which SAB
depicts and describes its brands and in particular how it has
positioned the CARLING BLACK LABEL brand in the market
place. A
few of the pages placed before us relate to promotional material on
Amstel Lager beer.
The respondent
opposes the admission of the evidence on the grounds that in some
respects it is irrelevant and in others controvertible.
However,
the difficulty is that, barring this bland assertion, the
respondent does not say which part of the material is refutable
and
why. In its answering affidavit on this application, the
respondent does not deny the accuracy or authenticity of the

documents, which are said to depict the manner in which the Black
Label brand is currently marketed in South Africa. Nor does
it
suggest that since May 2002, being the date of the publications,
there had been any material change to the marketing positioning
of
the CARLING BLACK LABEL brand. At the hearing, the respondent was
unable to point to the respects in which the material was
refutable.
I am inclined
to agree with the respondent that all the material relating to
Amstel Lager beer should not be admitted, as it is
irrelevant to
the present dispute. However, the balance of the brand and
marketing material on the Black Label marks and brand
use is both
relevant and incontrovertible and is admitted into the record.
The purpose and
scope of anti-dilution protection under section 34(1)(c)
The essential elements of an infringement of a trade mark under
section 34(1)(c) are hardly obscure. They are readily discernible
from the text:
18
(a) unauthorised use by the defendant of a mark identical or
similar to the registered mark;
(b) in the course of trade in relation to goods or services;
(c) the registered trade mark must be well-known in the Republic;
and
(d) the use of the trade mark would be likely to take unfair
advantage of, or be detrimental to the distinctive character or

repute of the registered trade mark.
Before the SCA
and in this Court the applicant conceded that the respondent had
established the requirements for an infringement
as set out in
subparagraphs (a) to (c) above. However, the disjunctive elements
of a likelihood of taking unfair advantage of,
or being detrimental
to, the distinctive character or repute of the marks remained in
contention. The SCA made no finding on
the element of taking
unfair advantage of the distinctive character of the marks but
rather disposed of the dispute on the restricted
footing that the
offending publication was detrimental to the repute of the
registered marks. In the result, the merits of the
appeal before
us resolve themselves into whether the respondent had properly
demonstrated the likelihood of detriment to the
repute of the marks
as required by the section. This compels a construction of section
34(1)(c).
With the
advent of overhauled trade mark legislation,
19
section 34(1)(c) introduced a new species of trade mark
infringement commonly known as dilution.
20
As we have seen earlier,
21
the section prohibits unauthorised use in the course of trade of a
mark which is similar to a well-known registered trade mark
if the
use of the mark would be likely to take unfair advantage of, or be
detrimental to the distinctiveness or repute of a registered
trade
mark.
22
Provisions
virtually identical in text and substance to our section 34(1)(c)
are found in article 5(2) of the European Directive
23
and section 10(3) of the 1994 United Kingdom Act.
24
However there is an important difference. The corresponding
European Community and United Kingdom (UK) provisions require proof
of
actual
detriment or unfair advantage.
25
Our section requires a
likelihood
of unfair advantage or
detriment. Despite the difference I have drawn attention to, UK
decided cases provide a useful starting
point in our understanding
of the terms of our section 34 (1)(c).
It
is now expedient to ascertain the purpose of the section. The
rationale for the protection of well-known marks envisaged in
the
section appears in the following observations by Rutherford.
26
“
The preservation of the
reputation and unique identity of the trade mark and the selling
power which it evokes is of vital importance
to the trade mark
proprietor in order to protect and retain his goodwill. . . . The
proprietor of the trade mark usually expends
vast sums of money
through advertising in order to build up the reputation and selling
power or advertising value of his trade
mark. The growth of his
business is dependant upon the growth of the meaning and importance
of his trade mark. It is therefore
only fair that he should be
entitled to protect this valuable asset against misappropriation.
. . . .
It has been argued that the
protection of trade marks against dilution amounts to the creation
of a monopoly in the trade mark.
However, this argument ignores the
nature of the subject matter which is protected. It is not the mark
per se
which is protected but the advertising value or
selling power of the trade mark which may be the result of its
inherent uniqueness,
but is usually the result of an extensive
advertising effort.”
27
[footnotes omitted]
In
National Brands Ltd v Blue Lion Manufacturing (Pty) Ltd
28
the SCA had occasion to identify the purpose of the newly
introduced trade mark prohibition under section 34(1)(c) as being:
“
to
protect the commercial value that attaches to the reputation of a
trade mark, rather than its capacity to distinguish goods
or
services of the proprietor from those of others . . . That being
so, the nature of the goods or services in relation to which
the
offending mark is used is immaterial, and it is also immaterial
that the offending mark does not confuse or deceive.”
29
Courts in the UK and Europe have considered the purpose of similar
anti blurring protections in their jurisdictions. For instance
in
Premier Brands UK Ltd v Typhoon Europe Ltd
30
the following was said of the provisions of section 10(3) of the UK
Act:
“
[T]he owner of . . . a
distinctive mark has a legitimate interest in continuing to maintain
the position of exclusivity he acquired
through large expenditures
of time and money and that everything which could impair the
originality and distinctive character of
his distinctive mark, as
well as the advertising effectiveness derived from its uniqueness,
is to be avoided . . . Its basic purpose
is not to prevent any form
of confusion but to protect an acquired asset”.
31
Another instructive dictum is to be found in the decision of
Pfizer
Ltd and Pfizer Incorporated v Eurofood Link (United Kingdom) Ltd
32
where the following was stated:
“
The concept of ‘unfair
advantage’ requires an enquiry into the benefit to be gained by
the defendant from the use of the mark
complained of and the concept
of ‘detriment’ requires an enquiry into the goodwill accruing to
the business in the goods sold
under the trade mark. The advantage
or detriment must be of a sufficiently significant degree to warrant
restraining what is,
ex hypothesi
, a non confusing use.”
33
Clearly, in
our case too section 34(1)(c) serves a vital purpose in preserving
trade and commercial interests of owners of trade
marks which have
a reputation. This it does by prohibiting use which, although it
may not confuse or deceive, materially undermines
the repute of
well renowned trade marks ordinarily harnessed to sell goods and
services. The protection must be seen to extend
beyond the
traditional and primary function of a trade mark, which is to
signify the origin of goods and services on offer.
Rather, the
section aims at more than safeguarding a product’s “badge of
origin”
34
or its “source-denoting function”.
35
The section strives to protect the unique identity and reputation
of a registered trade mark. Both of these attributes underpin
the
economic value that resides in the mark’s advertising prowess or
selling power. As it is often said the mark sells the
goods and
therefore its positive image or consumer appeal must be saved from
ruin.
36
When one
considers the origins of the anti-dilution doctrine in the law of
trade marks,
37
it appears that its initial target was to avoid blurring. But the
law has advanced to include protection of a trade mark against
tarnishment.
38
I should now explain that the dilution of a trade mark appears to
occur in two ways, by blurring or by tarnishment.
39
Blurring takes place when the distinctive character or inherent
uniqueness of the trade mark is weakened or reduced. Tarnishment
occurs where unfavourable associations are created between a
well-known registered trade mark and the mark of the unauthorised
user. In a case of tarnishment, the object of the protection
appears to be the repute, the good selling name of the mark.
40
The SCA
rightly found that the instant case is concerned, not with
blurring, but with tarnishment of the CARLING BLACK LABEL marks.

This appears clearly so because the source of the respondent’s
disquiet is the offending use of its marks, in relation to
non-competing goods, and yet in a manner that creates unfavourable
associations and unsavoury connections, which carry the likelihood
of tarnishing the repute of its marks.
Anti-dilution
protection and free expression
It is trite
that under our constitutional democracy, the requirements of the
section ought to be understood through the prism
of the
Constitution and specifically that of the free expression
guarantee.
41
The SCA too correctly recognised that a construction of the
section is subject to the dictates of the Constitution and that
its
application must not unduly restrict a party’s freedom of
expression. However, in deciding the merits of the infringement
claim it opted for a two-stage approach. In the first enquiry the
court held that the message on the T-shirts amounts to an
infringement because it is unfair and materially harmful to the
repute of the trade marks. Only thereafter did the court enquire
into and found that freedom of expression does not afford
justification for the infringement. This approach appears to be

premised on the reasoning that one must first find an infringement
under the section and only thereafter determine whether the
infringement is excused by an assertion of freedom of expression.
This approach is flawed.
A finding of
unfair use or likelihood of detriment to the repute of the marks
hinges on whether the offending expression is protected
under
section 16(1) of the Constitution or not. If the expression is
constitutionally protected, what is unfair or detrimental,
or not,
in the context of section 34(1)(c) must then be mediated against
the competing claim for free expression. By determining
the
unfairness and detriment anteriorly, the SCA in effect precluded
itself from properly taking into account the free expression
guarantee claimed by the alleged infringer. The two-stage approach
advocated by the SCA in effect prevents an understanding
of the
internal requirements of the section through the lens of the
Constitution. The injunction to construe statutes consistent
with
the Constitution means that, where reasonably possible, the court
is obliged to promote the rights entrenched by it.
42
In this case the SCA was obliged to balance out the interests of
the owner of the marks against the claim of free expression
for the
very purpose of determining what is unfair and materially harmful
to the marks. It is to that task that I now turn.
I have intimated earlier that section 34(1)(c) falls to be
construed bearing in mind the entrenched free expression right
under
section 16.
43
The importance of freedom of expression has been articulated and
underscored by this
44
and other
45
courts in this country and indeed in other open democracies
46
and by its inclusion in international law instruments.
47
Suffice it to repeat that freedom of expression is a vital
incidence of dignity, equal worth and freedom.
48
It carries its own inherent worth and serves a collection of other
intertwined constitutional ends in an open and democratic
society.
Of it Mokgoro
J says
49
it should not be understood in isolation:
“
[B]ut
as part of a web of mutually supporting rights enumerated in the
Constitution, including the right to ‘freedom of conscience,
religion, thought, belief and opinion’, the right to privacy, and
the right to dignity. Ultimately, all of these rights together
may
be conceived as underpinning an entitlement to participate in an
ongoing process of communicative interaction that is of both
instrumental and intrinsic value.”
50
[footnotes omitted]
In
similar vein O’Regan J points out
51
that:
“
These
rights taken together protect the rights of individuals not only
individually to form and express opinions, of whatever nature,
but
to establish associations and groups of like-minded people to foster
and propagate such opinions. The rights implicitly recognise
the
importance, both for a democratic society and for individuals
personally, of the ability to form and express opinions, whether
individually or collectively, even where those views are
controversial. The corollary of the freedom of expression and its
related
rights is tolerance by society of different views.
Tolerance, of course, does not require approbation of a particular
view. In
essence, it requires the acceptance of the public airing
of disagreements and the refusal to silence unpopular views.”
52
We are obliged
to delineate the bounds of the constitutional guarantee of free
expression generously.
53
Section 16 is in two parts: the first subsection sets out
expression protected under the Constitution. It indeed has an
expansive
reach which encompasses freedom of the press and other
media, freedom to receive or impart information or ideas, freedom
of artistic
creativity, academic freedom and freedom of scientific
research. The second part contains three categories of expression
which
are expressly excluded from constitutional protection. It
follows clearly that unless an expressive act is excluded by
section
16(2) it is protected expression.
54
Plainly, the right to free expression in our Constitution is
neither paramount over other guaranteed rights nor limitless.
As
Kriegler J in
S v Mamabolo
puts it:
55
“With us it is not a pre-eminent freedom ranking above all
others. It is not even an unqualified right.” In appropriate
circumstances authorised by the Constitution itself, a law of
general application may limit freedom of expression.
It is so that
the anti-dilution prohibition under section 34(1)(c) seeks, in
effect, to oust certain expressive conduct in relation
to
registered marks with repute. It thus limits the right to free
expression embodied in at least section 16(1)(a) to (c) of
the
Constitution. We are however not seized with the adjudication of
the constitutional validity of the section. We must assume
without
deciding that the limitation is reasonable and justifiable in an
open and democratic society to which our Constitution
is committed.
That in turn impels us to a construction of section 34(1)(c) most
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.
The reach of the statutory prohibition must be curtailed to the
least intrusive means necessary to achieve
the purpose of the
section. Courts must be astute not to convert the anti-dilution
safeguard of renowned trade marks usually
controlled by powerful
financial interests into a monopoly adverse to other claims of
expressive conduct of at least equal cogency
and worth in our
broader society.
56
I agree with
the SCA that properly read the section requires that an
infringement of a trade mark may occur only if “unfair
advantage”
or “unfair detriment” is shown. Equally clear is that the
detriment relied upon must not be flimsy or negligible.
It must be
substantial in the sense that it is likely to cause substantial
harm to the uniqueness and repute of the marks.
Therefore, on its
terms the section has internal limitations. It sets fairness and
materiality standards. The section does
not limit use that takes
fair advantage of the mark or that does not threaten substantial
harm to the repute of the mark, or
indeed that may lead to harm but
in a fair manner. What is fair will have to be assessed case by
case with due regard to the
factual matrix and other context of the
case. A court will have to weigh carefully the competing interests
of the owner of the
mark against the claim of free expression of a
user without permission.
The exercise
calls for an evaluation of the importance of the purpose, nature,
extent and impact of the limitation of free expression
invoked
against claims of unfair advantage or of likelihood of material
detriment to a registered mark. In sum, 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. What remains is to settle the content
of the substantial detriment the section envisages.
Likelihood of
detriment
Before us the
applicant strenuously persisted in the contention that the
respondent had not adduced facts to show that the offending
use of
its marks would be likely to be hurtful, in the economic and trade
sense, to the repute of the marks. The respondent
accepts,
correctly so in my view, that, seen through the lens of the
Constitution, the likely prejudice or detriment required
by the
section must be restricted to material harm in the commercial
sense. The respondent, however, refutes the assertion that
there
is no evidence to demonstrate the probability of economic harm and
argues, in its words, that “the likelihood of suffering
economic
harm as a consequence of the offending use is self-evident”. The
respondent elaborates that no right thinking South
African would
wish to be associated with the racially insensitive message
conveyed by the applicant on the T-shirts. The racial
slur, it
submits, is likely to erode the exclusiveness of the mark,
discourage people from purchasing the respondent’s Black
Label
Beer and adversely curtail SAB’s opportunities to sponsor
domestic sport.
In
Bata
Ltd
57
the appellant, relying on section 34(1)(c) claimed that its trade
mark registration had been infringed by the use of specified
words
and motivated the averment by simply rehashing the text of the
section. In a unanimous decision, the SCA rightly held
that:
“
The aforesaid statement is
merely a repetition of the section. It amounts to nothing more than
a conclusion of law. No particulars
were furnished of the respects
in which the use of the mark would be likely to take unfair
advantage of or be detrimental to the
distinctive character or
repute of the appellant’s trade marks. In the absence of evidence
to support the contention put forward
in the affidavit it is in this
case not possible to hold that requirement (b)(3) was established.
On this point, too, the appellant
cannot succeed.”
58
In
Triomed
59
the court had to adjudicate a claim that the capacity of a
well-known registered mark to stimulate the desire to buy was being
tarnished by its unauthorised use by the defendant. The mark
related to a well-known antibiotic. The court examined
considerable
evidence on the market and dispensers of antibiotics
such as doctors and pharmacies and concluded that generic
equivalents complained
of would not be tarnishing or detrimental to
the mark and therefore that no infringement under section 34(1)(c)
had been shown.
It is clear
that even without reference to the dictates of the Constitution our
courts rightly tend to determine likelihood of
detriment to the
selling appeal of a mark in the light of established facts and not
bald allegations. However, in the present
case, the SCA dismissed
this contention of the applicant out of hand and on the narrow
basis that section 34(1)(c) does not require
proof of actual loss
but only the likelihood of loss. Unlike the position in the UK,
60
European Union
61
and under the United States (US) federal law,
62
it is so that section 34(1)(c) does not require actual loss but its
likelihood. In other words, it requires a probability of
the
occurrence of material loss. The SCA and the High Court appear to
have approached the likelihood of detriment on the footing
that the
message on the T-shirts would probably create in the minds of
consumers a particularly unwholesome, unsavoury and degrading
association difficult to detach from the reputation of the
respondent’s marks. But the difficulty is that ordinarily
probability
is a matter of inference to be made from facts
consistent with the inference. No such facts have been pleaded.
In my view,
the inference of material detriment made by the SCA hinges solely
on the meaning it has attached to the impugned publication
on the
T-shirts. Even accepting that meaning, as evidence it is at best
scant and unconvincing as an indicator of substantial
economic harm
to the respondent’s marks. 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.
63
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.
I hold 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. There is indeed much
to be said for the
contention that, in a claim based on tarnishment of a trade mark,
the probability of material detriment to
the mark envisaged in the
section must be restricted to 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. 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.
In the
respondent’s depositions there are no facts which deal with
probability of trade or commercial harm. Its attitude is
that the
likelihood of harm is self evident. I simply do not agree. In my
view, if anything the facts suggest otherwise. What
is clear is
that over decades the CARLING BLACK LABEL marks have and still
enjoy considerable recognition and renown in our land.
The marks
make up a leading, in-the-face, beer brand selling billions of
litres of beer nation-wide. 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. Nor is there evidence of
the likelihood of
future commercial detriment. The number of T-shirts produced and
sold or viewed by the public is unknown but
is at best truly
negligible. On the applicant’s version only a few hundred
T-shirts were sold. For instance there are no
facts on sales
beyond a coterie of media students and activists. I am unable to
agree with the SCA that the reach of the offending
use is
irrelevant. In the context of a tarnishment claim, it is important
in understanding likely harm relative to the selling
power and
popularity of the mark in question.
In contrast,
SAB has deposed graphically to its awesome marketing machinery
bolstered by impressive advertising spend on every
conceivable
medium including artefacts and, not least, T-shirts. Even
accepting that the racial slur may be unsavoury there
is no
evidence that it has or is likely to attach to or tarnish the
selling power of the mark. It is plain from the record that
no
evidence, direct or inferential, was adduced to establish
likelihood of detriment either in the sense of unfavourable
associations
that have been created between the registered marks
and the illustration on the T-shirts, or in the context of a
likelihood of
loss of sales by virtue of the reduced commercial
magnetism of the mark. In theory and in live trade there is a
direct link
between the mark and sales. As it is often said, the
mark actually sells the goods and it is the acquired asset that the
section
seeks to protect from tarnishment.
In effect we
are invited to find a probability of material economic detriment to
the respondent’s marks of well-entrenched repute
on conjecture
alone. We must decline the invitation. It follows that the claim
of the respondent for a final interdict against
the applicant must
falter.
Interpretation
of the message on the T-shirts and fair use arguments
The SCA found
the interpretation of the message on the T-shirts contended for by
the respondent to be “evidently the correct
one”. The meaning,
it held, must be discerned through the eyes of those confronted by
the T-shirt. The amicus urged us to
depart from the test
formulated by the SCA because it is inadequate to resolve disputes
where competing interpretations of complex
or controversial
messages of, say, a political, social or artistic nature are at
stake. The amicus contended for the test to
be whether the meaning
is one for which a reasonable lay person might contend. Our case
law on the section appears to require
a court to consider the
impression created to a “notional customer of average
intelligence, viewing the marks as a whole or
looking at the
dominant features of each mark”.
64
Both the
respondent and amicus argued that for the purpose of determining
whether an infringement has occurred under section 34(1)(c)
a court
is required to enter the interpretive fray of giving meaning to the
offending expression. As we have seen, the SCA adopted
the meaning
of the message on the T-shirts advanced by the respondent. But it
thought the interpretation advanced by the amicus
to be complex and
strained. 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.
On its
approach, the SCA found that in this matter, the constitutional
freedom of expression was no justification for the unauthorised
use
of trade marks because the applicant used the message on the
T-shirts in relation to goods or services and in the course
of
trade. It found that the T-shirts are marketable goods and not
only a medium of communication and therefore the message does
not
deserve constitutional protection. The amicus however draws our
attention to the clear duality of the roles of the T-shirts
– to
sell and to make a social statement. It is the expressive role,
the amicus argues, which engages the constitutional protection
and
is worthy of its shield. To limit valuable communication to
non-commercial enterprises would further marginalise alternative
and competing voices in society. In this way voices of the best
resourced would tend to prevail. But also it is important to
keep
in mind the purpose for which the marks have been appropriated.
What is being sold is not another beer or other product
under the
guise or on the back of the registered marks. What is being sold
is rather an abstract brand criticism. T-shirts
are not much more
than the medium of choice.
The SCA denied
the applicant the constitutional protection of freedom of
expression on the further ground that it has adequate
alternative
means of expression. The amicus makes the point that although this
test is of well-established pedigree in US jurisprudence,
65
the critical enquiry is the sufficiency of the alternative modes of
expression for the particular communication at hand. Adequacy
of
lines of communication is relative to a myriad of variables such as
the nature of the message, the target audience, the means
of the
author or creator of the message and so on. In each case such
adequacy must be probed with utmost care and before a conclusion
is
reached that the use ought not to be protected as part of free
speech.
The SCA
rightly accepted that parody is a relevant factor in determining
whether the use of senior 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. The SCA endorsed the definition
of
parody found in US jurisprudence. In
Campbell
66
that court noted that
“
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 . . . whereas satire can
stand on its own two feet
and so requires justification for the very
act of borrowing.”
67
[footnote omitted]
The SCA
rejected the submission that the message conveyed by the T-shirts
is parodic expression. This attitude is in line with
the
interpretation the SCA has placed on the message on the T-shirts as
bearing one reasonable meaning of an unjustified racial
slur
unconnected to the registered marks save as unsolicited “graffiti”
on the marks. The amicus submits that the expressive
conduct
undertaken through the medium of the T-shirts falls well within the
core meaning of parody. At least one of the meanings
of the
message on the T-shirts contended for by the applicant and amicus
is reasonable and capable of parodic meaning and falls
within the
protection offered by section 16(1) of the Constitution.
I have
expressly refrained from making any finding on any of the
submissions of the amicus and on the findings of the SCA on fair
use of a mark under section 34(1)(c) and freedom of expression.
This is so because, firstly, it is unnecessary. I have given
an
account of the submissions and relevant findings only for the sake
of completeness. I have already reached the conclusion
that the
claim of infringement of the respondent’s marks stands to be
dismissed because no likelihood of economic prejudice
has been
established. Secondly, where no economic harm has been shown, the
fairness of parody or satire or lampooning does not
fall for
consideration. It must always be kept in mind that, unlike in the
US,
68
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.
It must follow
that the application for leave to appeal ought to be granted; that
the appeal against the judgment and order of
the SCA ought to
succeed; and that the order of the High Court ought to be
substituted with an order that the application is
dismissed.
Costs
The respondent
sought an interdict to vindicate its intellectual property rights
in the form of trade marks, but is unsuccessful
in this Court. On
the other hand the applicant has invoked the right to free
expression under the Constitution and has been
upheld by this
Court. There is no doubt that the respondent launched proceedings
to safeguard its commercial interests. The
applicant is asserting
a constitutional right vital to his life view and relatively tiny
and virtually dormant enterprise. I
know no reason why the
applicant should forfeit costs in this Court and other courts that
heard the matter before us. It is
just and equitable to order that
the respondent pay the costs of the applicant, in the High Court,
SCA and in this Court.
Order
The following
order is made:
The
application for leave to appeal to this Court is granted.
The appeal
against the judgment and order of the Supreme Court of Appeal
succeeds.
The order
of the Supreme Court of Appeal is set aside.
The order
of the High Court is set aside and replaced by the following
order: “Application dismissed”.
The
respondent is ordered to pay costs, including costs consequent
upon the employment of two counsel, in the High Court,
Supreme
Court of Appeal and in this Court.
Langa DCJ,
Madala J, Mokgoro J, Ngcobo J, O’Regan J, Sachs J, Skweyiya J,
Van der Westhuizen J and Yacoob J concur in the judgment
of
Moseneke J.
SACHS J:
Does the law
have a sense of humour? This question is raised whenever the
irresistible force of free expression, in the form
of parody,
69
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.
70
In the present
matter a graduate of a course in journalism decided to do battle
with a number of corporate giants, calling his
enterprise Laugh it
Off and arming himself with T-shirts bearing parodied images and
words brazenly pilfered from his opponents.
One of his victims,
South African Breweries [SAB], saw one of its well-known trademarks
reproduced on T-shirts for public sale.
The words ‘Black Label’
and ‘Carling Beer’, which accompanied the logo were transformed
into ‘Black Labour’ and
‘White Guilt’. In smaller
lettering the slogans, ‘America’s Lusty Lively Beer’ and
‘Brewed in South Africa’ were
converted into ‘Africa’s
Lusty Lively Exploitation Since 1652, No Regard Given Worldwide’.
SAB did not laugh. Instead
it went to the Cape High Court and
sought, and obtained, an interdict restraining distribution of the
T-shirts.
On appeal, the
Supreme Court of Appeal [SCA] was equally un-amused, holding that
it was unfairly detrimental to SAB to link its
protected imagery
with imputation of racial exploitation, particularly if the
objective was to sell T-shirts. Accordingly, the
future sale of
the T-shirts was, and remains, interdicted. The result of this
double forensic defeat was paradoxically that
while the tradename
Laugh it Off achieved national and international fame, Laugh it Off
itself faced looming insolvency. The
joke now being on it, it
appeals to this Court.
The facts are
well traversed and the broad issues set out with clarity and
precision in the judgment of Moseneke J. I agree with
the order it
makes and with its central proposition, 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. I feel, however, that something
more needs to be said.
It would in my
opinion be unfortunate if SAB [and the others targeted by the
T-shirts] were left with the impression that their
case failed
simply because they did not back it up with clip-board evidence to
prove a measure of detriment. I believe the appeal
should be
upheld on more substantial grounds. Although the SCA judgment was
thoughtfully crafted and raised all the basic considerations
in
what Moseneke J aptly describes as a novel if not vexed area of our
law, 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. By de-contextualising both the nature of the mockery
contained in the image and the context in which
it was deployed,
the SCA over-emphasised the fact that the T-shirts were sold at a
profit, and attributed undue weight to the
literal meaning of the
words used. At the same time it gave far too little regard to the
uniquely expressive weight of the parodic
form used. The result
was inappropriately to allow what were tenuous property interests
to outweigh substantial expression rights.
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. It
went further. It 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. It was a calculatedly risky activity, with the sense of
irreverence and provocation being intrinsic to
the enterprise. If
parody does not prickle it does not work. The issue before us,
however, is not whether it rubs us up the
wrong way or whether
Laugh it Off’s provocations were brave or foolhardy, funny or
silly. The question we have to consider
is whether they were
legally and constitutionally permissible. I believe they were
eminently so, and give my reasons.
The paradox of
parody
Parody is inherently paradoxical. Good parody is both original and
parasitic, simultaneously creative and derivative.
71
The relationship between the trademark and the parody is that if
the parody does not take enough from the original trademark,
the
audience will not be able to recognise the trademark and therefore
not be able to understand the humour. Conversely, if
the parody
takes too much it could be considered infringing, based upon the
fact that there is too much theft and too little
originality,
regardless of how funny the parody is.
72
Parody is
appropriation and imitation, but of a kind involving a deliberate
dislocation. Above all, parody presumes the authority
and currency
of the object work or form. It keeps the image of the original in
the eye of the beholder and relies on the ability
of the audience
to recognise, with whatever degree of precision, the parodied work
or text, and to interpret or ‘decode’
the allusion; in this
sense the audience shares in a variety of ways the creation of the
parody with the parodist. Unlike the
plagiarist whose intention is
to deceive, the parodist relies on the audience’s awareness of
the target work or genre; in turn,
the complicity of the audience
is a sine qua non of its enjoyment.
73
As Gredley and
Maniatis write:
“
The effect on the audience
of parodic dislocation is often comic, provoking laughter, not
necessarily at the expense of the parodied
work or its author, but
at the dislocation itself. Other reactions can include shock,
disgust, anger or even simply intellectual
pleasure at the
recognition of the object work and at the skill and imagination of
the parodist. . . . [It may be suggested] that
the courts are
prepared to tolerate genuine parody, especially in cases where the
sole or primary injury to the copyright owner
is to his
amour
propre
.”
74
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.
75
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.
76
Parodists may then have varying motivations for their artistic
work; some hope to entertain, while others engage in social

commentary, and finally others may have duplicitous commercial
aspirations.
77
Rutz states that “[o]ften laughter is provoked not at the
expense of the original work and its author, but at the dislocation
itself. The public may find pleasure in recognising the parody’s
object; on the other hand, reactions may be anger or shock,
depending on the context in which the parody is set.”
78
The closer the
object of the parody is to the parody itself, the more intense will
the paradox be. ‘Target’ parodies seek
to comment upon the
text itself or its creator or owner, while ‘weapon’ parodies
involve the use of that text to comment
on something quite
different. Jurists such as Posner
79
and Kennedy J
80
have suggested that weapon parodies involving the hijacking of a
well-known image to attack something entirely unrelated, should
not
enjoy free speech protection. Another view is that whether the
parody of a trademark targets the mark directly or uses it
to hit
at another target should not be decisive in itself, but merely one
of the factors to enter the scales when free speech
and property
rights are balanced against each other.
81
In either event some degree of paradox will exist to trouble the
law.
Trademark
protection
The importance
of trademark protection needs to be emphasised. In the words of
Frankfurter J,
“
The protection of
trade-marks is the law’s recognition of the psychological function
of symbols. . . . A trade-mark is a merchandising
short-cut which
induces a purchaser to select what he wants, or what he has been led
to believe he wants. The owner of a mark
exploits this human
propensity by making every effort to impregnate the atmosphere of
the market with the drawing power of a congenial
symbol. Whatever
the means employed, the aim is the same–to convey through the
mark, in the minds of potential customers, the
desirability of the
commodity upon which it appears. Once this is attained, the
trade-mark owner has something of value.”
82
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. Confusion,
dilution or tarnishing of their trademarks can be as harmful to
them as to any of the major companies, indeed more so, because
their capacity to mitigate any detriment will be attenuated.
There is
nothing in our law to suggest that parody is a separate defence.
Rather, it should be considered as an element in the
overall
analysis.
83
As a United States court put it:
“
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.”
84
The issue in that
matter was confusion, not detriment, but the principle is the same:
there are parodies that cause unfair detriment
and parodies that do
not. Everything will depend on the context. Thus, the fact that
the trademark image is central to the parody
does not make it
automatically or even presumptively liable for restraint. Nor, on
the other hand, does the fact that it is offered
as humour
automatically or even presumptively render it immune from restraint.
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.
85
Given the importance of trademark protection on the one hand and
free speech on the other it becomes necessary to balance the
one
against the other.
Balancing free
speech and trade mark protection
The question
to be asked is whether, looking at the facts as a whole, and
analysing them in their specific context, an independent
observer
who is sensitive to both the free speech values of the Constitution
and the property protection objectives of trademark
law, would say
that the harm done by the parody to the property interests of the
trademark owner outweighs the free speech interests
involved. The
balancing of interests must be based on the evidence on record,
supplemented by such knowledge of how the world
works as every
judge may be presumed to have. Furthermore, although the parody
will be evaluated in the austere atmosphere of
the court, the text
concerned [whether visual or verbal or both] should be analysed in
terms of its significance and impact it
had [or was likely to
have], in the actual setting in which it was communicated.
It seems to me
that what is in issue is not the limitation of a right, but the
balancing of competing rights. The present case
does not require
us to make any determinations on that matter. But it would appear
once all the relevant facts are established,
it should not make any
difference in principle whether the case is seen as a property
rights limitation on free speech, or a
free speech limitation on
property rights. At the end of the day this will be an area where
nuanced and proportionate balancing
in a context-specific and
fact-sensitive character will be decisive, and not formal
classification based on bright lines.
The mere fact
that the expressive activity has a commercial element should not be
determinative itself. As the US Supreme Court
observed in
connection with an analogous copyright question:
“
If, indeed, commerciality
carried presumptive force against a finding of fairness, the
presumption would swallow nearly all of the
illustrative uses listed
in the preamble … including news reporting, comment, criticism,
teaching, scholarship, and research,
since these activities ‘are
generally conducted for profit in this country’. . . . Congress
could not have intended such a
rule, which certainly is not
inferable from the common-law cases, arising as they did from the
world of letters in which Samuel
Johnson could pronounce that ‘[n]o
man but a blockhead ever wrote, except for money.”
86
Codero explains
further:
“
Both artists and advertisers
have used the image or representation of cultural icons to comment
on society, criticize the symbol,
or sell merchandise. In our pop
culture where salesmanship must be entertaining and entertainment
must sell, the line between
commercial and non-commercial speech has
disappeared.”
87
Of more
significance is whether the activity is primarily communicative in
character or primarily commercial. Thus, some degree
of commerce
should not in itself exclude the activity from free speech
protection. Nor, however, should an element of social
criticism on
its own save an inherently commercial activity from a charge of
unfairly causing detriment.
Similarly, the
fact that the message could have been conveyed by means other than
parody should not be decisive or even significant,
again depending
on the facts. If this were not so there would be no scope at all
for trademark parody, because the message could
always be conveyed
more directly, if less convincingly, by production of a leaflet or
else a letter to the editor. In our consumerist
society where
branding occupies a prominent space in public culture, one does not
have to be a ‘cultural jammer’ to recognise
that there is a
legitimate place for criticism of a particular trademark, or of the
influence of branding in general or of the
overzealous use of
trademark law to stifle public debate. In such circumstances the
medium could well be the message, and the
more the trademark itself
is both directly the target and the instrument, the more
justifiable will its parodic incorporation
be. Conversely, the
more the trademark is used in arbitrary fashion and simply as a
mere attention-seeking device for the lazy
or the deceitful, the
less justifiable will it be.
Another
relevant factor to be placed on the scales would be the medium used
and the context of its use. Thus, parodic illustrations
in
satirical columns, or editorial cartoons in newspapers or
magazines, or a satirical programme on TV, are likely in any open
society to enjoy a large measure of protection. The very same
images in another context could be regarded as unfair. Thus,
the
fact that lampoons appear on T-shirts to be worn by young
irreverent people who enjoy the idea of being gadflies, could be
highly relevant.
Then there is
the more vexed question of whether the fact that the parody is
deemed unsavoury should deprive it of any serious
degree of free
speech protection. Siegrun Kane interprets the courts’ focus on
a parody’s unsavouriness as follows:
“
The less [the] redeeming
social value in the use [of the parody], the greater the chances for
injunctive relief. If, for example,
the entertainment is lewd,
lascivious, pornographic, disparaging or tasteless, watch out!”
88
At the same time
it has frequently been emphasised that the courts should be
extremely reluctant to evaluate a parody on the basis
of whether
they consider it to be funny or feeble. As the US Supreme Court
said in
Campbell
:
“
Whether, going beyond that,
parody is in good taste or bad does not and should not matter to
fair use. As Justice Holmes explained,
‘[i]t would be a dangerous
undertaking for persons trained only to the law to constitute
themselves final judges of the worth
of [a work], outside of the
narrowest and most obvious limits. At the one extreme some works of
genius would be sure to miss appreciation.
Their very novelty would
make them repulsive until the public had learned the new language in
which their author spoke. . . .
First Amendment protections do not
apply only to those who speak clearly, whose jokes are funny, and
whose parodies succeed.”
89
I have
mentioned factors which I believe will be relevant to the balancing
exercise. The list is by no means exhaustive. Nor
should they be
seen as a series of discrete hoops through which the litigants must
pass in order to succeed. Rather, they are
illustrations of the
kind of considerations to be evaluated in a fact-sensitive and
contextual manner and against the backdrop
of the values of an open
and democratic society. With these considerations in mind I turn
to the facts of this case.
The facts
The sole
member of Laugh it Off, Justin Nurse, states that Laugh it Off is
and continues to be a very small concern operating
on a shoestring
budget. The way it has operated thus far has been to prepare
limited runs of T-shirts, to set up a website,
and from time to
time to hold comedy events where these T-shirts are promoted.
Laugh it Off
explains the logic behinds its use of T-shirt lampoons as follows.
Brands are omnipresent, and invade every aspect
of our private and
public space. They entrench themselves in modern cultural
consciousness by their self-made associations with
certain
lifestyles, ambitions, appeal to emotion, etc. Branding often has
very little to do with the product itself. Thus Black
Label beer
tastes completely different all over the world, but has a similar
brand. In South Africa the branding has nothing
to do with actual
taste and quality of the beer. It links the consumption of beer
and particularly Black Label to manliness,
sporting prowess and
even sexual prowess:
Carling Black Label is projected as something that is enjoyed by
“men” around the world. This clearly intends to convey
that
masculinity can be confirmed by drinking Black Label;
Carling Black Label is a “lusty, lively beer”;
Carling Black Label drinkers have or will acquire, one assumes, “a
big one”;
Carling Black Label drinkers get more at the end of the day.
Laugh it Off avers
that the Black Label man is clearly intended to be a particular
type, and if you want to be such a man, you
should use your hard
earned money to buy and drink Black Label beer. The love affair
with America, and all things American (for
example, township youth
are attracted to the hip-hop culture prevalent in American inner
cities), is also relied upon – almost
as a fallacious “appeal
to authority”. The affidavit made in its support claims that
“
we live in a society where
business and culture occupy the same space. It is here that the
debate starts to arise, as the corporates
try to make their brands
South African culture icons – and yet, when they achieve this and
their icon is commented on, they hide
behind a set of rules
(trademark and copyright laws) that were surely not intended for the
purpose of stifling cultural expression.
It is fair to say that
brands largely affect the way we act, and the decisions that we
make. . . . They are powerful, pervasive
and persuasive. It is the
nature of the brand’s unquestionability that cannot stand . . . .”
Thus, when
resistance to the self-ordained sanctity of the brand comes in the
form of satirical T-shirts, corporate reaction is
as if a crucifix
had been smashed in a monastery in the 14
th
century.
And indeed, Laugh it Off argues, the parallels between the church
as an institution that defied any challenge or criticism
for
centuries, and big business’s banner concept, the brand, defying
challenge nowadays, could easily be drawn.
The use of the
logo on the T-shirt is explained as follows:
“
Black Label has the luxury
of having the most money, and therefore the most speech. And if I
don’t necessarily like what they
have to say, and I want my
opinion to be heard on as big a platform as their, what am I to do?
Write a letter to the editor?.
. . It is then that one turns to what
could be called ‘ideological jujitsu.’ 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. Furthermore,
the medium of T-shirts is ideal, as it speaks
directly to our target audience: we of the branded generation, who
have walked around
as advertising billboards for other brands since
we were born. It is unavoidable BUT: what you say on your T-shirt
says a lot
about you. Our T-shirts are sold on campuses to
like-minded, freethinking academic students, and in underground
clothing stores
that attract a young market. Our T-shirts have
appeared on display in the National Art Gallery. . . .”
Laugh it Off
sums up its position by claiming that it uses the vocabulary of our
media-rich environment in a statement directed
at a media-literate
audience. This statement is made the more powerful because the
vocabulary of our environment is the brand;
in a media-saturated
environment, the most evocative and powerful public discussion will
use the vocabulary of that environment.
I have
presented Laugh it Off’s position at some length because it
highlights elements of the enquiry which were dealt with
in a
rather cursory fashion by the SCA. It is clear that Laugh it Off
cannot carve out for itself immunity simply by asserting
the
objective of promoting free speech. Similarly, a claim it makes
that it cannot be held accountable for the way its message
is
interpreted, because that is the nature of art, cannot be
sustained. Just as it claims that SAB cannot dissociate itself
from the objective impact of its branding message, so Laugh it Off
must bear the consequences of the actual effect of its
counter-branding
statement. Furthermore, the subjective intentions
of Laugh it Off are as irrelevant to the judicial enquiry as is the
degree
of subjective offence its use of the logo may cause to the
amour propre of SAB. The subjective intentions of Laugh it Off
only
became directly relevant when they entered the objective
public realm and were interpreted, understood and incorporated into

the world-vision of the people who bought, wore and saw the
T-shirts. Their significance must accordingly be evaluated not as
if they were court exhibits to be scrutinised outside of the
context of their use, but according to their actual impact.
There is no
suggestion in the present case that Laugh it Off was competing with
SAB for a share of the beer market; whether or
not the T-shirts can
be said to amuse, they do not confuse. Nor does the parody attack
the quality of SAB’s product. The
sale of the T-shirts dilutes
neither the beer itself nor its unique position in the consumer
imagination.
90
The only
possible sting as far as trademark protection is concerned relates
to the possible negative impact of the sale of the
T-shirts on the
image of Carling Black Label. It could be said that the imputation
of racist labour practices in the past would
tarnish the goodwill
associated with the trademark thereby creating unfair detriment.
The analogy would be that given by Posner,
namely the association
of Mickey Mouse with sex, blurring the image of the childish
innocence that Walt Disney sought to create
for his animated
cartoon characters.
91
The Posner
example I have given, however, points the other way. If valid, it
suggests that a lascivious Mickey Mouse would be
incompatible with
the product being sold, with negative potential for audience
ratings. 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. Indeed, it is difficult to imagine that black working
class drinkers would raise an eyebrow at
the suggestion that
together with virtually every other enterprise of the time, SAB
benefited from the use of cheap black labour
produced by the pass
laws and lack of trade union and political rights. Even assuming
that before the launching of the litigation
they would have become
aware of the existence of the T-shirts, I have the greatest
difficulty in imagining that the manly thirst-quenchers
would have
taken the lampoon at all seriously, let alone regarded it as
constituting hate speech or a racial slur. 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.
And as far as
the actual and rather small community of media-literate purchasers
was concerned, what evidence we have suggests
that they acquired
the T-shirt precisely because it poked fun at enterprises
considered as taking themselves too seriously.
The purchasers
would have noted that this was just one of a batch of T-shirts;
which relied for their effect on a pun.
92
The game in which they participated was one of vivacious
word-play, not solemn social history. The seriousness of the
campaigning
enterprise comes from the challenge to the dominion of
the brand. The Laugh it Off campaign was to get them to laugh, not
to
hate; and laugh, it appears, is what they did.
The evidence
indicates that everybody concerned with the T-shirts, whether as
producer or consumer, knew that they were intended
to poke fun at
the dominance exercised by brand names in our social and cultural
life. What united seller and buyer had nothing
to do with beer,
but was all about irreverence. The use of the trademark was
central to the project. This was not an example
of a weapon parody
being used exploitatively to “get attention or to avoid the
drudgery in working up something fresh”.
93
The rule
against trademark tarnishment would accordingly seem to have little
if any application in the present matter. Looked
at in its
context, the T-shirt lampoon hardly touched upon SAB’s prowess as
producer of a lusty, lively brew. If it did cause
any hurt to the
owners of the trademark, such hurt could hardly be classified as
detriment to the marketability of the beer.
Other non-trademark
protection remedies might exist for harm to the repute of the beer
producer rather than the beer. As Spence
writes in England,
intellectual property rights are essentially rights against
appropriation, not rights against unfair criticism.
Unfair
criticism, he observes, is regulated, if at all, by the law of
injurious falsehood and defamation.
94
It follows that it might be important not to weaken the
tarnishment rule where the owner has legitimate claims of product

tarnishment via false factual assertions harmful to the viability
of a product.
95
By way of contrast, however, parody of a trademark, unlike product
disparagement and other actions which undermine a product’s
marketability, is a form of public debate about a public enterprise
in the public domain.
96
The balancing
exercise in the present matter is therefore easily done. On the
detriment side there is virtually no harm, if any
at all, to the
marketability of Carling Black Label beer. This is a case where
the communication was far more significant than
the trade. The
trade was incidental to the communication. The objective of the
enterprise, as clearly understood by all those
involved, was to get
a message across. The sale of the T-shirts was necessary for
sustainability. This was not a commercial
activity masquerading as
a free speech one. To say that the message could have been
conveyed by means other than the use of
the trademark is to miss
the point of the parody. The message lies precisely in the
dislocated use of the trademark. The challenge
is to the power of
branding in general, as exemplified by the particular trademark.
It is not to the particular beer as such.
It should be stressed
that the question is not whether the parody succeeds in hitting the
mark. What matters is that it was
part of a genuine attempt to
critique the status quo in our society. The scales come down
unequivocally on the side of Laugh
it Off. In the felicitous
phrase of an American judge, the evidence shows that in the present
matter the parody was a take-off,
not a rip-off, and the interdict
should accordingly not have been granted.
I would like
to add two considerations of special constitutional significance
which I believe reinforce the conclusion to which
I have come.
The first
relates to the chilling effect that overzealously applied trademark
law could have on the free circulation of ideas.
In this respect
one must recognise that litigation could be a risky enterprise for
a meritorious trademark owner as well as
the prankster. Applicants
seeking to interdict the abusive use of their trademarks stand to
be involved in lengthy litigation
in which every manner of
accusation could be made against them by persons from whom no costs
could ultimately be recovered.
Furthermore, any businesses seen as
trying to block free speech could hardly be surprised if the media
tended to champion their
opponent’s cause. Indeed, the very act
of invoking the heavy machinery of the law might be regarded as
being in conflict with
the image of freedom, liveliness and good
cheer associated with their product brand. Thus, in the present
matter simply bringing
the proceedings against Laugh it Off risked
being more tarnishing of Carling Black Label’s association with
bonhomie and cheerfulness
than the sale of 200 hundred T-shirts
could ever have done. The principle of litigator beware, however,
faces any person contemplating
legal action.
Of more
significance from a constitutional point of view is the manner in
which even the threat of litigation can stifle legitimate
debate.
Large businesses have special access to wealth, the media and
government. Like politicians and public figures, their
trademarks
represent highly visible and immediately recognisable symbols of
societal norms and values. 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.
97
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.
98
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.
99
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.
100
As the US Court of Appeals for the First Circuit explained in
LL
Bean
, parodies serve an important public function which should
not easily be suppressed:
“
The central role which
trademarks occupy in public discourse (a role eagerly encouraged by
trademark owners), makes them a natural
target of parodists.
Trademark parodies, even when offensive, do convey a message. The
message may be simply that business and
product images need not
always be taken too seriously; a trademark parody reminds us that we
are free to laugh at images and associations
linked with the mark. .
. . Denying parodists the opportunity to poke fun at symbols and
names which have become woven into the
fabric of our daily life,
would constitute a serious curtailment of a protected form of
expression.”
101
This brings me
to the second consideration of special constitutional import. 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. Indeed, if our society
became completely solemn
because of the exercise of state power at the behest of the
worthy,
102
not only would all irrelevant laughter be suppressed, but
temperance considerations could end up placing beer-drinking itself
in jeopardy. And I can see no reason in principle why a joke
against the government can be tolerated, but one at the expense
of
what used to be called Big Business, cannot.
Laughter too
has its context. It can be derisory and punitive, imposing
indignity on the weak at the hands of the powerful.
On the other
hand, it can be consolatory, even subversive in the service of the
marginalised social critics. 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. We are not called upon to be arbiters
of the taste displayed or judges of
the humour offered. Nor are we
required to say how successful Laugh it Off has been in hitting its
parodic mark. Whatever our
individual sensibilities or personal
opinions about the T-shirts might be, 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. 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.
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. Nor
does the fact that parodists could have voiced
their discontent by phoning into a talk show rather than employ the
trademark
remove their protection. They chose parody as a means,
and invited young acolytes to join their gadfly laughter.
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.
It follows
that I fully support the order made by Moseneke J.
For the
applicant: P Hodes SC, A Katz and M Osborne instructed by H Miller
Ackermann & Bronstein.
For the
respondent: P Ginsburg SC, R Michau and SM Lebala instructed by
Adams & Adams.
For the amicus
curiae: GJ Marcus SC and AD Stein instructed by Rosin Wright
Rosengarten.
1
See para 2 of this judgment.
2
See para 3 below.
3
Laugh It Off Promotions CC v South African Breweries
International (Finance) BV t/a Sabmark International
2005 (2) SA
46
(SCA).
4
SAB International t/a Sabmark International v Laugh It Off
Promotions
[2003] 2 All SA 454
(C).
5
It is common cause that section 70(2) does not apply to the facts of
this case.
6
The three trade marks are registered as: (1) no. 1979/03675 CARLING
BLACK LABEL label in respect of alcoholic brewery beverages,
including beer, ale, lager; porter and stout; shandy; non-alcoholic
drinks; preparations for making all such drinks, dated 19 July
1979;
(2) no. 1991/09236 CARLING BLACK LABEL neck and body label (colour)
in respect of beer, ale and porter, dated 1 November
1991; and (3)
no. 1991/09237 CARLING BLACK LABEL neck and body label in respect of
beer, ale and porter, dated 1 November 1991.
7
The
Counterfeit Goods Act 37 of 1997
creates a class of protected
goods incorporating intellectual property and prohibits certain acts
as counterfeiting in relation
to protected goods.
8
For the debate on legitimacy and bounds of intellectual property,
see Vaver “Need Intellectual Property Be Everywhere? Against
Ubiquity and Uniformity”
(2002) 25
Dalhousie Law Journal
1
;
Schechter “The Rational Basis of Trademark Protection”
(1927) 40
Harvard Law Review
813
; Martino
Trademark Dilution
(Clarendon, Oxford 1996) at 25-7.
9
See Vaver
Intellectual Property Law: Copyright, Patents,
Trade-marks
(Irwin Law, Ontario 1997) at 19; Steiner
“Intellectual Property and the Right to Culture” (1999)
Intellectual Property and Human Rights
43; Mostert
Famous
and Well-Known Marks
(Butterworths, London 1997) at 63-4; Leval
“Toward a Fair Use Standard”
(1990) 103
Harvard Law Review
1105
at 1109-10.
10
But see
Ladbroke (Football) Ltd v William Hill (Football) Ltd
[1964] 1 All ER 465
(HL) at 479;
Compagnie Générale
des Éstablissements Michelin-Michelin & Cie v National
Automobile, Aerospace, Transportation
and General Workers Union of
Canada (CAW-Canada) (T.D.)
[1997] 2 FC 306
at para 96.
11
Ex Parte Chairperson of the Constitutional Assembly: In re
Certification of the Constitution of the Republic of South Africa,
[1996] ZACC 26
;
1996
1996 (4) SA 744
(CC);
1996 (10) BCLR 1253
(CC) at para 75.
See also the critique by Dean “The Case for the Recognition of
Intellectual Property in the Bill of Rights”
(1997) 60
Tydskrif
vir Hedendaagse Romeins-Hollandse Reg
105.
12
See Vaver “Canada’s Intellectual Property Framework: A
Comparative Overview”
(2004) 17
Intellectual Property Journal
125
at 128 and 186-8. But see Nachbar “Intellectual Property
and Constitutional Norms”
(2004) 104
Columbia Law Review
272.
13
For an account of the United States (US) position on parody see
Campbell v Acuff-Rose Music Inc
510 US 569
(1994).
14
The section reads as follows:
“
39. Interpretation of Bill of Rights.–
. . . .
(2) When interpreting any legislation, and when
developing the common law or customary law, every court, tribunal or
forum must
promote the spirit, purport and objects of the Bill of
Rights.”
15
See
Radio Pretoria v Chairman of the Independent Communications
Authority of South Africa and Another
[2004] ZACC 24
;
2005 (3) BCLR 231
(CC) at
para 19;
Fraser v Naude and Others
1999 (1) SA 1
(CC);
1998
(11) BCLR 1357
(CC) at para 7;
De Freitas and Another v Society
of Advocates of Natal (Natal Law Society Intervening)
1998 (11)
BCLR 1345
(CC) at para 21;
Member of the Executive Council for
Development Planning and Local Government, Gauteng v Democratic
Party and Others
[1998] ZACC 9
;
1998 (4) SA 1157
(CC);
1998 (7) BCLR 855
(CC)
at para 32;
S v Pennington and Another
1997 (4) SA 1076
(CC);
1997 (10) BCLR 1413
(CC) at paras 10-11.
16
For considerations in determining mootness see:
Mkontwana v
Nelson Mandela Metropolitan Municipality and Another; Bissett and
Others v Buffalo City Municipality and Others; Transfer
Rights
Action Campaign and Others v MEC, Local Government and Housing,
Gauteng, and Others (KwaZulu-Natal Law Society and Msunduzi
Municipality as Amici Curiae)
[2004] ZACC 9
;
2005 (1) SA 530
(CC);
2005 (2)
BCLR 150
(CC) at para 24;
Khosa and Others v Minister of Social
Development and Others; Mahlaule and Others v Minister of Social
Development and Others
[2004] ZACC 11
;
2004 (6) SA 505
(CC);
2004 (6) BCLR 569
(CC) at para 92.
17
Rail Commuters Action Group and Others v Transnet Ltd t/a
Metrorail and Others
[2004] ZACC 20
;
2005 (4) BCLR 301
(CC) at para 35;
Mabaso
v Law Society, Northern Provinces, and Another
[2004] ZACC 8
;
2005 (2) SA 117
(CC);
2005 (2) BCLR 129
(CC) at para 45: Ordinarily the Court is
cautious not to let amici tender new evidence, except where the
circumstances justify
otherwise.
18
These elements have been identified and restated in a number of
judgments albeit tangentially
: Bata Ltd v Face Fashions CC and
Another
2001 (1) SA 844
(SCA) at para 13;
Triomed (Pty) Ltd v
Beecham Group plc and Others
2001 (2) SA 522
(T) at 556-7;
Klimax Manufacturing Ltd v Van Rensburg
[2004] 2 All SA 301(O)
at paras 32-9.
19
Trade Marks Act 194 of 1993
.
20
With respect to the advent of dilution into our trade mark law see
Webster and Page
South African Law of Trade Marks, Unlawful
Competition, Company Names and Trading Styles
4 ed
(Butterworths, Durban 1997) at para 12.24. See also Rutherford
“Misappropriation of the advertising value of trade marks,
trade
names and service marks” in Neethling (ed)
Onregmatige
Mededinging/Unlawful Competition: verrigtinge van ’n seminaar
aangebied deur die Department Privaatreg van Die Universiteit
van
Suid-Afrika op 3 November 1989
(1990), as cited in Webster and
Page at n 4.
21
Above para 3.
22
In the US the primary source of trade mark protection against
dilution is the Trademark Act of 1946 (Lanham Trade-Mark Act), 15
USC section 1051 et seq. For a discussion of the relevant US
position see Cantwell “Confusion, Dilution and Speech: First
Amendment
Limitations on the Trademark Estate: An Update” (2004)
94
The Trademark Reporter
547.
23
Article 5(2) of the First Directive of the Council of the European
Union (89/104 of 21 December 1988) provides that:
“
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
of the repute of
the trade mark.”
Also Article 9(1)(c) of the Council of
the European Union Regulation 40/94 of 20 December, 1993 is couched
in similar terms. For
a discussion of anti-dilution protection of
trade marks registered as such in the European Community also see
Kitchin et al (eds)
Kerly’s Law of Trade Marks and Trade Names
13
th
ed (Sweet & Maxwell, London 2001) at 1022 and
1037-8.
24
Section 10(3) the United Kingdom (UK) Trade Marks Act 1994 which was
fashioned along the provisions of the first European Directive
provides that
“
A person infringes a registered trade mark if he
uses in the course of trade a sign which - (a) is identical or
similar to the trade
mark, and (b) is used in relation to goods and
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 cause, takes unfair
advantage
of, or is detrimental to, the distinctive character or
repute of the trade mark.”
Also see a brief discussion of the UK
position in
Halsbury’s Laws of England
4 ed (2000) re-issue
54-55 at para 72.
25
DaimlerChrysler AG v Javid Alavi (t/a Merc)
[2000] EWHC Ch 37
;
[2001] RPC 42
at
para 88;
General Motors Corporation v Yplon SA
[C-375/97
European Court of Justice];
[1999] All ER 865
at 871C.
26
Rutherford above n 20 at 55. Also see the explanatory memorandum to
the Draft Trade Marks Bill published in GN 808 in GG13482
of 30
August 1991.
27
Rutherford id at 56-7.
28
2001 (3) SA 563
(SCA).
29
Id at para 11. Also see Webster and Page above n 20;
Triomed
and
Klimax
above n 18.
30
[2000] EWHC 1557
;
[2000] FSR 767.
31
Id at 786.
32
[2000] E.T.M.R. (issue 10) 896. Also see the decision of Benelux
Court of Justice in
Lucas Bols v Colgate-Palmolive
(1976) 7
IIC 420
at 423:
“
It is . . . possible . . . that
the goods to which . . . a similar mark relates, appeal to the
sensations of the public in such
a way that the attraction and the
‘capacity of the mark to stimulate the desire to buy’ the kind
of goods for which it is registered
are impaired.”
And
also the German Federal Court decision in
Quick
[1959] GRUR
182 cited in
Premier Brands
above n 30.
33
Pfizer
above n 32 at 910.
34
Unlike the UK and European Union (EU), some US courts appear to have
stuck to the narrow purpose of trade mark protections by holding
that “[i]t is the source-denoting function which the trade mark
laws protect, and nothing else.” See for example
Anti-Monopoly
Inc v Gen Mills Fund Group
[1979] USCA9 1342
;
611 F 2d 296
, 301 (9th Cir 1979).
Generally speaking, their courts aggressively protect the rights of
the trade mark owner within this core
purpose but refuse to allow
the owner to control public discourse whenever the public meaning of
the mark goes beyond the source-identifying
purpose. See above n 32.
35
Id
36
In the
Trade Marks Act 194 of 1993
trade mark (other than a
certification trade mark or a collective trade mark) is defined as
“
a mark used or proposed to be used by a person in
relation to goods or services for the purpose of distinguishing the
goods or services
in relation to which the mark is used or proposed
to be used from the same kind of goods or services connected in the
course of
trade with any other person”
(section 2(1)(xxiii)).
In terms of
section 9
, trade marks are
deemed registrable only if they are, inherently or by reason of
prior use, “capable of distinguishing the goods
or services of a
person in respect of which it is registered or proposed to be
registered from the goods or services of another
person”.
Section
10
limits
section 9
by setting out specific instances where trade
marks may not be registered due, for example, to their being
comprised of a sign
or indication that denotes the product’s
origin, time of production, kind (subsection 2(b)) or to their being
shaped or coloured
by natural or technical necessity (subsection 5).
Section 11
adds the further limitation that trade marks may only be
registered “in respect of goods or services falling in a
particular
class or particular classes” (subsection 1). It is
clear from these provisions and others (such as
sections 32
and
37
)
that the protection of the distinct character of the mark for the
purposes of preserving its selling power is the primary aim
of the
Act. See
Beecham Group Plc v Triomed (Pty) Ltd
2003 (3) SA
639
(SCA) at 646A-B;
National Brands
n 28
above at
para 11.
37
Although dilution originated in German jurisprudence Schechter
articulated the concept clearly in his article, “The Rational
Basis of Trade Mark Protection”, above n 8 at 825-6. He aspired
to see the courts “base their protection of trademarks squarely
upon this principle that ‘the value of the plaintiff’s symbol
depended in large part upon its uniqueness’” [footnote omitted].
According to Martino (above n 8 at 28), when Schechter died he left
a proposal of a Trademarks Act which had a provision that
protected
registered marks from dilution.
38
Section 34(1)(c), being in this respect alike to the provisions of
the UK, EU, US and Canada, refers not only to detriment caused
to
the distinctive character of a registered trade mark but also to its
repute.
39
See
Premier Brands
above n 30 at 786-8; also
Dimple
[1985] GRUR 550;
Taittinger SA and Others v Allbev Ltd and
Another
[1993] FSR 641
at 678, as cited in
Premier Brands
;
and Mostert above n 9 at 58-9.
40
Webster and Page above n 20 at 12–43-12–44; Mostert above n 9 at
58-61;
Triomed
above n 18 at 557C.
41
See a fuller discussion on interpretation of the section below.
42
See section 39(2) of the Constitution;
Daniels v Campbell NO and
Others
[2004] ZACC 14
;
2004 (5) SA 331
(CC);
2004 (7) BCLR 735
(CC) at paras
43-6 and 81-2;
Investigating Directorate: Serious Economic
Offences and Others v Hyundai Motor Distributors (Pty) Ltd and
Others: In re Hyundai
Motor Distributors (Pty) Ltd and Others v Smit
NO and Others
[2000] ZACC 12
;
2001 (1) SA 545
(CC);
2000 (10) BCLR 1079
(CC) at
paras 21-6.
43
Id
44
See
De Reuck v Director of Public Prosecutions, Witwatersrand
Local Division, and Others
[2003] ZACC 19
;
2004 (1) SA 406
(CC);
2003 (12) BCLR
1333
(CC) at paras 46-50;
Khumalo and Others v Holomisa
[2002] ZACC 12
;
2002
(5) SA 401
(CC);
2002 (8) BCLR 771
(CC) at paras 21-4;
Islamic
Unity Convention v Independent Broadcasting Authority and Others
[2002] ZACC 3
;
2002 (4) SA 294
(CC);
2002 (5) BCLR 433
(CC) at paras 25-30;
S v
Mamabolo (E TV and Others Intervening)
[2001] ZACC 17
;
2001 (3) SA 409
(CC);
2001 (5) BCLR 449
(CC) at para 37; and
South African National
Defence Union v Minister of Defence and Another
[1999] ZACC 7
;
1999 (4) SA 469
(CC);
1999 (6) BCLR 615
(CC) at para 7.
45
See
Mthembi-Mahanyele v Mail & Guardian Ltd and Another
2004 (6) SA 329
(SCA);
2004 (11) BCLR 1182
(SCA) at paras 6 and 33;
Delta Motor Corporation (Pty) Ltd v Van Der Merwe
2004 (6) SA
185
(SCA) at para 12;
National Media Ltd and Others v Bogoshi
1998 (4) SA 1196
(SCA) at 1217B-D
[1998] ZASCA 94
; ;
1999 (1) BCLR 1
(SCA) at 18B-D.
46
Chavunduka and Another v Minister of Home Affairs and Another
2000 (1) ZLR 552
(SC) at 558-9;
Kauesa v Minister of Home
Affairs and Others
1996 (4) SA 965
(NmS) at 975B-6C and
977H-981B;
R v Keegstra
(1991) 3 CRR (2d) 193 (Can SC) at
241-2;
Quebec
(Attorney General)
v
Irwin Toy Ltd
[1989]
1 SCR 927
;
New York
Times v Sullivan
[1964] USSC 41
;
376 US 254
(1964);
Cohen v California
403 US 15
(1971);
Hector v Attorney General of Antigua and
Barbuda and Others
[1990] 2 All ER 103
(PC) at 106C-E and 106G;
Reynolds v Times Newspapers Ltd and Others
[1999] UKHL 45
;
(2000) 7 BHRC 289
(HL) at 294F-G.
47
Article 9 of the African Charter on Human and Peoples’ Rights;
Article 10 of the European Convention on Human Rights and
Fundamental
Freedoms; Preamble and Article 19 of the Universal
Declaration of Human Rights.
48
For a discussion of the theories behind the recognition of free
expression see Van der Westhuizen “Freedom of Expression” in
Van
Wyk et al (eds)
Rights and Constitutionalism: The New South
African Legal Order
(Kenwyn, Juta 1994) 254 at 267-73. See also
Meyerson “‘No Platform for Racists’: What Should the View of
Those on the Left
Be?” (1990) 6
South African Journal on Human
Rights
394 and Suttner “Freedom of Speech” (1990) 6
South
African Journal on Human Rights
372.
49
Case and Another v Minister of Safety and Security and Others;
Curtis v Minister of Safety and Security and Others
[1996] ZACC 7
;
1996 (3) SA
617
(CC);
1996 (5) BCLR 609
(CC).
50
Id at para 27.
51
South African National Defence Union
above
n 44.
52
Id at para 8.
53
S v Zuma and Others
[1995] ZACC 1
;
1995 (2) SA 642
(CC);
1995 (4) BCLR 401
(CC) at paras 13-15; and
S v Williams
and Others
[1995] ZACC 6
;
1995
(3) SA 632
(CC);
1995 (7) BCLR 861
(CC) at para 51.
54
Islamic Unity
above n 44 at paras 31-3.
55
Above
n 44 at para 41.
56
For similar concern see
Klimax
above n 18 at para 34:
“
Great care must be taken in interpreting section
34(1)(c) to ensure that the parameters of this new form of trade
mark protection
are defined in . . . such a manner 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.”
[reference
omitted]
57
Above n 18.
58
Id at para 15.
59
Above n 18 at 557D-J.
60
Section 10(3) of the UK Trade Marks Act 1994. See
Premier Brands
above n 30 and
DaimlerChrysler AG
above n 25.
61
Article 5(2) of the First Directive of the Council of the European
Union (89/104 of 21 December 1988). See
General Motors Corp
above n 25.
62
Trademark Act of 1946 (Lanham Trade-Mark Act), 15 USC section 1125.
See
Moseley dba Victor’s Little Secret v V Secret Catalogue Inc
[2003] USSC 1847
;
537 US 418
(2003).
63
See
Mamabolo
above n 44 at para 41;
Khumalo
above n 44
at para 25.
64
Bata Ltd
above
n 18
at para 11.
65
Dallas Cowboys Cheerleaders Inc v Pussycat Cinema Ltd
[1979] USCA2 625
;
604 F
2d 200
, 206 (2d Cir 1979).
66
Above n 13.
67
Id
at 580-1.
68
Id. The position in the US is to be contrasted with that in Canada.
It is noted in
Compagnie
above n 10, at paras 63 and 65,
that
“
American case law permitting parody as criticism
under the American doctrine of ‘fair use’ is not applicable nor
terribly persuasive
in the Canadian context of a different legal
regime and a longstanding trend to deny parody as an exception. As
well, exceptions
to copyright infringement should be strictly
interpreted. I am not prepared to read in parody as a form of
criticism.
. . .
In doing so, I would be creating a new exception to the
copyright infringement, a step that only Parliament would have the
jurisdiction
to do.”
69
Parody is derived from the ancient Greek words “para” [beside,
alongside, near] and “ode” [song]. This implies comparison
between the parody and its original [a song sung alongside another].
Rutz “Parody: A Missed Opportunity”
(2004) 3
Intellectual
Property Quarterly
284
at 286.
70
In a review of twenty years of trademark parody cases, Kane
explained: “While the courts pay lip service to the usual
trademark
factors in judging likelihood of confusion, the results
seem as unpredictable as the judicial sense of humour . . . . Is it
just
a case of different facts, different decades, or different
judicial sensibilities?” My reading of literature from many
countries,
which I refer to below, suggests that despite differences
in the constitutional and legislative texts with which they work,
the
courts invariably have to work with the same inherently unstable
situation created by the tension in modern society between the
need
to protect both free speech and intellectual property. This results
in court decisions that are highly fact-sensitive, and
not easily
transported. See Kane “Developments in the Law of Trademark
Parody: If it’s Funny, Does That Mean it’s Fair?”
in
Current
Developments in Trademark Law and Unfair Competition
(Practising
Law Institute 1984) 263 at 265 as quoted in Levy “Trademark
Parody: A Conflict Between Constitutional and Intellectual
Property
Interests” (2001) 69
George Washington Law Review
425 at n
51.
71
Spence “Intellectual Property and the Problem of Parody”
(1998)
114
Law Quarterly Review
594
at 594.
72
Kotler “Trade-mark Parody, Judicial Confusion and the Unlikelihood
of Fair Use”
(1999-2000) 14
Intellectual Property Journal
219
at 222.
73
Gredley and Maniatis “Parody: A Fatal Attraction? Part 1: The
Nature of Parody and its Treatment in Copyright”
(1997) 7
European
Intellectual Property Review
339
at 340.
74
Id at 341.
75
Levy above n 2 at 425.
76
A Canadian writer states that trademark parodies are typically
fashioned to critique and identify modern social issues, which they
do through the most common and available vehicle, consumerism.
Kotler above n 4 at 219.
77
Levy above n 2 at 425.
78
Rutz above n 1 at 288.
79
Posner “When is Parody Fair Use?” (1992) 21
Journal of Legal
Studies
67 at 71.
80
Luther Campbell aka Luke Skyywalker, et al, Petitioners, v
Acuff-Rose Music, Inc
510 US 569
(1994) at 599.
81
Spence above n 71 at 612. My preliminary view is that
the intricate and categorical distinctions sometimes made in United
States
law between protected and unprotected speech are
particularly unhelpful when the relevant judicial exercise involves
balancing rather than
line-drawing. It might well be that the more closely the parodic
point being made is related to the brand
itself, the greater the
justification for using it. Yet it should always essentially be a
matter of degree, not kind.
82
Mishawaka Rubber & Woolen Manufacturing Co v S. S. Kresge Co
[1942] USSC 98
;
316 US 203
(1942) at 205 referred to in Levy above n 2 at 427.
83
In France and Spain intellectual property legislation expressly
recognises parody as a defence. See Gredley and Maniatis above
n 5
at 343-4.
84
Dr Seuss Enterprises, LP v Penguin Books USA Inc
109 F3d 1394
(9
th
Cir 1997) at para 10.
85
See
Campbell
above n 12 at 569.
86
Id at 583 paras 8-9.
87
Codero “Cocaine-Cola, the Velvet Elvis, Anti-Barbie: Defending the
Trademark and Publicity Rights to Cultural Icons,” (1997-1998)
8
Fordham Intellectual Property Media & Entertainment Law
Journal
599 at 650.
88
Kane above n 2 at 272-73. See also Kotler above n 4 at 225.
“
No matter how clever the parody is, the courts may
fail to see value in its humour and be distracted by the
encroachment of the
parody on the original trade-mark’s goodwill
and reputation. A parody that treats the trade-mark in an
offensive, distasteful
and unwholesome manner is certainly more at
risk of being held to be trade-mark infringement in Canada”
89
Campbell
above n 12 at 583.
90
According to Schechter, the chief value of the trademark lies in
its capacity to convey positive meanings. The use of a similar
mark vitiates the original’s unique or distinctive ability to
convey meaning, thus diluting its strength in the consumer

imagination. As he pointed out in his seminal article, a
trademark’s symbol “would soon lose its arresting uniqueness
and
hence its selling power if it could be used on pianos, shaving
cream, and fountain pens.” Schechter “The Rational Basis of
Trademark Protection” (1926-1927) 40
Harvard Law Review
813 at 830.
91
Posner states that against that it can be argued that creators of
intellectual property should not be allowed to control the public
image of their property by forbidding others to suggest variant
images of it. Posner above n 11 at 75.
92
Thus a T-shirt lampooning the Standard Bank brand changed the name
to Standard Wank, and kept the motto simpler, better, faster.
It
can hardly be suggested that this would have been taken as a serious
factual statement.
93
Campbell above n 12 at para 6
.
94
Spence above n 3 at 612.
95
Schlosser “The High Price of (Criticizing) Coffee: The Chilling
Effect of the Federal Trademark Dilution Act on Corporate Parody”
(2001) 43
Arizona Law Review
931
at 963.
96
Id at 963-4.
97
Id at 962-3.
98
Schlosser writes: “Although many cases of trademark parody
are successfully defended on First Amendment grounds, they present

significant financial and legal hurdles to those individuals who
would speak against a corporation. The effectiveness of lawsuits
to
silence corporate critics derives in part from the disparity of
resources between the plaintiff corporation and the defendant
parody
artist. Corporate plaintiffs with famous marks will usually have
large treasuries with which to mount protracted litigation.
In
addition, corporations can claim tax advantages for the legal
expenses involved.” Above n 27 at 948.
99
Id at 949.
100
McEvoy, “‘The Big Chill’: Business Use of the Tort of
Defamation to Discourage the Exercise of First Amendment Rights”
(1990) 17
Hastings Constitutional Law Quarterly
503
at 505 as
quoted in Schlosser above n 27 at 952.
101
LL Bean Inc. v Drake Publishers Inc
.
811 F 2d 26
at 34 (1
st
Cir 1987).
102
Umberto Eco reminds us of the dangers of overzealousness in the
pursuit of truth. “Fear prophets, Adso,” he writes “and
those
prepared to die for the truth, for as a rule they make others die
with them. . . . Perhaps the mission of those who love
mankind is to
make people laugh at the truth, to make truth laugh, because the
only truth lies in learning to free ourselves from
insane passion
for the truth.” Eco
The Name of the Rose
(Vintage, London
1980) at 491.