Whether on the streets or in the papers, by now many South Africans have seen the t-shirt: the Black Label brand delivering a message very different to that of the original beer.
After meeting in the Cape High Court and the Supreme Court of Appeal, on March 8th the Constitutional Court’s 11 judges heard the matter between Laugh It Off (LIO) and South African Breweries (SAB). In considering whether LIO infringed the SAB trademark, the question for the court was whether guarantees for freedom of expression should affect intellectual property rights. One of the issues for the court when balancing the two rights is the defence of parody. What role does parody play in this case, and to what extent is it a defence against the infringement of a trademark?
The issue takes into account a section of the Trademarks Act that requires the party alleging an infringement to establish, among other things, that the trademark has been used without authorisation in the course of business, and that such use would take unfair advantage of – or be detrimental to – that party’s brand.
The outcome of this type of inquiry depends on the message or meaning associated with such unauthorised use. LIO argued that the message on their t-shirts relating to “black labour” and “white guilt” should not necessarily be understood as having one meaning, and that it especially should not be understood as a comment on SAB’s labour practices. Rather, they said, it is a complex message capable of a number of interpretations, with the iconic Black Label brand as the medium.
Parody is defined as “a literary or artistic work that imitates the characteristic style of an author or a work for comic effect or ridicule”; it needs to mimic an original in order to make a point. The legal significance of this is that there are grounds for arguing that parody could justify the mimicking of an original in order to deliver a social or political comment (for the purposes of criticism or humour). But is it enough to establish that the use of an original work was fair?
At the time of going to print, in considering whether the use of a trademark is capable of protection by the constitution, the Constitutional Court is deciding on a test for determining whether an expressive act amounts to parody – and thereafter the weight to be attached. Also, because the LIO argument is that the message on the t-shirt is capable of a number of meanings, the court will be called upon to look at what interpretations should be given to an expressive act if it is capable of more than one meaning. It may well be that the fact that there is more than one meaning is sufficient, and accordingly that an inquiry into the various meanings would be superfluous.
If the court accepts any one interpretation, from which a reasonable connection can be established between it and the Black Label brand, it is more than likely that it will look at that interpretation as a parody of the brand.
The question will then be whether this is sufficient to tip the scales in favour of freedom of expression. Still, even if the Constitutional Court establishes that the interpretation of LIO’s t-shirt should be understood in the context of parody, in South African law parody in itself is not (yet) necessarily a defence against the infringement of a trademark. So this case could possibly result in a ruling on whether – and to what extent – parody can be accepted in our law as a justification for the infringement of a trademark.
Reggie Manyakara is a candidate attorney at Rosin Wright Rosengarten, a firm specialising in entertainment and media law based in Johannesburg. RWR act for the Freedom of Expression Institute, who appeared as amicus curiae in the above case. Visit the firm’s new website at www.rwr.co.za.