On April 8 2004, the Mail & Guardian and Mail & Guardian Online published an article by M&G sports columnist Tom Eaton about the new Pro20 cricket series in South Africa.
“Clearly the Pro20 series, like its predecessor in England, the popular 20/20 series, is aimed at people who know nothing about cricket,” Eaton wrote. Hence, the headline of Eaton’s column was “Cricket for dummies”.
The Concise Oxford Dictionary defines “dummy” as a mainly North American term for “a stupid person” — or, in this case, someone who is “stupid” when it comes to cricket.
But then, on April 13, M&G Online editor Matthew Buckland received an e-mail from Wiley Publishing in the United States that sternly objected to the column headline. Wiley publishes the well-known For Dummies series of reference books and products.
Titled “Trademark infringement of Wiley’s For Dummies® mark”, the e-mail came from Kimberly Ward Skeel, manager of Wiley’s global brand review and corporate trademarks department. “The [For Dummies] series has enjoyed tremendous success since 1991 with over 100 trademark registrations and applications in the United States and other jurisdictions … many Dummies formatives, and the For Dummies trade dress. The For Dummies® trademarks appear on books, magazines, CD-ROMs, trade and consumer advertising, catalogues, point of sale displays, websites, and other promotional material, all distributed worldwide by Wiley or its authorised licensees,” the e-mail said.
According to Skeel, Wiley “polices” the use of the phrase “For Dummies” to prevent the illegal use of its trademarks, taking “all reasonable steps to prevent others from using its marks, or marks confusingly similar to Wiley’s marks”.
Skeel went on to request that the M&G Online “remove all references to For Dummies® from the aforementioned article, and refrain from using the For Dummies® mark, or any other mark that is confusingly similar to any Wiley mark, in any future articles on Mail & Guardian Online“, and asked for written assurance by April 30 that the M&G Online has complied to this request.
Buckland on Monday said: “We certainly intend to fight the request and, in fact, think it is a ridiculous request. We will not be removing the story nor changing the headline of the story as a result of the request from the global brand review and corporate trademarks department and we are prepared to fight it all the way.
“While we obviously respect trademark and copyright law, we believe that this instance is an overly strict interpretation of the laws. How can a company trademark words of the English language in such a way that we cannot use them for editorial purposes?”
The Sunday Times website on Monday April 13 carried a report on this matter, which quoted the Publishing Law Centre in the US as saying: “The fair use and nominative use defences are to help ensure that trademark owners do not prohibit the use of their marks when they are used for the purpose of description or identification. Trademark law also permits an author of a non-fiction work to include content that is favourable and/or critical of a trademark owner’s products or services.”
The International Trademark Association (ITA) agrees. On its website, the ITA says that trademark law permits the use of another’s trademark without consent if the use of the mark is made “in good faith for the purpose of merely describing the goods or services to which the mark relates or to accurately indicate compatibility with another’s goods or services”.
The ITA cautions against “intentionally using another’s mark for the purpose of benefiting from the good will associated with the mark” and the use of a trademark “for the purpose of promoting one’s own goods or services without … consent”, and warns against confusing customers by suggesting suggest sponsorship or endorsement by the trademark’s owner. These are examples of trademark infringements.
However, the ITA’s comments may pertain more to United States law than international or South African law. “We are not publishing a book in competition with the For Dummies book series, but are publishing a single article — using a relatively common phrase from the English language,” Buckland said.
Nola Bond of law firm DM Kisch Inc agreed. “Generally normal English words that are descriptive cannot be trademarked,” she said, “unless through use the trademark becomes distinctive, as is probably the case with Wiley’s For Dummies trademark.”
She added, however, that the For Dummies trademark is not registered in South Africa (it is a pending application that gives no statutory protection). “Even if the marks were registered Wiley would have to show that there is a likelihood of the public being deceived or confused into believing that the M&G article is in some way connected with Wiley. This is highly unlikely and the selection of the title was simply the best euphemism to describe the thrust of the article,” Bond said.
Wiley could still attempt to stop the M&G‘s usage of “for dummies” if the publisher shows its trademark is well known in South Africa (as defined by the Trade Marks Act) in relation to book titles. However, a likelihood of deception or confusion in the public’s mind must still be shown, which seems unlikely.
If the trademark For Dummies were registered, Wiley could also try to show that the M&G‘s usage has the effect of diluting its trademark rights. Dilution usually takes place if there is unfair advantage taken of someone’s trademark, or the usage has the effect of tarnishing the mark (as illustrated in the case of South African Breweries vs Laugh It Off, where the Black Label mark was transformed to Black Labour).
No deception or confusion needs to be shown in dilution matters, which are aimed at protecting a trademark’s integrity.
“It would be difficult for Wiley to succeed on this ground if it held a registered trademark, as the M&G‘s usage of ‘for dummies’ does not fall within the ambit of these provisions,” said Bond.
The M&G‘s editorial on Friday April 16 said: “Skeel’s warning symbolises all that is pernicious about the international system of patent protection overseen by the World Trade Organisation. Everyday phrases become owned by wealthy Northern corporates. What’s next — ‘and’, ‘or’, the comma, the full-stop? It gets worse. The term ‘rooibos’ is owned by an American company as is ‘basmati’, the fluffy rice native to India, and Elvis’s favourite ‘blue suede shoes’.”
It added: “The post-apartheid trade accord between the European Union and South Africa faltered and almost failed because we dare to produce sherry and port — by 2006, South African companies will have to give up these terms on their tipple and if the vintners of the North have their way, other names will follow too. No wonder that international trade and globalisation systems have such bad names.
“In the meantime, Ms Skeel, let this serve as our intention to defend. And we’re penning a title of our own. It’s called Voertsêk for Dummies