Game of Trumps

US President Donald Trump certainly has a penchant for controversial tweets and his Twitter account shows that during his first year in office – 20 January 2017 to 20 January 2018 – President Trump sent out 2,568 tweets, which amounts to just over 7 tweets per day.

But recent news reported that one tweet in particular caught the attention of not only his 55,8 million followers, but also that of Home Box Office Inc. (“HBO”).

In a blatant and clear nod to the popular Game of Thrones slogan and trade mark “WINTER IS COMING”, President Trump’s “SANCTIONS ARE COMING” meme in his recent tweet, did not leave much to the imagination. HBO, the producer of the well-known television series Game of Thrones, and the owner of the WINTER IS COMING and GAME OF THRONES trade marks, immediately slammed back by tweeting “How do you say trade mark misuse in Dothraki?” – Dothraki being the language developed for and used in the book and television show.

HBO made it clear that it didn’t appreciate being dragged into President Trump’s political agenda, with the White House’s official account having clarified that the image referred to the US reimposing “the toughest sanctions ever on Iran”.

However, despite HBO’s sharp-witted response, their media spokesperson Jeff Cusson was equally swift to state that no further steps will be taken.

But could President Trump’s unauthorised use in fact amount to trade mark infringement?

In terms of South African law, when determining whether two marks are confusingly similar, a comparison must be made with reference to the visual, phonetic and conceptual similarities of the marks.

A closer look at the image and slogan depicted in President Trump’s tweet, compared to HBO’s Game of Thrones trade marks and advertising style, suggests marked similarity on all three fronts – the phrases are similar (but for the words “sanctions” and “winter”) and appear in a similar font; and the overall concepts are nearly identical. The fact that President Trump’s photo is reflected in the backdrop of his tweeted meme, and that the tweet originated from his account, might make it clear that he is the source of the message and confusion with HBO and its Game of Thrones series is perhaps unlikely, but would this attempt at parody provide a suitable defence?

On home turf readers may recall the titanic battle between the proverbial David and Goliath - Laugh It Off Promotions CC v SAB International (Finance) BV - which ended in victory for Laugh It Off. This case ran the full gamut of the South African legal system and was concluded in the Constitutional Court.

Laugh It Off altered images and words of well-known trade marks and printed them on t-shirts with social commentary as its aim. SAB took action when Laugh If Off created a t-shirt which bore a print that was similar in lettering, colour scheme and background to its CARLING BLACK LABEL trade marks – the only difference being the wording. The words BLACK LABEL were replaced with BLACK LABOUR; CARLING BEER was substituted with WHITE GUILT; and the phrases AMERICA’S LUSTY LIVELY BEER and ENJOYED BY MEN AROUND THE WORLD were replaced by AFRICA’S LUSTY LIVELY EXPLOITATION SINCE 1652 and NO REGARD GIVEN WORLDWIDE.

The court had to weigh the right to freedom of expression as provided for in section 16 of our Constitution (with a particular reference to parody) against the backdrop of the anti-dilution protection afforded to well-known registered trade marks under section 34(1)(c) of the Trade Marks Act. A proprietor of a well-known trade mark can object to the use of a similar mark where it is likely to take unfair advantage of or be detrimental to the distinctive character of the mark, even where there is no confusion.

The court dismissed SAB’s claim for infringement as no likelihood of substantial economic harm was established. The fact that Laugh It Off and SAB were not competitors might have had an influence in this decision – unlike that in an advertising dispute between South African Airways and Kulula where Kulula overstepped the boundary of parody in its “Most South African Airways” campaign. In that matter it was held that “the advertisement, although apparently an attempt at parody, did not walk the line finely enough” and “Kulula, a competitor of SAA, was using SAA’s trade symbols to promote its own airline”.

But what is to be made of the interplay between a parody and trade mark dilution? And when is a parody no longer humorous, but causing actual tarnishing of a brand? Parody, as an imitation of the style of a particular writer, artist, or genre with deliberate exaggeration for comic effect should be obvious and it should be clear to the consumer when unauthorised use of a trade mark is indeed a parody. The moment an (alleged) parody adversely affects the reputation of another, takes unfair advantage of a well-known trade mark or is detrimental to the distinctive character of the trade mark and no longer amuses, it should constitute trade mark infringement.

Trade mark law is nothing new to President Trump, himself being the owner of numerous trade marks – including CENTRAL PARK and FIFTH AVENUE no less - and the founder of many powerful brands. He must have recognised the value of being associated with the hit show, albeit one-sided, and was probably well aware that he was treading dangerously close to the cusp of infringement – knowing that the reference to the Game of Thrones trade marks and its association with sanctions in Iran may well be detrimental to the distinctive character of the trade marks.

On the bright side, HBO’s witty response earned more likes and retweets than any of its earlier posts, which raises the question: who had the last laugh?

This article was first published in Business Day.

Date published: 12 February 2019
Author: Merlene Engelbrecht

Tags: trade mark