Earlier this year the Washington Football Team finally adopted a new name: the Washington Commanders, bringing an end to the 60-year struggle by Native Americans to prevent the use of what was considered both a racial slur and a misappropriation of their cultural heritage.
For those unfamiliar with the case, this American football team had for many years been called the Washington Redskins and their logo featured an image, in profile, of a Native American. The saga of their name has been followed closely by those interested in the intersection of cultural heritage law and trade mark law.
The final chapter of the Redskins controversy has prompted me to re-examine South Africa’s efforts to protect the cultural heritage of our communities. Here I discuss some of the key issues of the Redskins saga within the context of South African trade mark law and legislation aimed at protecting our traditional cultural expressions against misappropriation.
Traditional cultural expressions and relevant legislation
Before I begin, it is perhaps useful to explain what is meant by the term “traditional cultural expression” and provide a brief outline of the relevant legislation. For the purposes of this article, I will deal only with those aspects that apply to trade marks.
The term “traditional cultural expressions” or TCEs is used to refer to those expressions of cultural heritage that can form the subject of an intellectual property right, usually a trade mark, copyright or possibly a registered design. TCEs can consist of verbal expressions such as words and names, musical expressions in the form of songs and instrumental music, expression by action in the form of movement or dance, and tangible expressions such as artwork, textiles or handicrafts.
Often brand owners looking for interesting or “exotic” words, symbols and designs, may adopt such elements as trade marks for use on their products and apply to register them, usually without the consent of the community to which they belong.
Generally, communities seek so-called positive protection of their TCEs, so legislation that recognises collective ownership and provides the means to prevent the unauthorised use of TCEs by third parties. In the absence of positive protection, and as will be discussed below, the Trade Marks Act no. 194 of 1993 (the Trade Marks Act), offers a measure of defensive protection in that it contains provisions which communities can use to prevent third parties from acquiring statutory trade mark rights over their TCEs.
There are currently two laws that have been drafted specifically with the aim of providing a measure of positive protection: The Intellectual Property Laws Amendment Act no. 28 of 2013 (“IPLAA”) and the Protection, Promotion, Development and Management of Indigenous Knowledge Act no. 6 of 2019 (“IKS Act”). Neither of these pieces of legislation is in force yet and they follow very different approaches.
The focus of IPLAA is to amend, inter alia, the Trade Marks Act to make provision for the recognition and protection of TCEs. Instead of drafting a separate statute dealing with the collective ownership of TCEs, this subject matter is forced into an existing statute, the overall purpose of which is to protect the distinctive trade marks of brand owners in a competitive economic setting. This makes for a largely uncomfortable and unworkable fit.
The IKS Act, on the other hand, makes provision for the sui generis protection of TCEs. Once in force, it will allow communities to register their TCEs and the unauthorised use of a registered TCE will constitute a criminal offence.
According to the Statement on the Cabinet Meeting of 6 April 2022 issued by Government, Cabinet has approved the publication of the IKS Act’s Regulations for public comment.
“Traditional cultural expressions” as trade marks
The trade mark at the heart of the Redskins controversy was not a TCE but a word described as “a deeply offensive, humiliating and degrading racial slur”. This word mark REDSKINS was also accompanied by a logo (depicted below) incorporating Native American imagery. The team adopted the name REDSKINS in 1937. It registered the first of a series of trade marks in 1967.
