Gripe Sites, Culture Jamming & Media Activism - Can You Prevent the Unauthorised Use of Your Trade Mark?
It has become an article of faith among marketing gurus that brand owners should listen to and communicate with their consumers. In the past, advertising in South Africa has been a one-way street: consumers have been spoken to. What can be done when they start shouting back?
South African consumers are following international trends and are making their voices heard. The World Wide Web and information and communication technology have certainly made it easier for disgruntled consumers to reach a broad and diverse audience. Negative consumer reaction to advertising, products, services and popular culture can take a number of forms. It can range from something as subtle as a letter of complaint on the one hand, to what is sometimes referred to as media activism on the other. Some forms of consumer expression may not only negatively effect the public’s perception of the product or service in question but also the brand used in relation to the product or service, as well as the brand owner. Just how loud can consumers shout? Recent developments in Intellectual Property law seem to indicate that their bark may be as bad as their bite.
Popular forms of consumer expression in the USA and Europe are so-called "suck" or gripe sites. Unhappy consumers set up websites to air their views on a product or corporation and to invite other Internet users to do the same. The domain name of the gripe site usually includes the corporation’s trade mark together with the word "SUCKS" or some other disparaging word, for example XYZcompanysucks.com.
ICANN, the body tasked with the management of .com domain names (the most popular top level domain name) has a policy dealing with the resolution of domain name disputes. A number of gripe site disputes have been heard. In most cases where it was clear that the registrant was trying to make money from the complainant by registering the complainant’s trade mark as part of its domain name, the matter was decided in favour of the complainant. In contrast, where registrants used websites for fair comment, parody or criticism of the complainant, they were entitled to keep their domain registrations. At present there is no dispute resolution procedure for .co.za names such as that described above for .com. Uniforum, the body responsible for the maintenance of co.za domain names, has issued draft dispute resolution rules, but these follow international norms and the guidelines set by ICANN.
This form of consumer expression has surfaced in South Africa. Greg Stirton currently operates a website under the domain name hellkom.co.za. The site claims to offer information on Telkom, South Africa’s only landline telephone operator. The website is not run for commercial gain and Mr Stirton is adamant that his views fall within the boundaries of fair criticism or comment and are in the public interest. Telkom would not be able to rely on the dispute resolution process to prevent the use of hellkom.co.za. Likewise, any other brand owner who may be the victim of a suck site may find it difficult to prevent the incorporation of its trade mark in a domain name in respect of a website used entirely for fair comment and no financial gain.
South African Airways (SAA) has also been targeted in this manner. Vern Six registered the domain name neverflysaa.com and operated a website on which he described his bad experience while flying with SAA. As this was a .com domain name, SAA could rely on the ICANN dispute resolution rules and applied for the deregistration of the name. SAA based its claim on the rights it held in its trade mark "SAA" which it had registered in South Africa and in numerous other countries. The application was unsuccessful. The panellist reviewing the matter ruled that SAA had failed to prove that its trade mark "SAA" was confusingly similar to the domain name neverflysaa.com. The domain name is still registered in the name of Vern Six but the website does not appear to be operational.
With more and more consumers having access to the Internet and finding out just how easy it is to express their views online, it is likely that the number of sites of this type will increase. There is already a website operating under the name unproudlysouthafrican.co.za inviting consumers to rate local companies.
At the opposite end of the spectrum of consumer criticism one finds what is sometimes referred to as culture jamming. A definition of the term "culture jamming" will not be found in a legal or traditional dictionary. According to Wikipedia, a free online encyclopaedia, culture jamming "is the act of using existing mass media to comment on those very media themselves, using the original medium’s communication method". It is suspected that the term is derived from the phrase "radio jamming". It is a form of resistance to the perceived dominance of popular culture. The act of defacing billboard advertising or the alteration of a well-known trade mark or advertising image are both examples of culture jamming. The corporation’s Intellectual Property is used against it, as a form of social comment and counterculture rebellion. The term culture jamming is associated with The Media Foundation, the publisher of Adbusters magazine. Examples of culture jamming can be found on its website at www.adbusters.org. South Africa has its own culture jammers in the form of Justin Nurse and Laugh it Off Promotions cc. Laugh It Off produces t-shirts employing the general layout of well known advertising images, altered to display a message of "social satire or parody". One of the t-shirts produced by Laugh it Off is an altered version of South African Breweries International (Finance) BV’s (SAB) Carling Black Label beer label. SAB’s trade mark, "BLACK LABEL", was replaced by "BLACK LABOUR", while the slogan "AMERICA’S LUSTY, LIVELY BEER – BREWED IN SOUTH AFRICA" was replaced by "AFRICA’S LUSTY, LIVELY, EXPLOITATION SINCE 1652 – NO REGARD GIVEN WORLDWIDE".
In a previous articleHYPERLINK "/Publications/Articles/Trademarks/Pages/The_laughing_is_over_–_Setbac_e_Mark_dilutio.aspx", Charles Webster discussed the proceedings instituted by South African Breweries (SAB) against Justin Nurse of Laugh it Off on the basis of trade mark dilution by tarnishment. Justin Nurse raised the defence of freedom of expression. The matter found its way to the Constitutional Court (CC) and the salient points of the judgment handed down by the CC are:
The CC held that Intellectual Property (IP) rights should be placed on an equal footing with other fundamental rights enshrined in the constitution. It conceded that the anti-dilution provisions would prohibit certain expressive conduct in relation to registered marks of repute, but it assumed that the limitation is reasonable and justifiable in an open and democratic society. Nevertheless, the court felt compelled to interpret the provision in a manner compatible with the right to free expression.
Trade mark infringement only occurs if "unfair advantage" or "unfair detriment" is shown. The detriment must not be flimsy or negligible and must be substantial in the sense that it is likely to cause substantial harm to the uniqueness and repute of the trade mark. The CC found that there was no real evidence that SAB would suffer financial loss and ruled in favour of Laugh it Off.
It is important to stress that the anti-dilution provisions are still available to trade mark owners but that they are now required to prove the likelihood of substantial harm. Once infringement has been established, it will also be necessary to overcome the freedom of expression defence.
Consumer activists are also targeting blue chip companies for their perceived lack of social responsibility. Nike has been severely criticised for its alleged use of child labour and has found its famous payoff line changed by culture jammers from "Just do it" to "Just stop it".
As a result of these developments, it is now more difficult for trade mark owners to prevent the unauthorised use of their well-known trade marks by third parties, where such use is in the form of social comment, parody or activism.
Brand owners are often asked why they do not simply ignore this type of infringement, as court action is often portrayed as a "David and Goliath" situation, resulting in sympathy for the offending party. Legal action also broadens the culture jammer’s exposure. Brand owners should be aware of the social context within which their brands live and ensure that the brand communicates favourably on all levels.
It has become a delicate balancing act: consumers now have a voice and brand owners need to listen; but the slurring, tarnishment or defaming of a brand will have serious consequences for both the brand and the brand owner. An enormous amount of time, effort and money goes into developing, maintaining and protecting a brand; but it now goes beyond merely producing and selling a branded product. It would appear that brands now also need to have a social conscience.