Tuesday 13 October 2009

Darren Olivier

Fifa v Metcash - Owen Dean's response

Afro Leo has received the following response to fellow contributor Roshana Kelbrick's post covering the FIFA v Metcash judgment from Dr Owen Dean, in his personal capacity, with a request to post them on this blog:

"I act for FIFA and I have brought a number of claims and cases on their behalf, including the case against Eastwood Tavern. I did not act in the Metcash matter because of a conflict of interest but the arguments and papers used in the Metcash case were derived from, and were substantially similar to, the arguments used in the Metcash matter. My comments should therefore be viewed against this background, but they are made in my personal capacity and not on behalf of FIFA. Apart from any other considerations, Metcash is also a client of our firm and I will thus seek to be objective in making my comments.

I was involved in the drafting of Section 15A of the Merchandise Marks Act and I can thus state with authority that it was not inserted in the Act at the behest of FIFA. Indeed, the Section was first drafted in anticipation of the 1995 Rugby World Cup at the request of the South Africa Rugby authorities. It did not find favour with the powers that be at that stage, possibly because the whole concept of ambush marketing was somewhat new to South Africa at that time. In around 2002, with the Cricket World Cup in the offing, the South African Cricket authorities made a spirited plea to the Government to draft appropriate ambush marketing legislation and the draft that had been prepared in anticipation of the 1995 Rugby World Cup was refashioned slightly to become Section 15A. This Section came into operation shortly before the 2003 Cricket World Cup and that event was declared a protected event under it. When FIFA requested that the football World Cup should be designated a protected event, it was doing no more than relying on existing legislation. To the extent that it was this Section that Roshana had in mind when she claimed that FIFA rewrote national laws at its own convenience and for its own advancement, she is, with respect, incorrect. I am not aware of any other legislation relating to IP protection that FIFA has instigated in South Africa.

As part of its campaign to protect its rights and those of its sponsors in connection with the football World Cup, FIFA commenced at an early stage writing letters of demand to those whom it considered were violating those rights. This was done irrespective of the size of the enterprise that was perpetrating the objectionable conduct. In the early stages, three parties refused to back down and to comply with FIFA’s request. They were Eastwood Tavern, Metcash and Executive African Trading. Consequently, court proceedings were instituted against these three parties. The fact that Eastwood Tavern and Executive African Trading were small entities was purely happenstance and no attempt was made to seek out small parties for special treatment. Metcash, can, of course, not be considered to fall into this category. In the circumstances, it is not, I believe, a fair statement to suggest that FIFA sought out those who cannot afford to litigate as its targets.

While it is true that the effect of the court’s judgment places a limit on Metcash’s use of its trade mark ASTOR in certain circumstances, namely in a manner so as to derive promotional benefit from the football World Cup, Metcash is free to continue using the trade mark in all other circumstances and in conjunction with get-up material not alluding to the football World Cup, perhaps in the same manner that it used it from 2004 up to the time that it changed to the contentious get-up. It is therefore not being deprived of the use of its mark as Roshana seems to sugget.

I do not interpret Section 15A (nor was it intended to be so interpreted) to mean that sub-Section 1(b) imposes an onus on a plaintiff to show that the event is in the public interest and that sufficient opportunities for small businesses have been created in seeking to enforce rights conferred by the Section. In my view, the aforegoing are criteria that the Minister is directed to apply when considering whether or not to grant an event the status of being a “protected event”. If the Minister considers that these criteria have been met, he is entitled to designate the event as a “protected event” and it remains so unconditionally, unless and until the Minister should decide to withdraw the designation. Accordingly, anyone seeking to enforce rights created under Section 15A is not required to establish these points in the litigation.

Legislation along the lines, or having the effect, of Section 15A has become the norm in countries staging events such as a football World Cup. For instances, prior to the Cricket World Cup taking place in the West Indies, most, if not all, of the West Indian states adopted ambush marketing legislation which incorporated our Section 15A, virtually verbatim. New Zealand has adopted similar legislation for the 2011 Rugby World Cup and the United Kingdom has passed special legislation having the same effect which is probably more far reaching than our Section 15A. The simple fact of the matter is that the organisers of major international sporting events like the World Cup and the Olympic Games set adequate ambush marketing legislation as a criterion which bidding companies must meet before they can come into contention to have the events awarded to them. The simple fact of the matter is that if a country wants to host a World Cup or the Olympic Games it will not get to first base unless it has adequate ambush marketing legislation in place. In this regard our Section 15A has become something of an international norm. In the modern world this type of legislation goes with the territory of staging a major sporting event. One can love it or hate it but it is a fact of life.

Owen Dean"

Do you agree with these comments or have any of your own? Please feel free to write in or post them to the comment section.

Darren Olivier

Darren Olivier

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