First published: World Trademark Review, September/October 2008
“Now let’s end with this paradox. For all our visibility we have been rendered invisible and silent. A history-loving people stripped of [its] own history,” observes Paul Chaat Smith, Comanche writer and curator of the exhibit “Our peoples: giving voice to our history” showing at the National Museum of the American Indian in Washington DC.
Loss, preservation and revival
For various historical reasons, many indigenous peoples have lost control of their identity. For some cultures this has been lost in the annals of time; for others it has been stolen; for others it has been derided. In the embarrassment of some countries’ colonial past, all three may have occurred.
The adoption by the General Assembly of the United Nations (UN) (against the vote of the United States, Canada, Australia and New Zealand) of the ‘Declaration on the Rights of Indigenous Peoples’ on September 13 2007 was the culmination of increasing international efforts over the last 20 to 30 years to preserve and revive indigenous cultures. As part of the process, indigenous people themselves sought the assistance of the UN and its member states, as one of many avenues currently being pursued, to recover what has been lost through colonial imperialism. Awareness of the traditional knowledge and cultural identity of indigenous peoples has long ceased to be the domain of the artistic elite or culturally sensitive. Through bio-prospecting, patent sourcing, new product development and design, sourced artistic creativity, trademarks and product promotions, the traditions and heritage of many indigenous populations have been introduced to mainstream consumers without recognition and often without respect.
A cautionary tale
In 2005 Philip Morris Limited, in an attempt to “communicate open-minded acceptance of cultural diversity”, adopted the brand Maori Mix on cigarettes for sale in Israel. To reinforce the association, the packaging also incorporated Maori imagery. Unsurprisingly, New Zealanders – both indigenous and non-indigenous – were outraged. As a consequence of persistent petitioning, the cigarettes were quickly withdrawn from sale and were not released in any other market. Not satisfied simply with the product’s withdrawal, the Maori Smoke-free Coalition (Te Reo Marama) successfully pursued an apology from the tobacco giant. Addressing a shareholders’ meeting, Shane Bradbrook, a director of Te Reo Marama, declared: “Your company’s misappropriation and exploitation of our culture to sell your product of death and illness to Israelis was at minimum culturally insensitive – and at worst another form of oppression and abuse that indigenous peoples have faced for decades.”
While Philip Morris publicly regretted the incident, it is not the only corporation to have utilized the insignia and cultural associations of indigenous peoples to sell and promote its products. The trademark registers of the world are littered with trademarks which depict native peoples and the insignia associated with those peoples. Such indicia have been used to sell wide-ranging products, from toothpaste to alcohol and potted meat. Unfortunately for Philip Morris, it misjudged its product, its timing and its audience.
The adoption of such imagery by Philip Morris came at the culmination of nearly two decades of increasing international efforts to preserve and revive indigenous cultures. These include in particular an increasing impetus by indigenous peoples to preserve their own heritage and recover what has been used and appropriated by others. Part of that heritage includes words and symbols that indigenous peoples believe are not appropriate to be used as trademarks, particularly in relation to certain products, and certainly not by outsiders without their prior consent.
Contrast with IP rights
This situation highlights a major difficulty that indigenous peoples face in trying to regain those parts of their traditional knowledge and cultural identity which have already been plundered, as well as to establish mechanisms to preserve their heritage for the future. Modern Western laws, and in particular IP laws, cannot cater for the paradigm in which indigenous customary rights exist.
In trying to identify what may be ‘customary rights’, there is as yet no universal agreement or accepted definition of what is to be included. Even if a general agreement could be found as to what is encompassed in phrases such as ‘traditional knowledge’ and ‘cultural expressions’/’expressions of folklore’, the attempt to correlate these customary rights to Western IP equivalents (eg, by subject matter such as patent, copyright, trademark and design) does not allow for the fact that a traditional oral culture does not demarcate on information-based artistic and creative lines. An oral culture requires that knowledge be transmitted accurately and in a manner that retains its integrity as is essential for community welfare. The knowledge is therefore communal and many cultural expressions are for the purpose of passing on knowledge.
It is this concept of communal knowledge and entrusted guardianship of expression that makes the application of Western IP laws to customary rights difficult. Customary rights rarely recognize individual property or creativity. To the extent that new derivations and modern expressions may be attributable to a single artist, the knowledge and the basis of artistic expression are derived from communal knowledge and identify both the past and the future of that culture’s heritage. Because of this view, it is possible to attribute modern expressions and derived knowledge to ancestors. Current users of that knowledge and exponents of cultural expressions are guardians or custodians who may choose, within the accepted norms of their own cultural traditions, adaptations in response to changing circumstances and events. They do not own that knowledge or cultural expression, except for the benefit of others.
Since 1998 the Inter-governmental Committee (IGC) on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore of the World Intellectual Property Organization (WIPO) has been working on the challenge of how to protect customary rights, preferably within an IP law context, so as to recognize both the traditional past and the basis of creative expression for the future. Its work began with a series of consultations with indigenous and local communities in over 60 locations around the world and resulted in the compilation of a report on the needs and expectations of the custodians of traditional knowledge and traditional expressions. These included various economic and noneconomic objectives – namely:
- the desire to use IP protection to support those communities’ economic development, including being able to exploit that intellectual property commercially;
- the ability to use and exercise IP rights in order to prevent their use and commercialization by others, including – in particular in relation to traditional cultural expressions – precluding the use by others of what may be considered culturally offensive or demeaning; and
- the ability to protect traditional knowledge and cultural expressions/expressions of folklore (TCEs) from falling under the auspices of other people’s IP rights, so as to prevent others from gaining or maintaining intellectual property – particularly as it may be considered prejudicial to the communities’ interests.
It is this work which continues to drive the WIPO IGC processes nearly 20 years on.
The WIPO IGC is considering two mature draft provisions outlining policy objectives and core principles for the protection of customary rights forms. While complementary, the two drafts focus on specific policy and legal issues associated with the protection of the broadly classified customary right to which each document is addressed. One document considers the protection of traditional knowledge, the other the protection of TCEs. The latter encompasses issues of most relevance to trademark owners. In summary, the TCE draft anticipates:
- protection of various forms of expressions or combinations thereof, either tangible or intangible, in which traditional culture and knowledge are expressed, appear or are manifested, provided that they are products of creative intellectual activity, are characteristic of the community and are maintained in accordance with customary law and practices;
- protection to be for the benefit of the relevant indigenous peoples who are custodians of the TCEs and are maintaining, using or developing the TCEs as characteristic of their cultural and social identity and cultural heritage;
- protection to be afforded at three levels, depending on whether the TCE is of particular value or significance, is classified as an ‘other TCE’ or is a ‘secret TCE’;
- the scope of protection for:
- significant TCEs to include acts of reproduction, adaptation, use, distortion, modification, derogatory activity and the acquisition or exercise of IP rights over TCEs and adaptations thereof, without free, prior and informed consent;
- other TCEs to ensure attribution, prevent false, confusing or misleading indications, distortion, mutilation and derogatory mutilation and entitlement of equitable remuneration or benefit-sharing; and
- secret TCEs to protect against disclosure, subsequent use and acquisition;
- the scope of protection to continue for as long as TCEs continue to meet relevant criteria;
- protection to be complementary to other forms of protection, including that afforded under existing IP laws; and
- protection to be available to eligible foreign beneficiaries.
"[Phillip Morris]’s misappropriation and exploitation of our culture to sell [its] product of death and illness to Israelis was at minimum culturally insensitive – and at worst another form of oppression and abuse that indigenous peoples have faced for decades".
Following the issuance of the drafts, debate at the IGC has continued on a number of levels. While there is purportedly broad agreement on the need for appropriate protection, including the empowerment of traditional holders of knowledge and cultural expressions to make effective use of legal tools, there is still no agreed common position within member states on the formal legal status of the outcome of the WIPO processes or the extent of alternate protection to be afforded at an international level. Neither is there uniform agreement among the representative indigenous peoples as to the objectives sought, both exploitatively and protectively. This includes differences between indigenous peoples of different cultures, as well as indigenous peoples within the same culture.
Debate has focused on 10 key questions identified as needed to be answered to enable the process to go forward:
- How should TCEs be defined?
- Who should benefit from their protection?
- What is the goal of IP protection (eg, economic or moral rights)?
- What constitutes unacceptable or illegal behaviour?
- What are the exceptions and limitations of rights?
- What should the length of protection be?
- Is there sufficient protection under existing IP regimes?
- What sanctions and penalties should be applied to unacceptable or illegal acts and behaviour?
- What is an appropriate international or national demarcation of issues?
- How should foreign rights holders be treated?
Lack of consensus on these issues has continued to stall progress. In short, and perhaps unsurprisingly, the debate also shows a sharp divide between countries seeking an internationally binding instrument and countries such as the United States, the European Union, Japan and Australia which categorically exclude such a binding instrument as a final consequence. In an effort to find a way forward, the secretariat has been charged with preparing a gap analysis for the member states and observers in anticipation of the Thirteenth Session of the IGC, scheduled to take place from October 13 to October 17 2008. A draft gap analysis has issued, with the final version scheduled to be published soon.
While the gap analysis will hopefully focus future discussions, the draft notes that just as there is no universal agreement as to what constitutes indigenous customary rights, neither is there a regime of universal IP law. IP protection continues to be a matter for domestic law, notwithstanding commonalities of practice largely derived from international obligations. Similarly, many argue that the protection of indigenous peoples’ cultural expressions should also remain a matter for domestic law.
Few countries have within their legislation even minimal recognition of the cultural expressions of indigenous peoples. The US Patent and Trademark Office maintains a database of the official insignia of native American tribes. The Andean Community (ie, Bolivia, Colombia, Ecuador and Peru) provides that “those signs whose use in trading may adversely and unduly affect a right of any third party shall not be registered as trademark, especially if…they consist of the name of an indigenous, African-American or local community, or of such denominations, words, letters, characters, or signs as are used to distinguish their products, services or methods of processing, or that constitute an expression of their culture or practice, unless the application is filed by the community itself or with its express consent” (Article 136 of Decision 486 on a Common Industrial Property Regime).
The most well-documented and progressive implementation is the Maori Trademarks Advisory Committee created under the New Zealand Trademarks Act (2002). Under that legislation, the committee advises the commissioner of trademarks on whether the proposed use or registration of a trademark that is, or appears to be, a derivative of a Maori sign, including text and imagery, is likely to be offensive to Maori (Section 178). The establishment of the committee is positive recognition that Maori have a legitimate right to be concerned about the offensive appropriation of their culture and heritage, and provides a channel for those concerns.
The statistics to date indicate that of the number of marks reviewed by the committee, few have been found to fall foul of the ‘offensive’ criteria. This is not to suggest that all trademarks which are allowed are considered to be culturally acceptable, but the mandate of that committee is limited to signs that are considered offensive rather than inappropriate. To the extent that the committee may prevent the registration in New Zealand of a trademark that is offensive, it cannot prevent the trademark from being used, nor can it prevent use or registration of that same trademark in another country. Thus, its powers are still limited. Moreover, its review of offensive trademarks is not retrospective.
Also in New Zealand, the Waitangi Tribunal, a government commission established to assess claims under the Treaty of Waitangi, is currently considering a claim known generally as Wai 262 and colloquially as the “Maori intellectual property claim”. The Treaty of Waitangi, signed in 1840, sought to establish colonial sovereignty in New Zealand between the representatives of the British Crown and Maori chiefs. Subsequently, it has been established that the text and meaning of that document, and hence the rights and obligations that flow from it, are differently interpreted in English and in Maori. The Wai 262 claim has as its focus the need and right to protect Maori cultural property and knowledge, and their rights in relation to flora and fauna. The tribunal response to this claim to entitlement to protect indigenous heritage is not expected until 2009.
Following the formal apology on February 13 2008 by the newly elected Australian government to the indigenous population of Australia, IP Australia issued a Reconciliation Action Plan. The plan covers a number of different aspects of reconciliation and is not directed at a review of the trademark registration process in relation to the use of indigenous expressions, although it does formally recognize that there are IP issues of relevance to indigenous peoples. The form that the recognition by Prime Minister Rudd of “the oldest continuing culture in human history” will take in the new government’s policy position on IP issues remains to be seen. The IP offices of both Australia and New Zealand are engaged in education and information campaigns to encourage the use of IP laws by indigenous peoples as a means of at least contributing to their own economic development and self-sufficiency. The campaigns promote in particular the use of certification marks (eg, the TOI IHO mark in New Zealand) to endorse and protect the creations of indigenous artisans and craftspeople and to take advantage of consumer interest in ‘genuine’ indigenous cultures.
Homage or misappropriation?
The current challenge is in many ways symbolized by UK pop star Robbie Williams. Williams bears on his shoulder an elaborate traditional tattoo, derived from Te moko, the traditional Maori tattoo. Amid the controversy of whether a white man should be wearing this traditional symbol, further complication arose when a Maori cultural authority claimed that the tattoo design was considered particular to his tribe and that the artist who had applied it did so without consent. This is because for Maori many of the designs are considered to be cultural treasures and therefore the artist had no right to apply the design without the authority of the relevant community.
There are arguments that Williams sought to have his tattoo applied as properly as he could and, indeed, the individual artist applying the tattoo thought that he had satisfied his own cultural mores. Such traditional designs have been adopted by an extensive fan base, as well as by other musical figures such as Ben Harper and sportspeople such as Mike Tyson. Fashion designer Jean-Paul Gautier recently adorned his male and female models with Maori facial tattooing. All claim to pay homage to the culture from which the designs were derived; and all are contributing to the international preservation, revitalization and increased awareness of that indigenous culture, notwithstanding the fact that there may be questions of cultural appropriateness. This is the conundrum going forward as corporations walk the fine line between what they consider homage and what indigenous peoples call misappropriation.
The value of indigenous cultures
At present, there are no international obligations and few national restrictions on trademark owners adopting trademarks, designs and other insignia of indigenous cultures – provided that such adoption does not mislead or deceive so as to suggest incorrectly an association with those peoples. However, there is a growing appreciation of the value of indigenous cultures both for themselves and as they contribute to national identities. As indigenous peoples seek self-determination, they are finding renewed identity in their cultural heritage and are becoming acutely aware of its value both as a means of regaining and maintaining their cultural identity and as a potential source of income for their own economic independence.
Te Reo Marama’s determination to pursue a public apology for the wrongful appropriation of a cultural identity to sell a product, which resulted in it being nominated for a Business Ethic Network award in the United States, is a sign of changing times. Furthermore, it is well documented that consumers are becoming far more demanding in the marketplace in relation to the ethics of products and their producers. This is indicated by the increased promotion of goods and products which:
- connect consumers to their locality;
- are environmentally friendly and carbon offset;
- support a myriad of other green claims; and
- bear the Fair Trade label.
As the issues surrounding the protection and preservation of indigenous peoples’ cultural expressions and traditional knowledge continue to be debated in the international arena, those issues are also gaining national, political and popular momentum. As consumers increasingly associate themselves with the ethics of consumerism, no longer will it be acceptable for companies to hide behind the barricade of what is legally acceptable without also considering what is culturally, morally and ethically correct.
Author: Marion Heathcoteis a partner with Davies Collison Cave in Sydney. She chairs the Indigenous People Rights Subcommittee of the International Trademark Association
For more information on this article, contact Marion via email firstname.lastname@example.org