Justin Nurse runs a small business, Laugh It Off Promotions. It sells a few hundred T-shirts each year. SABMiller is a huge multinational. Its sales of Carling Black Label beer in 2000/01 were 1,4-billion 340ml bottles. When Nurse developed a T-shirt that parodied SAB’s product, the latter launched vigorous litigation to protect its trademark against this ”onslaught”.
Benefiting from very traditional approaches to property law, SAB was successful in both the high court and the Supreme Court of Appeal.
These courts found that Laugh It Off had unjustifiably employed the reputation of SAB’s trademark in the course of its trade, to the detriment of SAB. The dispute finally reached the Constitutional Court.
The court accepted that the key provision of the Trademarks Act, Section 34(1)(c), served a vital purpose in preserving trade and commercial interests of owners of trademarks that have reputation. The section prohibits the use of these marks, which materially undermine their repute and thus it seeks to protect the identity and reputation of the mark. Expressed in the quaint language of trademark law, the section introduces an anti-dilution doctrine into our law.
But this is subject to the Constitution and, in this case, freedom of expression. Thus the court found that a finding of unfair use or likely harm to the repute of the Black Label mark depended on whether the expression on the T-shirt was protected by the right to free expression. If so, the task of a court was to balance the interests of the trademark against the claim to free expression.
On behalf of a unanimous court, Judge Dikgang Moseneke held that the anti-dilution doctrine must be given a content that is the least destructive of freedom of expression. To succeed against Laugh It Off, SAB had to prove a likelihood of substantial harm or detriment to its trademark. On the facts, Judge Moseneke held that ”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 market dominance or compromised beer sales”.
The case turned on the facts; SAB had provided no evidence that it suffered any harm or likelihood thereof. In itself, this raises the question as to whether there was any proof of harm that could have been shown or whether no harm was ever suffered, in which case SAB truly showed no sense of humour, a point hinted at by Judge Albie Sachs in his concurring judgement.
The judgement is an important assertion of the significance of freedom of expression. Firstly, the court confirmed that freedom of expression ”carries its own inherent worth and serves a collection of other intertwined constitutional ends in an open and democratic society”. Secondly, it insisted that the protection afforded by trademark law was always subject to the Bill of Rights.
These findings may be relevant to proceedings in which this newspaper is now embroiled. There is more than a touch of irony in the way in which the first judicial gag on a newspaper was imposed since the end of apartheid.
It appears as if the judge considered that the right to privacy trumped expression where the report is based on information not obtained legally. It may be that a person’s dignity and privacy should be protected from allegations that are unsubstantiated. But if the sole basis of the finding is that an illegal source of information affords protection to the complainant when the matter is in the public interest, then freedom of expression will fall short of protecting even the most accurate investigative reportage. If so, the principles of accountability and public debate will be impaired in this country. In this way, the joy that our law holds powerful private organisations to the Constitution has been severely tempered by the M&G judgement.