TRADE-JAMAICA: Ting Defeats Zing in Copyright Case

By IPS Correspondents Reprint | | Print |

Patrick Smikle

HOLLYWOOD, FLORIDA, Nov 5 1997 (IPS) - The issue of intellectual property rights and copyright laws has been put firmly on the agenda here following a case involving two U.S.-based companies and a Jamaican bottling firm.

“Radio stations try to get around paying performing rights fees. Advertisers seem to think they can just copy American ads off the TV and get away with it,” says an IPS source who requested anonymity.

“Some businessmen come to America and see a name they like and just copy it.” This approach, he says, has, in recent years led to U.S. companies taking action against Jamaican companies.

And in a recent case it took the jury just two hours earlier this week — including their lunchtime — to reach a unanimous verdict. The use of the name Zing for a grapefruit-based soft drink manufactured and distributed in the United States since 1994, was in violation of a trademark held by the Jamaican bottling firm Desnoes and Geddes (D&G) Ltd. which, since 1970 has manufactured a similar drink it calls Ting.

The jury also found that by using the word ‘Jamaican’ to describe and promote Zing and the line of soft drinks they manufacture and distribute in the United States, the Florida-based companies Kingston Miami Traders (KMT) and Atlantic International, were guilty of “false designation of geographic origin.” As such they were guilty of unfair competition against D&G which promotes its line of soft drinks in the U.S. as genuine Jamaican.

The jury dismissed a counter-claim by KMT that the sodas marketed by D&G as ‘genuine Jamaican’ were bottled in the U.S. and as such the Jamaican company was itself guilty of “false designation of geographic origin.”

The verdict was a devastating blow for Jamaican-American business people, Patrick and Christine Cha-Fong who own the two offending companies. While the jury did not award the 50,000 dollars in compensatory damages which D&G asked for, the Cha-Fongs will have to pay the Jamaican company’s legal costs, expected to be considerable, as well as their own team of lawyers.

KMT and Atlantic International are also faced with the costs of renaming and re-launching the line of products the companies now manufacture and distribute.

Patrick Cha-Fong tried to put the best ‘spin’ on the verdict and the best face on the situation. He told IPS his insurance would cover the various court costs. He said he would rather change the names of his products on the basis of a court ruling than in response to D&G’s demands, as those demands, made in pre-trial attempts to settle the issue out of court, had been unreasonable and required a total surrender on his part.

And his public relations consultant, Chester McCulloch speculated that the publicity around the case could create a backlash against D&G in the U.S. market and aid in the re-launching of Zing under a new name.

Patrick Cha-Fong’s interpretation of the verdict was that it was less than a complete defeat…”sort of 45 percent for me and 55 percent for them. Both of us won something.”

That interpretation was dismissed with a chuckle by one of D&G’s attorneys, Dorian Kennedy. “I would say it was a hundred percent win for D&G.” he told IPS. “We filed the action for trademark infringement. We won. We filed the action for false designation of origin. We won. They filed against us for false designation of origin. We won. Mr.Cha-Fong didn’t win anything.”

Kennedy said the two teams of lawyers would be meeting shortly to work out the details of a final settlement. On the agenda would be a schedule for the phasing out of the Zing name and the Jamaican trademark under which KMT and Atlantic now distribute their products. The Cha-Fongs attorneys indicated in court that they would need between 60 and 90 days.

Throughout the trial Patrick and Christine Cha-Fong were painted by their lawyers as an enterprising couple who had fled Jamaica in the 1970s to escape a socialist government. D&G was the bullying giant determined to maintain its near monopoly.

“They’re being challenged by a little guy who came up to make his fortune here in America and they’re trying to squash him. That’s not right,” is how the Cha-Fongs attorney Jim Gayle characterised the two sides in the case.

“You’ve heard a lot of things that have no relevance to this case,” Dorian Kennedy told the jurors. The issue, he said, was a straightforward case of trademark violation. The Cha-Fongs who had previously been D&G distributors, had created a line of similar products and had sought to piggyback on D&G’s advertising and marketing strategy. As such they were guilty of unfair trading practices, he said.

While the jury’s verdict is not binding on the court, Judge Fredrico Moreno had indicated from the outset of the four-day trial that he would enter a final judgment on the basis of their decision.

After the verdict he commented on convergence of views between the “judge of the law,” (himself) and “the judges of the facts” (the jurors). And he showed marked impatience, for the first time in the trial, when Attorney for the Cha-Fongs Jim Gayle, continued to argue that D&G had no standing to have brought the suit in the first place. “If I’m wrong then three wiser judges will tell me,” said Judge Moreno testily.

While he would give no firm commitment one way or another, Patrick Cha-Fong did not seem inclined to appeal. Commenting on the outcome of the case, one observer here said Caribbean attitudes to intellectual property and copyright and trademark regulations are “more loose” than attitudes in Europe and North America.

He said the Cha-Fong versus D&G case was the first known instance of a Jamaican company taking action in a U.S. court against an American company. “The twist in this situation is that the Jamaican company is owned by a British multi-national (Guinness) and the American company is owned by Jamaicans. Talk about a global village.”