It is not unusual to find companies and individuals in Africa infringing on copyrights and trademarks of Western brands. However, Africans are not the only ones doing it. Indeed within the USA and across the globe diverse groups of people and companies engage in infringement acts/activities daily. What is unusual, however, is that a Western brand is willing to take the fight to Africa and sue infringers in Africa on African soil.
That is the case we have here in this episode of Africa Fashion Law™ on Ladybrille.Specifically, an excerpt of the story follows before we look at the law:
“We can think of a few puns involving several luxury brands names, but perhaps none quite as real – or costly – as the aforementioned ‘Dolce & Banana’.
Costume jeweller Mijou Beller has been trading under the name from her seaside location near Cape Town, South Africa, for 12 years, but has incurred the wrath of the Milanese fashion label, Dolce & Gabbana.
WWD report how Beller has been served with a lawsuit by the Italian brand, even though she has since modified the name of her store – which was unsurprisingly a hit with tourists photographing themselves before her shopfront – to simply, ‘Banana.’
The affidavit accuses Beller of “objectionable conduct” and “diluting” the Milan Fashion Week brand’s namesake.
“The name Dolce and Banana makes a mockery of the well-known trademark Dolce & Gabbana,” read the complaint, filed to the Cape Town High Court.
Beller has claimed that she cannot afford to fight the 100,000 Rand lawsuit (approx £8,140), and responded by rebranding her business to Banana.
Dolce & Gabbana’s local legal representatives claim Beller ignored two previous warnings, the first one apparently issued six years ago.
In a bid to save herself and her business, which sees her fashion beads and wood into necklaces and bracelets, Beller has taken to Twitter to address designers Domenico Dolce and Stefano Gabbana directly, writing: “Dear Stefano, please let us be. And visit us in Cape Town. I have always admired your famous sense of humor so present in your brand and in your designs. . .” Fashion.Telegraph.co.uk
A couple of things African fashion designers and designers in general:
1. Living in Africa is clearly not enough to avoid legal liability.
2. Just because you ignore the laws of the land you live in or are oblivious to the closest courthouse in your town does not mean others will ignore the path that leads to the courtroom when you infringe on their intellectual properties.
3. What’s with this very bad habit of African designers and/or African industry professionals taking to twitter to just air out their issues with fellow colleagues or business owners? It remains one of my biggest pet peeve and is highly irritating. A case in point is the Wana Sambo Clothing v. L’Espace Retailer Alleged Breach of Contract case which I will take on before the week wraps up.
I see this very distasteful habit displayed more prominently in Africa’s fashion industry than its film and music industries. Does this South African designer believe posting on twitter during the time a suit has actually been filed will absolve her from liability? She says, as reported above, “let us be. . .”
Really? What has that got to do with running a business. According to the alleged facts above, the complaint filed indicates “six years ago,” Dolce & Banana” received a warning to cease from trademark dilution/infringement of the brand but they disregarded and continued. If Dolce & Gabbana has actual proof of such warning sent by their South African local attorneys they hired, it is a bit too late to say, “let us be.”
Further, for all reading this, please be advised that anything you say on twitter can be used against you in a court of law. Attorneys and the legal justice system are now tuning in to the need for “discovery” (investigation) beyond the traditional scope of what is typically done. This means we now look at social media: facebook, twitter, instagram, tumblr etc. to gather information in defending, instituting or prosecuting cases. Judges are also becoming more tuned into the significance of social media and decisions are starting to roll in that address the role of social media where situations like defamation, copyright infringement claims are filed.
Now, let’s look at the law specific to the case before us.
South Africa Trademark & Trademark Dilution Statutes
Specific to South Africa, I have not studied the laws in that country to provide basic legal commentary on. Nevertheless, in doing a cursory glance of the law on this case, I note the parallels with South African Trademark law and USA Trademark law.
What Law Applies in South Africa?
South Africa’s Trademark Act 194 of 1993 and Regulations.
What is the specific Trademark Dilution law involved?
Section 34(1)(c) of the Trademarks Act (194/1993).
From my readings, Trademark Dilution is still a relatively new concept in South Africa. However, there is a seminal case cited in that specific area of the law called Laugh It Off Promotions v. South African Breweries International (Finance) B.V. t/a Sabmark International. The case essentially discusses South African Trademark Dilution law and there appears to be parallels with US law.
I would recommend, for anyone interested, to review a well written discussion of the case here.
Now on to USA law and delving into what it means to say “Trademark Dilution.”
If you are just joining me, I have discussed trademark law in the past. Please click AFL on Ladybrille’s Empress Fragrance v. Diddy case for a basic review.
What Trademark Law Applies Where a Trademark Dilution Takes Place in the USA?
The 1995 Federal Trademark Dilution Act (FTDA)
What Does the FTDA Do?
The FTDA gives you the owner of a famous mark protection against copycats, even if your fans or customers do not suffer from a “Likelihood of Confusion.” Remember that at the crux of the standard trademark infringement case is whether customers are likely to be confused by the infringing of your trademark. For example, if you saw Dolce & Banana, would you be confused thinking it was a Dolce & Gabana? The answer is no. This is why Dolce & Gabana focuses on trademark dilution.
Why Would Lawmakers Even Push and Approve Such a Law?
Congress realized that there are people out there that just like to ride off the success of others. You work hard. They don’t. They just wait for you to be successful and then use all of what you have built for their own gain. Frankly, they have the audacity to take your brand name, do a little remix and come up with something that makes a mockery of your name, all for a profit. Accordingly, Congress decided it made sense to define dilution of a trademark to mean “the lessening of the capacity of a famous mark to identify and distinguish goods or services.?”
What It Means in Plain English.
Assume you are Dolce & Gabbana. Your signature is class, elegance and luxury goods. Globally, your brand is synonymous with luxury and the finer things of life. Now, here comes this Dolce & Banana brand that is anything but the signature luxurious brand your name is known for. What do you do? The Trademark dilution law gives you the power to sue such a brand, in this case Dolce & Banana, for weakening your brand’s name and strength.
The argument in plain but slightly colorful language, for our purposes, would be:
1. I don’ know Dolce & Banana from Adam? Bottom line, they weakened the Dolce & Gabbana brand and brand strength with trying to mock and humiliate the brand, especially since tourists visit Dolce & Banana a lot.
2. Dolce & Banana’s action is “blurring” Dolce & Gabbana’s “famous mark.” In other words Dolce & Banana is detracting from the uniqueness of the Dolce & Gabbana brand , AND
3. Dolce & Banana’s actions is “tarnish(ing)” Dolce & Gabbana’s brand’s image. As Dolce & Gabbana represents luxury and the way Dolce & Gabbana is using the brand is negatively affecting the brand’s image for reputation and quality.
The above is the essential argument.
We will see how this case shakes out. Dolce & Banana has since changed the name but it is a “too bad so sad” shrug from Dolce & Gabbana. I think it would make sense to pursue the case all the way from a value and policy standpoint. The costs of filing the lawsuit and attorney fees, the profits made for six (6) years and the chances that more infringers could emerge (albeit there will always be infringers) if a message is not driven home, to me, make a compelling case for D&G to go forward.
TIP: African designers, tune into trademark laws in your respective countries. Have a way of monitoring your brand and do not infringe on the intellectual property of others, whether they be Africans or not.
Below is an interview I conducted a while back for my fashionentlaw.com platform that should also explain basic US intellectual property laws, most of which parallels the intellectual property laws found in the UK, Kenya, South Africa, Nigeria and Ghana, among other countries.
Dolce & Banana Shop
Right of Publicity, Copyright Infringement, Trademark Infringement
Ms. Uduak Oduok is the Founder and Editor-in-Chief of Ladybrille® Magazine. An industry insider with almost two decades of hands on extensive experience in the fashion and entertainment industry, she is also a trial attorney and has counseled a range of clients from musicians, models, actors and actresses to designers on numerous areas of the law including contracts, business law, fashion and entertainment law, copyright, trademark i.e. intellectual property law. She can be reached at (firstname.lastname@example.org) to share/pitch your Africa Fashion Law™ related stories with her. All other inquiries, please visit the www.ladybrillemag.com/contact for appropriate contact email.
DISCLAIMER: Nothing herein forms an attorney-client relationship. The legal commentary provided is for informational purposes only and is not meant nor should be construed to be legal advice, advertisement, or solicitation for business.