South Africa: A Take-Off, Not A Rip-Off

Last Updated: 17 June 2014
Article by Rachel Sikwane

Most Read Contributor in South Africa, September 2016

The relationship between parody and IP rights comes up quite often. Just recently the Advocate General of Europe's highest court, the Court of Justice of the European Union (CJEU), handed down his opinion in the case of Deckmyn, a case which involves the allegedly parodic use by a Belgian political party of a comic in which there is copyright. The AG said a number of things about parody: it must be original; it can target another work; it should be humorous; and it should not be contrary to the deepest fundamental values of the EU states.

Over the years we've seen a number of cases in the UK. There was, for example, a trade mark case where the court held that a competition known as Miss Alternative World - a spoof of the Ms World contest with what's been described as 'sadomasochistic overtones'– was fine because there would be no confusion. But there was also a case involving a famous politician called Alan Clark, who successfully complained about a satirical newspaper column that was called Alan Clark's Secret Diaries – the court felt that there might be confusion, despite the presence of this disclaimer: 'Peter Bradshaw imagines how the great diarist might record.'

In the USA there was a famous case where Mattel, makers of the Barbie doll, complained about a song called Barbie Girl. The case failed, with the court noting that no one would be confused, and that parody is protected in the USA. More recently it was reported that a young man who started a brand called South Butt – a spoof of North Face – responded as follows when the inevitable nastiness started: 'It's a bona fide commentary of the pervasive banality, frivolity, absurdity and comedic nature of the consumer culture and those who participate therein.'

Anyone looking for guidance on parody under South African law will head straight for the 2005 case of Laugh It Off Promotions CC v SAB. This is the case where the Constitutional Court held that SAB did not have a case of trade mark dilution (in the form of tarnishment) against a satirist who sold a t-shirt that was visually similar to the well-known Black Label beer logo, substituting certain words and phrases, for example 'Black Label' became 'Black Labour'. The court found that SAB had no case because there wasn't any risk of economic harm or detriment – in the process the court put a serious dampener on the whole concept of trade mark dilution in South Africa.

In a separate judgment, Judge Sachs said that, although he agreed that the case should fail for lack of economic harm, there were bigger issues at stake here and that these needed to be discussed. He felt that the lower court, the Supreme Court of Appeal (SCA), had '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', and had given 'far too little regard to the uniquely expressive weight of the parodic form used.' So Sachs decided to examine the defence of parody in considerable detail. He kicked off memorably: 'Does the law have a sense of humour? This question is raised whenever the irresistible force of free expression, in the form of parody, meets the immovable object of property rights, in the form of trademark protection.'

Sachs made it clear that he gets trade marks, quoting from a US judgment where a trade mark is neatly described as 'a merchandising short-cut which induces a purchaser to select what he wants or what he has been led to believe he wants.' And the trade mark owner's thinking is described as follows: '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.'

Sachs discussed the nature of parody, saying that it's not meant to be kind: 'If parody does not prickle it does not work.' Parody is 'inherently paradoxical...original and parasitic, simultaneously creative and derivative.' In the case of trade mark parody, the trade mark must be recognisable or else the parody doesn't work, but the parodist can't take too much of the trade mark without being guilty of infringement.

Sachs then examined the nature of parody as a defence. He made the point that it isn't a separate defence, but rather part of the overall analysis: some parodies cause confusion, others don't; some parodies cause detriment, others don't. He said that the mere fact that the parody has a commercial element is not decisive; rather the issue is whether it's primarily commercial or primarily expressive. He said that the fact that the message could have been conveyed without the trade mark is not determinative either, because trade marks are very important and powerful means of communication. He went on to say that the medium is important too, so, for example, parody in a satirical publication is likely to be acceptable, as are 'lampoons that appear on T-shirts to be worn by young irreverent people who enjoy the idea of being gadflies.'

Sachs acknowledged that there was no criticism of the beer, but said that the parody doesn't have to relate to the product itself – it could refer to something else, like the power of branding, an issue companies are ultra-sensitive about: '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 14th century'. Here there was, at worst, an imputation of past racist labour practices, but Sachs didn't think this would damage the brand as '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.'

Beer drinkers would therefore not be swayed. Nor would 'media-literate purchasers', who bought the shirt 'precisely because it poked fun at enterprises considered as taking themselves too seriously (and) at the dominance exercised by brand names in our social and cultural life.' This meant that 'the use of the trademark was central to the project.' The fact that other means could've been used to convey the message was neither here nor there: '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.' Nor was the parody's quality an issue: '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.'

At the end of the day it was a case of balancing competing rights – did the harm done by the parody outweigh the free speech interest involved? Clearly not! Sachs found space for a last quote from the US decision of LL Bean: 'The central role which trademarks occupy in public discourse 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.'

IP owners will need to accept that parody has its place - just as parodists will need to accept that there are limits.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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