Multilateral Matters #8: Intellectual Property and Indigenous Names, Words and Symbols: Getting it Right for Communities, Companies and Consumers

wendland_wendby Wend Wendland, Adjunct Professor, Department of Commercial Law, Faculty of Law, University of Cape Town, wend.wendland@uct.ac.za, @WendWendland

Multilateral Matters

An occasional blog on international developments related to intellectual property, innovation, development and public policy

Key points

Indigenous names, words, symbols and other indications are often used by companies to brand their goods and services: when this is done without the consent of the Indigenous People, it can cause offence and be derogatory, it can mislead consumers and it can deprive Indigenous Peoples of economic benefits.

Sometimes Indigenous Peoples themselves make proactive use of the intellectual property (IP) system to register their own indications as trademarks, collective or certification marks, or geographical indications.

Mostly, companies do not set out intentionally to misappropriate Indigenous indications. There are a few concrete steps that companies, communities and IP offices could take to avoid inadvertent misappropriations and the erroneous grant of IP rights.

There are legislative measures in a few countries aimed at preventing the registration of trademarks that falsely suggest a connection to or may offend an Indigenous People.

Terms such as “Redskins”, “Braves” and “Chiefs” are not Indigenous terms as such but, when used by sports teams and others, can be racist slurs and cause harm and injury to Indigenous Peoples. In the context of the Black Lives Matter movement, public pressure and sponsor and investor dissatisfaction, rather than trade mark litigation, have recently caused several sports teams in the United States of America (the USA) to abandon names they have used for decades.

Mutually-beneficial and equitable win-win collaborations between Indigenous Peoples and companies could benefit communities, companies and consumers alike. This would be “getting it right”.

On the one hand… misappropriation of Indigenous names, words and symbols

Tribal names and other distinctive words and symbols that evoke Indigenous and traditional lifestyles have long attracted business owners, advertisers and marketers because of their many positive connotations. Names and words like “Cherokee”, “Apache”, Maasai” and “Indian” can, depending on the product or service being advertised, evoke purity, vitality, romanticism, exoticism, ruggedness and freshness.

It seems this practice is especially prevalent in the natural foods, cosmetics, herbal remedies, fashion and self-help/new age industries.1

Sometimes tribal names and Indigenous words and symbols are registered by businesses as trademarks. “Maasai” was at one time reportedly used by around 80 businesses, including Luis Vuitton, Jaguar Land Rover and Maasai Barefoot Technology. In none of these cases, did the Maasai, who mostly live in poverty in southern Kenya and northern Tanzania, have anything to do with the businesses or receive any compensation for goods sold using their name.

Names, words and symbols are tightly bound up with an Indigenous People’s cultural identity and are among its most sensitive and valuable cultural expressions. For a treatment of IP and the protection of traditional cultural expressions (TCEs) generally, see Multilateral Matters #3 “Copyrighting Culture? Challenges and Opportunities regarding the International Protection of Traditional Cultural Expressions”.

However, the Maasai have in recent years begun to reclaim their brand.2

As the Maasai example shows, the non-consensual use by companies of Indigenous words, symbols and other distinctive signs can blur distinctions between authentic Indigenous products and non-Indigenous products that pass themselves off as Indigenous. This practice can:

  • cause offence and be derogatory;
  • cause deception and confusion in the mind of consumers as to the true origin of the good or service being marketed; and
  • deprive the community of commercial benefits.

Generally speaking, Indigenous Peoples wishing to take action in cases like this may be able to use trademark law, the law of unfair competition, consumer protection/labeling laws and/or specific sui generis TCEs legislation in their countries if such exists. These are specialized areas of law and it’s important to get proper legal advice.3

National and regional laws

There are some national and regional measures aimed at preventing the registration of trademarks that falsely suggest a connection to or may offend an Indigenous People. For instance,

  • the USA’s Patent and Trademark Office (the USPTO) administers a Database of Native American Tribal Insignia. Federally-and State recognized Native American tribes may record their official insignia and trademark examiners working at the USPTO check the database to ensure that they don’t register trademarks that falsely suggests a connection to such insignia4;
  • the Trademarks Act, 2002 of New Zealand prevents a trademark from being registered if its use or registration would likely offend a significant section of the community including Māori5;
  • the regional IP legislation of the Andean Community (comprising Bolivia, Colombia, Ecuador and Peru) provides that signs which consist of the names of indigenous, Afro-American or local communities, or the names, words, letters, characters or signs used to distinguish their goods or services or the manner of their processing, or which constitute an expression of their culture or practice, may not be registered as marks, except where the application is filed by the community itself or with its express consent.6; 

On the other hand… proactive use of the trademark system by Indigenous Peoples

Sometimes, an Indigenous People may itself register its name or other distinctive indication as a trademark, collective or certification mark, or geographical indication, to foster its own commercial interests and prevent others from free-riding.

This was what the Navajo Nation did.

In a celebrated case 7, the Navajo Nation, living in the south-western part of the USA 8, successfully sued Urban Outfitters and its affiliates for unauthorised use of the terms “Navajo” and “Navaho” in connection with the sale of clothing, jewelry, footwear, handbags and other items. These items, the Nation argued, “evoke the Navajo Indian Tribe’s tribal patterns, including geometric prints and designs fashioned to mimic and resemble Navajo Indian and Tribal patterns, prints, and designs.” Other items, such as the company’s alleged use of “Navajo” on underwear and liquor flasks, were described as “derogatory and scandalous.”9 The lawsuit alleged trademark infringement, trademark dilution, and violation of the USA’s federal Indian Arts and Crafts Act, 1990, which is a “truth in advertising” law prohibiting the direct or indirect offer, sale or display for sale of a good in a manner that “falsely suggests it is Indian produced, an Indian product, or the product of a particular Indian or Indian tribe or Indian arts and crafts organization”.10

The Navajo Nation had registered NAVAJO as a trademark in the USA and had for many years policed its marks as part of a strategic enforcement strategy. Through tribe-owned corporations, the Navajo Nation has registered more than 80 trademarks with the U.S. Patent and Trademark Office (the USPTO), including approximately 10 registrations of the mark NAVAJO for clothing, footwear, other household products.

The Navajo Nation had also spent significant time and money to promote and preserve its trademarks.

It’s reported that, although the company at first filed an appeal, the parties finally settled in 2016 and agreed to enter into a supply and license agreement and that they planned to collaborate on authentic American Indian jewellery in coming years.11

I suggest two lessons from this case.

The first is that Indigenous Peoples and local communities can benefit, as the Navajo did, from making strategic use of the trademark system by proactively registering marks and assertively policing and defending their rights in the marketplace. They can propel their own business ventures through branding their own goods and services and licensing others to do so (a “positive strategy”) and/or prevent the misuse and misappropriation of their distinctive signs by others (a “defensive strategy”).

Other examples of trademark registrations by Indigenous Peoples

 In 1996, the Cowichan tribe, living in British Columbia, Canada, registered a certification mark, COWICHAN. The mark may be used by those who have been certified as using traditional tribal methods to hand-knit sweaters and other clothing items.12

In Kenya, a community of basket weavers formed the Taita Baskets Association which registered and administers the TAITA BASKET certification mark. The Association has registered the mark in order to develop a strong, recognizable and profitable regional brand.13

However, making proactive use of the trademark system requires financial resources, access to legal services and a certain level of organizational capability. An Indigenous People or local community would need to be constituted as a legal entity in order to apply for a register a trade mark, certification or collective mark, or geographical indication.14

Not every Indigenous and local community wishes to or is able to deploy intellectual property tools in this way. If a community wishes to explore this option further, it should get proper legal advice.15

Pursuing mutually beneficial collaborations between communities and companies

The second lesson is that, rather than resorting to litigation, exploring opportunities for mutually-beneficial collaborations between communities and companies carries the promise of win-win outcomes. This would be a more positive path to pursue.

I am aware of some examples of collaborations between companies and Indigenous Peoples, such as an agreement entered into in September 2019 between Walt Disney Animation Studios and the Sami people regarding the animation film Frozen 2.16

Disparaging trademarks: the Redskins cases and Black Lives Matter

There are other cases, which are distinct to my mind, in which words, images and monikers are used that are not Indigenous names and words as such but are regarded as disparaging of an Indigenous People or Indigenous Peoples generally. The best-known example of this would be “Redskins”, the name for many years of the American N.F.L. football team based in Washington D.C.

Much has been written about this case.17 For a summary of the litigation around the trademarks owned by the team, see the text box “The Redskins Cases”.

The Redskins Cases

Harjo v Pro-Football Inc

This dispute involved six trademarks owned by Pro-Football Inc., the corporate owner of the team, which include the word “Redskin” and were all used in connection with goods and services related to its football team, including merchandise and entertainment services. The oldest mark had been registered in 1967. In 1992, seven Native Americans representing various tribes filed a complaint with the Trademark Trial and Appeal Board (TTAB) to cancel the registration of the six marks, claiming that they had disparaged Native Americans at the times of registration. They asserted, in terms of Section 2(a) of the Lanham Act18, that the word “redskin(s)” “was and is a pejorative, derogatory, denigrating, offensive, scandalous, contemptuous, disreputable, disparaging and racist designation for a Native American person”. The TTAB found that the word “redskin(s),” as it appeared in the defendant’s marks may disparage Native Americans. The case subsequently went to United States District Court and the Court of Appeals for the District of Columbia, which ultimately found against the complainants based on the doctrine of laches (meaning that the complainants had delayed too long in bringing their complaint).

Blackhorse v. Pro-Football Inc.

In 2012, another very similar case was brought by Native Americans, Blackhorse v. Pro-Football Inc., with younger plaintiffs whose standing was not hindered by laches. In June 2014, the TTAB found that the petitioners had shown that the term Redskins was disparaging and ruled that the six registrations be cancelled. Pending appeals filed by Pro-Football Inc., on 19 June 2017, in an unrelated case19, the Supreme Court of the United States ruled that the provision of the Lanham Act barring disparaging names was unconstitutional as it violated the First Amendment’s free speech protections. As a result, the Native American petitioners withdrew from any further litigation.

In the United States, Native American groups and others have for decades opposed the use of Indigenous names, mascots and imagery for sports teams, insisting they are demeaning and racist.20

Their campaigns for change fell on deaf ears and trademark litigation as in the Redskins cases brought the complainants no relief.

Then, suddenly, public sentiment switched in their favour. After George Floyd’s death in 2019 while in the custody of the Minneapolis police, the Washington team’s name became “part of a larger national conversation about race that magnified [in 2020] amid protests of systemic racism and police violence”.21 As a result, corporate sponsors, investors and merchandise vendors announced they would withdraw their association with the team if its name didn’t change.

And so it was that in July 2020, the owners of the team announced that the Redskins name and logo would be dropped, a dramatic turn-around after decades of the owners resisting making that change.22 At least in the interim, the team is now simply known as the Washington Football Team.23 After years of protests, a few months later the Cleveland Indians also decided to drop “Indians” and to use a new name as yet undecided.24

“It’s happening in the context of the Black Lives Matter movement and all that implies of Black people and Indigenous people in our country,” said Suzan Shown Harjo, a Native American activist, who had been at the forefront of the movement to change the Washington team’s name.25

As the New York Times wrote:

“What finally changed was, seemingly, wider American society around the team. After the death of Floyd, there has been a widespread reconsideration of statues, flags, symbols and mascots considered to be racist or celebrating racist history.”26

Conclusion: Branding and Indigenous names, words and symbols – “Getting it Right”

As societies strive to be more inclusive, tolerant, equitable and diverse, and newly empowered consumers demand authenticity and sustainability in the products they buy, questions around branding and Indigenous names, words and symbols have become more pressing.

This discourse is not and should not be adversarial or zero sum in my view.

There are immense social, cultural and economic benefits to be gained from brand owners and Indigenous Peoples working together in mutually respectful ways that are deeply anchored in those values of equity, inclusiveness, tolerance, sustainability, authenticity and diversity.

There are benefits for brand owners, the communities, consumers and society as a whole in “getting it right”. These benefits far outweigh simply “avoiding the costs of getting it wrong”.

To end, here are a few ideas for concrete actions that could:

  • prevent misappropriations of Indigenous and traditional names, words and symbols;
  • foster win-win collaborations; and
  • enable the more strategic use of the trademark system by Indigenous Peoples and local communities if they wish to do so.

Dialogue and relationship building: bringing representatives of industry and Indigenous Peoples and local communities together to share perspectives, dispel misunderstandings, build trust and begin a conversation around practical steps towards avoiding misappropriations and fostering mutually-beneficial and equitable collaborations;

Public notice: creating a voluntary, global register of Indigenous insignia that brand owners and trademark examiners could consult to avoid inadvertent misappropriations;

Avoiding the erroneous grants of rights: developing best practices/guidelines for trade mark examiners;

Longer-term win-wins: facilitating mutually-beneficial collaborations between brand owners and communities.

This blog was written in January 2021.

My thanks to Carla Bengoa for her research assistance.

Additional readings are listed on the Multilateral Matters portal.

This blog is written exclusively in the author’s capacity as Adjunct Professor, Department of Commercial Law, Faculty of Law, University of Cape Town. Any views expressed are those of the author alone and do not necessarily represent the views of any organization or institution.

Endnotes

  1. “What’s in a Name? Can Native Americans Control Outsiders’ Use of their Tribal Names?”, Cultural Survival Quarterly Magazine, December 1994, available at https://www.culturalsurvival.org/publications/cultural-survival-quarterly/whats-name-can-native-americans-control-outsiders-use (accessed January 24, 2021).
  2. “The Maasai want their brand back”, Quartz, January 28, 2017, https://qz.com/896520/the-maasai-want-their-brand-back/ (accessed January 10, 2021).
  3. This publication does not constitute legal advice but it’s a useful introduction: WIPO, “Marking a Mark: An Introduction to Trademarks for Small and Medium-sized Enterprises”, 2017, available at https://www.wipo.int/edocs/pubdocs/en/wipo_pub_900_1.pdf (accessed January 24, 2021).
  4. See https://www.uspto.gov/trademark/laws-regulations/native-american-tribal-insignia (accessed January 10, 2020).
  5. WIPO, Promote and Protect your Culture, 2017, p. 44, available at https://www.wipo.int/publications/en/details.jsp?id=4195 (accessed January 10, 2021).
  6. Idem.
  7. Navajo Nation v. Urban Outfitters, Inc., et al., U.S. Court for Dist. of New Mexico, Case No. 12-cv-00195 (filed Feb. 28, 2012).
  8. https://www.navajo-nsn.gov/index.htm (accessed January 10, 2021)
  9. See Greene, B. et al, “Caution: Tribal Names not a Free for All”, March 30, 2012, https://www.pillsburylaw.com/en/news-and-insights/caution-tribal-names-not-a-free-for-all.html (accessed January 10, 2021).
  10. 25 U.S.C. § 305 et seq.
  11. “Navajo Nation Settle Trademark Suit against Urban Outfitters, Reuters, November 19, 2016, https://www.reuters.com/article/us-navajo-urbanoutfitters-idUSKBN13D2QA (accessed January 24, 2021).
  12. WIPO, Promote and Protect your Culture, 2017, p. 41.
  13. Idem., p. 43. For further examples, see WIPO, Protecting and Leveraging Distinctive Signs of Indigenous Peoples and Local Communities”, 2021, forthcoming.
  14. See, generally, WIPO, Promote and Protect your Culture, 2017, pp. 40-45, available at https://www.wipo.int/publications/en/details.jsp?id=4195 (accessed January 10, 2021).
  15. This publication does not constitute legal advice but it’s a useful introduction: WIPO, “Marking a Mark: An Introduction to Trademarks for Small and Medium-sized Enterprises”, 2017, available at https://www.wipo.int/edocs/pubdocs/en/wipo_pub_900_1.pdf (accessed January 24, 2021).
  16. A “non-confidential ceremonial” version of the agreement is available here: https://www.samediggi.fi/wp-content/uploads/2019/09/Agreement_WDAS_SAMI.pdf (accessed January 10, 2021).
  17. For example, Zografos, Daphne, “The appropriation of American Indian names and images in trade marks – The Washington Redskins Case”, in Emerging Issues in Intellectual Property Trade, Technology and Market Freedom: Essays in Honour of Herchel Smith (ed. Guido Westerkamp), Edward Elgar, 2007, pp. 391 to 406.
  18. The Lanham (Trademark) Act, 1946, as amended, codifies the trademark law of the USA. Section 2(a) permits the non-registration of a trademark which “. . . consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute . . .”
  19. Matal v. Tam, 582 U.S. _ (2017)
  20. “Cleveland’s Baseball team will drop its Indians team name, New York Times, December 13, 2020, available at https://www.nytimes.com/2020/12/13/sports/baseball/cleveland-indians-baseball-name-change.html (accessed January 24, 2021).
  21. Cleveland’s Baseball team will drop its Indians team name, New York Times, December 13, 2020, available at https://www.nytimes.com/2020/12/13/sports/baseball/cleveland-indians-baseball-name-change.html (accessed January 24, 2021).
  22. “Washington NFL team to drop name”, New York Times, July 13, 2020, available at https://www.nytimes.com/2020/07/13/sports/football/washington-redskins-new-name.html (accessed January 24, 2021).
  23. New name? Washington Football Team ‘definitely in the running’ to stay, available at  https://www.nbcsports.com/washington/football-team/new-name-washington-football-team-definitely-running-stay (accessed February 8, 2021).
  24. Cleveland’s Baseball team will drop its Indians team name, New York Times, December 13, 2020, available at https://www.nytimes.com/2020/12/13/sports/baseball/cleveland-indians-baseball-name-change.html (accessed January 24, 2021).
  25. In Campaign Against Racism, Team Names Get New Scrutiny, New York Times, July 10, 2020, available at https://www.nytimes.com/2020/07/10/sports/football/washington-redskins-name-change-mascots.html https://www.nytimes.com/2020/07/10/sports/football/washington-redskins-name-change-mascots.html (accessed January 24, 2021).
  26. “Washington NFL team to drop name”, New York Times, July 13, 2020, available at https://www.nytimes.com/2020/07/13/sports/football/washington-redskins-new-name.html (accessed January 24, 2021).