Laugh It Off wins case against SAB

T-shirt maker Laugh It Off has won its fight against South African Breweries (SAB) over its right to mock the Carling Black Label brand.

Justice Dikgang Moseneke, handing down a unanimous judgement in the Constitutional Court on Friday, found that SAB had not proved that Laugh It Off had infringed on the brewery’s trademark with the message on its T-shirts.

Laugh It Off had substituted the words “America’s lusty, lively beer, Carling Black Label beer, enjoyed by men around the world” with “Black Labour White Guilt, Africa’s lusty lively exploitation since 1652, no regard given worldwide”.

The case boiled down to balancing the right to freedom of expression guaranteed in the Constitution and the right to protect a trademark.

Justice Moseneke said SAB had failed to show a real or even probable likelihood that the T-shirts had economically harmed the Carling Black Label brand.

This was necessary in light of the Trade Marks Act which protects the trademark’s selling power rather than its dignity.

“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 [Carling Black Label’s] market dominance or

compromised beer sales,” Moseneke said.

Only a few hundred T-shirts appeared to have been sold, which was “negligible”, he said.

He compared this with SAB’s “awesome marketing machinery bolstered by impressive advertising spend on every conceivable medium”.

He also said the right to freedom of expression should not be “lightly trampled upon”.

In a concurring judgement, Justice Albie Sachs said: “The evidence indicates that everybody concerned with the T-shirts, whether producer or consumer, knew that they were intended to poke fun at the dominance exercised by brand names in our social and cultural life.”

He said the over-zealous application of the trademark law could have a detrimental effect on the free circulation of ideas.

Sachs also warned that big companies attempting to block free speech could do themselves more damage than good.

“... in the present matter simply bringing proceedings against Laugh It Off risked being more tarnishing of Carling Black Label’s association with bonhomie and cheerfulness than the sale of 200 T-shirts could ever have done,” Sachs said.

The dispute began in 2001 when SAB found that Laugh It Off was producing and selling the T-shirts. The company won an interdict in the Cape High Court, stopping Laugh It Off from using the trademark.

The T-shirt maker appealed to the Supreme Court of Appeal, which found in favour of SAB, saying the T-shirt’s message could take unfair advantage of, or cause detriment to, SAB’s trademark.

Laugh It Off then took its case to the Constitutional Court, where the court found in its favour and ordered SAB to pay the costs of the legal action.

The T-shirt company’s founder Justin Nurse said he was very happy with the judgement.

“It’s cool,” he said.

Nurse said Laugh It Off had another 1 000 Black Labour T-shirts that it would auction off on its website. It would donate the proceeds to an anti-alcohol abuse charity.

“And that will be the end of Laugh It Off,” Nurse said, adding that he was now doing “nothing”. - Sapa

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