Court hears of 'death of the trademark'

Justin Nurse, the founder of T-shirt company Laugh It Off, made a bold statement on Tuesday when he took off his jacket in the Constitutional Court in Johannesburg. What looked like colourful Hawaiian flowers on his shirt appeared to be drawings of Saddam Hussein.

Laugh It Off is applying for leave to appeal against a Supreme Court of Appeal finding in September last year that it was illegal for the T-shirt company to use a caricature of an SAB trademark.

“We are dealing here with a form of creative expression ... that should endure protection by the constitutional right to freedom of expression,” Peter Hodes, SC, advocate acting for Laugh It Off, said at the beginning of his address.

Hodes was also the lawyer who recently represented Mark Thatcher, the son of former British prime minister Margaret Thatcher, on alleged Equatorial Guinea coup charges.

The company raised the ire of the global brewing giant by printing a T-shirt with the words: “Africa’s lusty, lively exploitation since 1652, Black Labour—White Guilt, No regard given worldwide.”

SAB was stung by the racial connotations and took the company to court.
Both the Cape High Court and the Supreme Court of Appeal ruled in favour of SAB, effectively banning the sale of the T-shirts.

The Constitutional Court now has the complicated task of deciding whether the right to freedom of expression means Laugh It Off is entitled to sell the T-shirts, or whether it is a case of trademark infringement.

It is not an easy job to address the Constitutional Court. The 10 judges grilled the advocates, interrupting their pleas with sharp and complicated questions.

Hodes argued that SAB has not succeeded in proving that the shirts caused the brewery economic harm.

“If you want to limit someone’s freedom of expression, you will have to establish economic harm,” he said.

He argued that a company that sells 1,4-billion litres of beer per year is unlikely to feel any negative effect from the T-shirts.

When asked about the meaning of the shirt, Hodes tried to explain that it conveys a social comment and is not a racial attack on SAB.

“It [the shirt] says nothing about beer, about SAB or about their labour practices. Someone saw the trademark and saw the words and thought: ‘Let us make a statement with it, not about the beer but about the abuse of black labour since 1652.’”

Hodes also argued that freedom of expression should be considered a more important right than protecting intellectual property.

Laugh It Off was supported by the Freedom of Expression Institute (FXI), which acted as amicus curiae (friend of the court).

In his strong argument, advocate Gilbert Marcus, SC, stated on behalf of the FXI that the right to freedom of expression should protect the shirt, because it is a parody.

“It is in the essence of a parody that it borrows something from something else,” he said.

He tried to explain that Laugh It Off was able to succeed in conveying its social message only with the use of the SAB Carling Black Label brand.

“If the whisky brand Johnnie Walker Black Label was used, then the parody would have failed and would have failed fundamentally.

“The parody succeeds because it strikes a blow at the myth of the happy and content black working class who come home and drink Black Label to relax.”

The FXI stated that the case is also about the relation between two rights.

“We accept there cannot be an a priori hierarchy.”

Marcus underpinned his argument with the assumption that trademark owners already endure massive protection by the law, and limitation of this monopoly could be in the interest of freedom of expression.

The SCA’s judgement that Laugh It Off could have found other ways of expressing its message was also attacked by the FXI.

“It lies in the essence of freedom of expression that it includes the freedom to choose the means of communication.

“In the 21st century we do not shout messages from rooftops or hang them on lamp posts,” Marcus said.

In his plea on behalf of Sabmark International, which holds the Carling Black Label trademark and licenses it to SAB, advocate Philip Ginsberg, SC, focused on the fact that an infringement of the trademark was enough to establish that the right to protection of intellectual property was violated.

He also contradicted Laugh It Off’s claim that it was making a social comment.

“His [Nurse’s] purpose is to create something that is controversial, eye-catching and sells T-shirts. This is shown by his other T-shirts that range from pornographic to derogative.

“The message of Laugh It Off is degrading and racially inflammatory, and it cannot be seen as humour or a parody,” said Ginsberg.

“The purpose of the message is to attract attention in order to sell T-shirts and make money at the expense of someone else’s property.”

SAB is also concerned about the future of trademark infringement if the Constitutional Court decides to rule in favour of Laugh It Off.

“If you allow T-shirts now, it will be mugs tomorrow. Inevitably, it will be everywhere and it will be the death of the trademark,” said Ginsberg.

The court reserved judgement.

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