BY CHRISTOPHER ROSANA & ETALE REAGAN
The freedom of expression is a fundamental right encapsulated in Article 33 of the Constitution. It underscores the aspirations of Kenyans to express ideas freely including artistic creativity. Classic examples of success stories include the famous local political satirical XYZ Show. However, the freedom of expression is subject to limitations; propaganda for war, incitement to violence, hate speech, advocacy of hatred or a limitation by a statute of Parliament. Creations of the mind, though intangible, can morph into intellectual property (IP) under Articles 11 and 40 of the Constitution.
A trademark (such as Safaricom, Coca Cola, Tusky’s) is a form of IP, is expressed in words, logos, phrases or graphic symbols used by manufacturers or sellers to distinguish their products from those of others preventing third parties from branding their goods or services in a similar way. On the other hand, parodies are transformative uses of a well-known trade mark/service mark for purposes of satirizing, ridiculing, critiquing, or commenting on the original work.
Jurists and scholars differ on the question of balancing freedom of expression when considering parodies against trademark protection. Trademark law, by its very nature creates an arguable limitation to the freedom of expression protecting trademark owners, assignees and licensees from brand dilution through tarnishment – which might suffice in the form of parodies. This creates a thin line for jurists to determine the borderline between freedom of expression in parodies and brand dilution. Little consensus exists on determinations on what amounts to freedom of expression and trademark infringement arising from parodies.
In some jurisdictions such as the United States of America, parodies are protected as free speech. In South Africa, parodies are allowed to the extent that they satisfy the requirement for fair dealing as was held in Laugh It off Promotions CC vs. South African Breweries 2005 On the flipside, parodies may cause devastating effects on the trade mark. Souter, J in the US case, Campbell v. Acuff-Rose Music, Inc, (1994) agreed that sometimes a parody might kill demand for the original. Further, parodies might quite legitimately be aimed at garrotting the original, destroying it commercially and artistically. It is therefore vital for courts to distinguish between ‘biting criticism which merely suppresses demand and infringement.
The Trademarks Act Kenya legally recognizes and validates trademark protection in Kenya. However, there isn’t much local jurisprudence on the interplay between trademark parodies and trademark infringement. In fact, the Trademarks Act does not expressly recognize trademark parodies. Perhaps it was feared that allowing trademark parodies in Kenya would injure the commercial stand of the owners. However, it should be noted that an idea should never be opposed only on the basis that society finds it unpalatable. Trademark parodies are within the constitutional realm of free speech and thus, they need not be expressly recognized in the statute. It would, however, aid greater legal clarity if the statute provided for trademark parodies.
Nevertheless, a trademark parody should not be intended for commercial purposes lest it amounts to infringement. Even though sometimes offensive, parodies do convey a message. Trademark parodies prompt us to laugh at the images and associations linked with the trademark. Conversely, we must not treat all parodies as fair use. It is vital to consider some indicators in separating parodies from fair use. For instance strength of the mark; similarity of the marks; proximity of the goods; quality of defendant’s product; evidence of actual confusion; marketing channels used; defendant’s intent and sophistication of buyers.
Justice Moseneke opined in the Laugh It off Promotions Case that the protection of the trade mark must be interpreted in the light of the constitutional right to freedom of expression and hence allow parody as an instance of “fair use” that does not violate the anti-dilution provision. The main aim of the parody must be to ‘amuse not confuse’. As such, the parody must not afford its creator undue commercial benefit and destroy the trade mark owners’ goodwill. Further, in contemplating injunctive orders, the parody must carry a substantial degree of real damage as to warrant an injunction by the courts. Simply put, parodies must not destroy the commercial viability of the original. They must be apt enough to draw attention to the criticism of the original without destroying its economic standing.
Christopher is a law and policy analyst, Etale is an LLM Candidate at University of Barcelona