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Has ABSA triggered the Streisand Effect?

Thursday, March 29th, 2012

Amalgamated Banks of South Africa (ABSA), a subsidiary of Barclays Group plc, is threatening to take the South African trade union Solidarity to court for its reworking of the ABSA slogan “Today, Tomorrow, Together” as “Today, tomorrow, goodbye” on a website run by the union. Solidarity has set up a the website* to protest retrenchments of staff by ABSA. Attorneys representing ABSA reportedly sent a letter to Solidarity which indicated that ABSA would approach a court to require Solidarity to stop using the slogan and to shut down its website.

Is there a basis in South African law for a court to prohibit Solidarity from using the slogan? After all South African law is governed by the Constitution and in particular the Bill of Rights, the Constitution is the supreme law. Section 2 of the Constitution states:

“This Constitution is the supreme law of the Republic; law or conduct inconsistent with it is invalid, and the obligations imposed by it must be fulfilled. ” The Bill of Rights in particular over rides any other law; “the Bill of Rights applies to all law” (s8(1)). The Bill of Rights entrenches the right to freedom of expression (s16(1)
“Everyone has the right to freedom of expression, which includes ­

(a) freedom of the press and other media;
(b) freedom to receive or impart information or ideas;
(c) freedom of artistic creativity; and
(d) academic freedom and freedom of scientific research.”

The Bill of Rights also guards the right to fair labour practises (s23(1)) states that “Everyone has the right to fair labour practices.” The section goes on to set out specific aspects of fair labour practises such as the right to join a union. Because the Bill of Rights grants rights in respect of labour one would expect that speech about labour, and in particular speech which relates to the collective bargaining between unions and employers which stems from the right to form and joins unions is constitutionally important speech.

There are instances in which some limitation of a right in the Bill of Rights is allowed but that limitation would have to be justified. Justification requires that the reason for limiting the right be sufficiently important and also that the right be limited as little as possible.

The result of the constitutional protection of freedom of expression, including, and especially expression relating to collective bargaining is that a judge deciding an application by ABSA to prohibit free expression by Solidarity would require a compelling basis for granting even an interim order. South African courts, like courts in other countries that value freedom of expression usually don’t give orders that will have the effect of preventing speech, instead they allow someone aggrieved by speech free to make a claim for any damages that he might have suffered due to the speech.

Is there a basis on which a court can consider limiting Solidarity’s freedom of expression? Since this is a legal blog its not surprising perhaps even reassuring that I’ve inserted a disclaimer at this point. Press reports tell us only that Solidarity has received a letter from attorneys representing ABSA and that the letter intimated that ABSA would request a court to give an order prohibiting its use of the ABSA slogan and requiring that the website be shut down. It is not clear from the press reports what the legal basis of the application to court would be if an application is made. The legal basis may or may not appear from the letter.

What follows then is a quick look at the possible bases for an application, these are defamation, copyright, trademark and disparagement.

For ABSA to succeed in silencing Solidarity on the basis that either the changed slogan or the website itself is defamatory it would have to convince a judge that (i) the slogan or website is defamatory and (ii) that the speech should be prohibited because it will suffer the kind of harm for which an award of damages won’t be adequate compensation. There is only reported case in South Africa in which a court was asked to prohibit speech on a website:

    Tsichlas & another v Touch Line Media (Pty) Ltd

2004 (2) SA 112 (W). In that case the judge ruled that the best answer to bad speech is more speech. In that case Ms Tsichlas who alleged defamation had an opportunity to reply in the forum in which she alleged that she had been defamed. She was given an order prohibiting further speech by others.

For a Solidarity statement to be defamatory ABSA would have to prove that it was (i) intentional (ii) wrongful words(iii) that identify a particular person or persons and (iv) tend to demean the person/s referred in (v) the eyes of the right thinking members of the community within which the speech should be interpreted. Is is wrongful for a union to put a website criticising retrenchments by an employer? I don’t think that the Bill or Rights would allow a court to think so.
However even if the criteria that I have listed are met Solidarity could still claim truth in the public benefit, a defence that someone accused of defamation could raise. Since it seems likely that Solidarity would raise such a defence it seem unlikely that a judge wouldn’t give Solidarity the chance to be heard by for example issuing an interim ex parte order. The issue of whether the reworked slogan is defamatory requires quite different considerations to a factual claim such as whether ABSA is firing a specific number of people. Courts are familiar with laudatory language in marketing material such as “the best beer in the world” and appropriately courts tend not to take such hortatory language too seriously.
If someone were to a sue a brewery claiming to make the best beer in the world on the basis that another beer has received first prize at a global brewing contest a court wouldn’t entertain the idea that the slogan should be taken so seriously that the brewery could be regarded as having misled the consumer. ABSA’s slogan “Today, Tomorrow, Together” is apparently intended to imply continuity. Solidarity’s reworking of the slogan as “Today, tomorrow, goodbye” seems to be that retrenching staff, including some who worked for ABSA for 30 or 40 years does not demonstrate the claimed continuity. Both slogans operate as a level of abstraction and emotive connotation that it would be difficult for a court to decide if the words “Today, Tomorrow, Together” are true and the words “Today, tomorrow, goodbye” are false when applied to ABSA. Exactly what kind of evidence could one lead?

Is the use of the ABSA slogan which is presumably registered as a trademark in South Africa, or the word ABSA in “” a trademark infringement? Solidarity isn’t using the words to sell banking services so any claim would have to be in terms of the “anti-dilution” provisions. South Africa has the leading case in the world on the interaction between a claim under an anti-dilution provision in a trademark statute and freedom of expression: Laugh it Off v South African Breweries. In Laugh it Off the Constitutional Court ruled that South African Breweries should have alleged and proved actual harm, that is people not buying their beer because of the parody T shirts sold by Laugh it Off. To obtain a court order prohibiting use “ABSA” or the slogan I understand the Laugh it Off case as requiring ABSA to produce some kind of evidence showing that people are not banking with them as a consequence of the use of the trademarks by Solidarity, and at that point a court would still have to engage in an enquiry whether a prohibition on use stifles freedom of expression too much and whether ABSA shouldn’t simply have to sue for any damages that it could prove.

Is there copyright in a single word or phrase in South African law? South African copyright law requires that a “work” should be original (that is not copied from another) and reduced to a material form. It also provides that copying a small portion of a work is not a copyright infringement. There are some commentators who claim that copyright can subsist in a single phrase although they tend to undercut their own arguments by then making arguments that derive from trademark that continued use and association can render otherwise banal phrases into some form of “property”. That is trademark law not copyright. I am sceptical that a three word alliterative phrase is sufficient to constitute a work. But if a court were to take that unique approach then the question would arise who the author is.
A quick google search reveals that the N.J. Dept. of Community Affairs, Division on Aging, published a book entitled “Today, tomorrow, together” in 1981. But the state of New Jersey wasn’t the first to use the phrase because in 1956 the phrase was used by the (US based) National Health Council for its book “Guides to action on chronic illness, today, tomorrow, together”. It seems unlikely that ABSA has a deed of cession from the National Health Council but I am willing to be surprised on this issue. Of course if a court were to rule that there is copyright in a single word or phrase then the question would arise whether Solidarity’s use falls under one of the exceptions such as criticism, and fair quotation. Is it fair? Remember the point of copyright law is not to enable corporations to censor speech they don’t like but to allow authors to charge for copies of their works. There is no market in which people buy or rent the slogan.

Disparagement is a form of unfair competition. It is a common law delict, a sub-set of unfair competition. The pre-Constitutional formulation of the delict requires an applicant to show at leas probable damage through loss of custom as a result of the allege disparagement. Since the courts are required to develop the common law to accord with the Constitution it is arguable that a showing of actual damage should be required. But in this case Solidarity is not a competitor of ABSA, its a union fighting an employer. It would be an astonishing extension of the common law to use an anti-competition delict against a union.

This all too brief look at the legal bases on which a court could silence Solidarity suggests that there isn’t a legal basis compelling enough to over-ride freedom of expression.

Instead the mere threat seems to have generated quite a lot of press attention. ABSA may suffer from the Streisand effect.

*Thanks to Bob Jolliffe for pointing out that I had mistyped as The Stop ACTA site is here.

Copyright in ideas? The real McCoy or more yada yada?

Thursday, August 18th, 2011

No one sells an advertisement, instead advertisements are themselves used to sell other things.The result is that there aren’t many copyright cases about ads, those that do come up tend to involve the unauthorised use of sound recording or possibly film footage or photographs. But a current spat between two South African insurers over rival advertisements raises far more interesting issues about the extent to which copyright can be claimed over an idea, whether South African copyright law protects parody, and whether South African copyright law upholds, or unconstitutionally restricts freedom of expression.

Santam, a South African insurance company, recently aired a series of advertisements featuring Ben Kingsley. One of the ads has Kingsley dressed in a business suit and sweater soliloquising about appearance and underlying reality as he walks barefoot along a beach, with a classical piano piece playing in the background. Kingsley asks the viewer “Is yours full on proper insurance or is it sort of kind of well you are not totally covered for that insurance?” Kinsley is then met by four look alikes. The beach is instantly recognisable as Noordhoek Beach to those familiar with Cape Town, with the weather featuring that bleak grey cloudiness so often prevailing on the South African Atlantic coastline. The use of a classical score, a respected international actor and unusual length (60 seconds) is presumably intended to suggest a serious discussion, after all it is insurance that is being discussed. The message of the advertisement is that other insurers do not offer the real insurance that Santam offers.

The other advertisement was aired by Dial Direct a direct insurer which does not use brokers and claims to offer lower premiums and more efficient claim mechanisms than other insurers.South African television viewers will already be familiar with a series of ads which feature a talking hand saying “yada yada yada yada…..” Here is one example.Dial Direct produced another ad that shows a figure dressed in a business suit with a sweater, walking along a beach with a talking head for a head. The figure repeats “yada yada yada” several times and then is met by three other similar figures. The ad then ends with the Dial Direct punch line “less yada yada, more chi ching”. The beach is also Noordhoek beach under a clouded sky but the lighting shows much greater contrast. The ad also features a few chords of a noticeably different classical piano piece.

Santam obtained a temporary interdict* against the airing of the Dial Direct advertisement alleging copyright infringement and disparagement. The legal dispute continues and the High Court will be asked to rule on whether a final interdict should be granted. This blogpost looks at the copyright issue and not the disparagement issue. If you haven’t already watched the ads you should do so now, this blog will (almost certainly) be here when you come back.

Santam alleges that Dial Direct “copied” the ad. The ad is a cinematographic work according to the taxonomy used by the 1978 Copyright Act; ‘ “cinematograph film” means any fixation or storage by any means whatsoever on film or any other material of data, signals or a sequence of images capable, when used in conjunction with any other mechanical, electronic or other device, of being seen as a moving picture and of reproduction, and includes the sounds embodied in a sound-track associated with the film, but shall not include a computer program’

According to the 1978 Act is ‘“copy” means a reproduction of a work, and, in the case of a literary, musical or artistic work, a cinematograph film or a computer program, also an adaptation thereof…’. Adaptation is defined in the Act in respect of literary,musical and artistic works, and computer programs but not cinematographic films. Quite why the drafters of the 1978 Act chose to define copy to include the making of an adaptation (the equivalent of a derivative work in US jurisprudence) is unclear. Sections 6, 7, 8 and 11B, dealing with literary or musical works,artistic works, cinematographic films and computer programs respectively, each set out the exclusive rights granted to those deemed to be authors in the Act. In the section reproducing a work and making an adaptation are listed as separate exclusions.

Since a cinematographic film is described as a fixation of images the act of reproducing that film must necessarily involve reproducing that fixation. That isn’t what happened in this case. Dial Direct did not mechanically or digitally copy any of the footage of the advertisement. Could the Dial Direct advertisement be regarded as an adaptation? The 1978 Act fails to define adaptation for cinematographic film. Looking at the definitions of adaptation for other works should assist in giving an idea of what the term can mean. Adaptation for a computer program is
‘(i) a version of the program in a programming language, code or notation different from that of the program; or
(ii) a fixation of the program in or on a medium different from the medium of
fixation of the program’.

Adaptation of a musical work ‘includes any arrangement or transcription of the work, if such arrangement or transcription has an original creative character’. Reasoning by analogy these suggest that an adaptation of a cinematographic film would include changing the format from a widescreen to one suitable to television viewing, or changing the format from Blue Ray to High Definition or 3 Dimensional super high definition or whatever the latest format by which the movie industry hopes to sell copies to consumers who already own versions in the previous six formats.

Santam’s claim in its’ court papers is that both ads feature a figure in a suit walking on a beach talking about insurance and that that constitutes copying. The similarity of the ads amounts to copying. It seems that Santam is asserting exclusivity not in the film shot for it but in the idea of a man in a suit walking on a beach and talking about insurance. One of the first truisms that law students encounter in a course on intellectual property is that copyright extends to expressions of ideas but not to ideas themselves. Anyone can write a play or a film about star crossed lovers whose feuding clans forbid their love. The copyright holders in West Side Story couldn’t prevent Baz Luhrmann from distributing William Shakespeare’s Romeo + Juliet. A court which chose to extend copyright to ideas would be inviting a swarm of unruly issues. It is fairly easy to determine whether an artefact is a mechanical or digital reproduction of another, look at the two together, or in the case of video in succession. It is far more difficult for a court to determine whether two different expressions are of the same idea. If an idea is something other than a particular expression it is nevertheless only accessible when mediated through a particular expression. The court never has unmediated access to the idea itself. How can the court demonstrate that two expressions are of the same idea? It can either simply assert that that is the case or it can itself create another expression that apparently conveys the idea, and then assert that the third expression is equivalent to the other two being compared and that all three are expressions of the same idea. Philosophers have argued about the nature of ideas and their relationship to expression at least since Plato without any resolution. Introducing intractable philosophical problems of that order does not seem like an efficient use of judicial resources.

But what if a court were to rule that the similarity amounted to copyright infringement.The Dial Direct ad seems to be intended as a parody of the Santam advertisement. If there is infringement is it nevertheless defensible in South African copyright law as parody?

The possible exceptions in the 1978 Copyright Act for film are criticism (Section 12(1)(b) or quotation (Section 12(3)). Does the concept of criticism extend to parody? It is difficult to say since there is no case law on the exceptions in South Africa. Perhaps quotation would constitute a better place to locate a parody defence. Section 12(3) states: ‘The copyright in a … work which is lawfully available to the public shall not be infringed by any quotation therefrom, including any quotation from articles in newspapers or periodicals that are in the form of summaries of any such work: Provided that the quotation shall be compatible with fair practice, that the extent thereof shall not exceed the extent justified by the purpose and that the source shall be mentioned, as well as the name of the author if it appears on the work.’ Fair practise is not defined although Professor Dean suggests that it should follow the four factor analysis of fair use in United States copyright law. A fair use analysis of the ads may prove instructive.

The four factors to be taken into account in determining fair use are:
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.

The purpose of the use seems to be a parody intended to accentuate the difference between the companies; Santam as a traditional insurer reliant on the sense of security that it imparts to its customers and Dial Direct’s image of low hassle value for money. It is thus commercial speech intended to inform consumers. Where Santam’s ad suggests that other insurers are not real insurers Dial Direct’s ad can be seen as a humorous reply that there should be less talking and more value for consumers. Dial Direct certainly did not slavishly copy nor intend its ad to act as a substitute for the Santam ad, the ad is transformative. Factor 1 favours Dial Direct.

Santam’s ad is also commercial speech, intended to persuade consumers that Santam offers real insurance whereas other insurers do not. Both ads are commercial speech. Commercial speech does have some constitutional protection although less than all important political speech. Factor 2 seems to favour neither party.

As I’ve already discussed the amount and substantiality of what was “copied” suggest that there has not been copying at all. Factor 3 favours Dial Direct.

Since the Santam ad is not itself sold or let out for a fee but is instead intended to persuade people to buy insurance from Santam there can be no effect on the market for the ad. The market for the ad consisted of one customer which commissioned the ad. Could the Dial Direct ad be said to reduce the value of the ad? Only if copyright law is construed so as to award a right to market share merely because a particular company has spend considerable sums on advertising. Factor 4 favours Dial Direct.

On a fair use analysis Dial Direct’s parody would be permissible.

What about acknowledgement of the source and author? The name of the author, that is the producer of the ad does not appear on the ad and therefore need not be acknowledged. But should the Dial Direct ad have mentioned the Santam ad as the source of some of its ideas? Since Santam complains in its court papers that consumers are likely to recognise that the Dial Direct ad is referring to the Santam ad it doesn’t seem as if a formal lack of acknowledgement of the source of the ad would satisfy Santam. The 1978 Copyright Act does not state what the consequences are of a failure to acknowledge a source. Does it mean that a quotation is not fair? What if the source is obvious? What remedy should follow? None of these questions are addressed in the legislation or case law. For a more probing discussion of the exceptions relating to film in South Africa see a report by the Program for Information Justice and Intellectual Property at American University entitled Untold Stories in South Africa: Creative Consequences of the Rights Clearance Culture for Documentary Filmmakers (opens a pdf)**.

If the 1978 Copyright Act is read so as to forbid parody then it unconstitutionally restricts freedom of expression. Section 16 of the Bill of Rights states
’16. Freedom of expression

Everyone has the right to freedom of expression, which includes ­
a. freedom of the press and other media;
b. freedom to receive or impart information or ideas;
c. freedom of artistic creativity; and
d. academic freedom and freedom of scientific research.’

Legislation that conflicts with the Bill of Rights is liable to be struck down by the courts. When a court must consider legislation passed by undemocratic governments prior to 1994 it does not need to show the kind of deference due to legislation passed by a democratically elected legislature. If a court rules that there has been infringement then this case will be the first case since the Laugh it Off to consider the interface of freedom of expression and intellectual property law. The difference is that in this case the respondent, Dial Direct, has chosen to directly challenge the constitutionality of the Copyright Act. Although this blog discusses the possibility of an defence of parody arising from the exceptions in the Copyright Act at some lengthy Dial Direct has taken a different approach arguing that a parody is by its nature neither a copy nor an adaptation and is therefore not infringing, but if found to infringe, to constitute speech protected by the Bill of Rights, and that to the extent that the Copyright Act conflicts with the Bill of Rights the Bill must prevail.

How will the courts rule on these issues?

* An interdict is the term used in South African common law for an injunction.
** I advised the authors of the report on South African copyright law.