Intellectual Property and Traditional
Cultural Expressions:
IP Strategies in Relation to Branding and
Commercialisation
Dr. Daphne Zografos
[email protected]
Outline of the presentation
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Definition and characteristics of TCEs
Branding and commercialization of TCEs
Concerns of TCEs holders
Ownership, authorization and attribution
Misuse, misappropriation and offensive use
IP strategies for the protection of TCEs
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What are traditional cultural expressions (TCEs)?
“Traditional cultural expressions” or “expressions of folklore” are any forms, whether
tangible and intangible, in which traditional culture and knowledge are expressed,
appear or are manifested, and comprise the following forms of expressions or
combinations thereof:
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verbal expressions, such as stories, epics, legends, poetry, riddles and other narratives;
words, signs, names, and symbols;
musical expressions, such as songs and instrumental music;
expressions by action, such as dances, plays, ceremonies, rituals and other
performances; whether or not reduced to a material form; and
tangible expressions, such as productions of art, in particular, drawings, designs,
paintings (including body-painting), carvings, sculptures, pottery, terracotta, mosaic,
woodwork, metalware, jewelry, baskets, needlework, textiles, glassware, carpets,
costumes; handicrafts; musical instruments; and architectural forms; which are:
(a) the product of creative intellectual activity, including individual and communal activity;
(b) characteristic of a community’s cultural and social identity and cultural heritage; and
(c) maintained, used or developed by such community, or by individuals having the right or
responsibility to do so in accordance with the customary law and practices of that
community
Some characteristics of TCEs
• Refer to products of creative intellectual activity
• Handed down from one generation to another
• Reflect a community’s history, values, and cultural and social
identity
• Consist of characteristic elements of a community’s heritage
• Often made using raw materials from sustainable resources
• Constantly evolving and developing, and
• It is often, difficult or impossible to identify a specific author
or authors, especially in relation to pre-existing TCEs
Branding and commercialization
• In recent years, increase in the commercial
and non-commercial branding of TCEs by third
parties
• Traditional words, images, symbols, music,
performances or objects are increasingly being
used to brand products, people, communities,
corporations, and disciplines
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Commercial branding
• Commercial branding is a process that involves the
creation of a unique name and image for a product
in the consumer’s mind, through advertising
campaigns with a consistent theme
• It aims to establish a significant and differentiated
presence in the market that attracts and retains
loyal consumers
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Commercial branding
• Indigenous art being copied onto
carpets, T-shirts and greeting
cards
• Traditional music being fused
with techno-house music to
produce “world music” albums
• Indigenous names and images
being registered as trademarks
and used commercially, to name
only a few..
Non commercial branding
• Branding may also
occur in a noncommercial context
• Traditional designs and
symbols being worn as
tattoos by celebrities
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Ownership and authorisation
• Who “owns” traditional cultural
expressions?
• Who can authorise their branding?
• In which situations is such an authorisation
required?
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Ownership
• Distinguish between:
- Contemporary v pre-existing TCEs
- The concepts of ownership v guardianship
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Contemporary v pre-existing TCEs
• In relation to contemporary works inspired on traditional
styles, it may be possible to identify an author, and this
author may benefit from IP protection (copyright)
• However, in some traditional communities the right to create
contemporary TCEs and to use pre-existing styles of designs
resides with the traditional owners, or custodians, who
together have the authority to determine whether these TCEs
can be used in an artwork and by whom the artwork may be
created or exploited (see Milpurrurru & Ors v Indofurn Pty &
Ors case)
Who “owns” TCEs?
• Ownership issues over TCEs may also arise in situations
where:
- paternity is lost or contested
- such expressions have been produced within a community,
and where it is not possible to identify a specific author or
authors, but where the paternity and ownership are vested
in the community as a whole
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In any case..
The very nature of TCEs is often not to have an
author, but to be attributable to a cultural
group or traditional community who are seen
as the “guardians” or “custodians” of the
work, have responsibility for the work, but do
not “own” the work in the western sense
Ownership v guardianship of TCEs
• Many traditional communities view themselves as guardians of
TCEs with the duty to protect information for future
generations, and to disseminate that knowledge to
appropriate persons
• This raises questions on the compatibility of IP and TCEs
• Due to their nature, TCEs do not have a finite life span
• The suggestion that TCEs should be subjected to a limited
monopoly right after which it would be available for
exploitation by third parties raises serious concerns for TCEs
holders
• In this perspective, the concept of guardianship of TCEs for
future generations, does not sit well with the concept that
intellectual property rights are limited in time
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“[T]here is a fundamental clash between the
ideological underpinnings of the intellectual
property rights system and the philosophical
underpinnings of indigenous peoples rights
and obligations”
Maui Solomon
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• This often results in the inability for TCEs holders to use IPRs to
enable them to protect and commercially exploit their TCEs because
of:
- Different conceptions of ownership,
- The inappropriate term of protection, and
- Conditions for protection such as the requirement of originality
under copyright law
- *…+
• In addition, the IPRs system can also have negative effects for TCEs
holders through:
- The granting of IPRs to third parties for creations or inventions
based on indigenous traditional knowledge (TK) or TCEs
- The inappropriate exploitation of indigenous TK and TCEs and
- The lack of benefit sharing resulting from that commercialisation
- *…+
Māori knowledge and intellectual property
• In New Zealand, there are significant differences between the
ways Māori and Pakeha (non-Māori) view knowledge and its
ownership
• For Māori:
- Knowledge is owned by the group, the tribe or sub-tribe
- It is for the benefit of the group - individuals are not expected to
profit from it
- Tangible and intangible aspects of property are traditionally
encompassed in Māori culture under one holistic concept, the
concept of taonga (treasures)
• Māori knowledge may be tapu or noa
• Tapu is the strongest force in Māori life. It can be
interpreted as “sacred” and “sacred knowledge”
• Noa on the other hand is the opposite of tapu and
includes the concept of “common” and “everyday
knowledge”
• The transmission of tapu knowledge is subject to
constraints, but even ordinary knowledge is communally
owned, and may not be passed to another tribe or to third
parties
Concerns
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Many stakeholders expressed concerns about:
The branding and commercialization of TCEs
The misuse and misappropriation of Māori TCEs
Their offensive use
Examples of misuse, misappropriation and offensive use can be
found at three main levels:
- Commercial exploitation by companies
- Use by celebrities
- Use in the tourism industry
Māori Mix
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Gingerbread Men Haka
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Spice and Mike
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Hei tiki
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Offensive use –plastic tiki salad servers
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Offensive use – funki tikis
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Tiki wall hangings.. Made in China
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Offensive use: Taonga souvenirs
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Offensive use -
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Offensive use – Māori nesting dolls
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However..
• Many Māori seem happy to share their
taonga (treasures) with fellow New
Zealanders as long as they ask for
authorisation to use and there is proper
acknowledgement
• Many uses fall under the context of
biculturalism
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Biculturalism
• Over the past two decades, the incorporation of Māori
symbols into national art identity has helped reinforce, for
some, the idea of a bicultural nation
• This connotational meaning has been seized upon by
corporations and government entities alike to portray the
divergent ethnic make-up of the country into a “New Zealand
identity” (commercial and non-commercial branding)
• Result: the blurring of Māori identity into “New Zealand
identity”
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Stamps
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Logos of government entities
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Air New Zealand’s company logo
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Soft fabric bags featuring a koru design and
sold as “NZ Identity” bags
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What legal/intellectual property tools can be
used to regulate the branding and commercial
exploitation of TCEs, to promote the interests
of TCEs holders and to guard against their
concerns?
IP tools
• Some existing IP tools can and have been
used, with varying levels of success, to address
some of the concerns of TCEs holders
• They include copyright, trade marks,
geographical indications, certification and
collective marks and laws against unfair
competition
Caution point
• These laws have not been designed, for the
most part, with the protection of indigenous
interests as an underlying policy objective
• The legal remedies provided by these laws are
therefore often only coincidental and do not
provide a comprehensive system of
protection
Some common characteristics of
TMs, GIs, certification mark
• “Origin indicators”
• Can be communal in nature
• Can provide provide protection that is
potentially unlimited in time
• Can operate as tools of product
differentiation
Geographical indications
A geographical indication is a sign used on goods
that have a specific geographical origin and
possess qualities, reputation or characteristics
that are essentially attributable to that place
of origin
Geographical indications
Traditional cultural expressions
GIs identify a good produced by a number of
different producers
TCEs are usually produced within a
community
GIs are often based on traditional formulas
and processes
TCEs are produced according to traditional
methods
The know how attached to GIs is transmitted
from one generation to the other
The know how attached to TCEs is
transmitted from one generation to the other
GIs are granted for products that have a
relationship with the land, local resources or
the environment
TCEs are generally linked to a specific place
where a certain product is made or to
traditional methods or conditions used in a
specific place for making a product, often
using raw material from sustainable
resources
Many years are required to produce a link
between a product and its geographical
origin
There is an element of time in the creation of
TCEs
The value of Gis is linked to their origin
The value of TCEs is linked to the knowledge
that a particular community, from a
particular region or place has produced it
Examples of TCEs registered as GIs
• TALAVERA DE PUEBLA pottery and OLINALÁ handicrafts from
Mexico
• JABLONEC jewellery, glass and crystal from the Czech Republic
• MADEIRA embroidery from Portugal
• GORODETS paintings, ROSTOV enamel, KARGOPOL clay toys,
and FILIMONOV toys in the Russian Federation
• MODRANSKÁ MAJOLIKA hand-painted pottery from Modra in
Slovakia
• LOTSCHENTAL masks from Switzerland
Advantages of registering
a GI for TCEs holders
• Geographical indications provide protection that is potentially unlimited
in time, as long as the distinctive link between the goods and the place is
maintained and that the indication has not fallen into genericity
• Geographical indications protect goodwill accumulated over time and
recognise the cultural significance of TCEs
• Geographical indications can help indigenous communities get increased
recognition for their TCEs and benefit from their commercialisation. This
can improve their economic position of TCEs holders by creating value and
enhancing the development of rural communities
• Enable product differentiation in markets and
prevent the entry of other producers into a
niche market segment
• Protection of consumers who wish to buy
genuine products
Limitations of
geographical indications
• The setting up and running of a geographical indications
system can be a costly and lengthy process
• The registration of a geographical indication should be
accompanied by an appropriate marketing strategy
• The knowledge associated with the geographical indication is
not protected and remains in the public domain. As a
consequence, such knowledge is open to misappropriation by
third parties
Certification marks
A certification mark is a mark which indicates that the goods
or services in connection with which it is used are certified
by the proprietor of the mark in respect of geographical
origin, material, mode of manufacture of goods or
performance of services, quality, accuracy or other
characteristics
They are indicia of conformity of goods and services to
particular standards, stipulated by the proprietor of the
mark
Certification marks
Benefits of certification schemes
and collective marks
• Certification marks can provide a guarantee of quality
and authenticity of TCEs
• Promote and maintain the integrity of TCEs
• Improve the economic position of TCEs holders and
ensure they get fair and equitable returns, and
• Raise public awareness and protect consumer who
wish to buy genuine products
• Certification marks allow collective use
• The cost is cheaper than the registration of a GI
• Once registered, certification and collective marks can
potentially be renewed perpetually, provided the
necessary steps are taken
Limitations of
certification schemes
• The effectiveness of a certification scheme
depends on the way it is set up, implemented
and policed
• A successful certification scheme needs to
gain the support of the stakeholders, that is,
the indigenous communities
• Where the certification mark is also a quality mark, there
needs to be an oversight of quality of the goods or services
for which accreditation is sought
• Finally, for a certification scheme to be successful, the owner
of the mark will need to engage in public education
campaigns for the acceptance of the mark, so that the public,
the relevant industry bodies and consumers become familiar
with the characteristics that the certification scheme
guarantees
Trade marks
Signs which distinguish goods and services of
one undertaking from those of other
undertakings
Provide information as to the trade origin of
goods and services
Trade marks Defensive protection
against offensive use
One of the absolute bars to registration excludes from
registration trademarks that are contrary to public
policy or morality and may therefore be considered
offensive to sections of the community, such as
indigenous groups
The New Zealand Trade Marks Act 2002
• The 2002 Act incorporates a mechanism by which the
interests of sections of the community, particularly Māori, can
be taken into account during the TM registration process
• A TM application can be denied on grounds of cultural offence
to Māori
• Advisory Committee set up to help the Commissioner of Trade
Marks assess the potential offensiveness of a trademark
• Between 2002 and 2008, the Committee assessed a little over
1500 TMs containing Māori imagery and text. Of these, 16
were found likely to be offensive to Māori
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Signs that would be offensive
under the Act
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Caution point
The Act will not prevent:
- the offensive use of Māori signs where the user does not seek
to register a trade mark
- the registration of Māori signs by third parties that are not
considered offensive
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Defensive protection
against deceptive use
If the trademark applied for seems to suggest that the
good or service has an indigenous origin, where such
origin would be a significant factor for the purchaser,
and this is not actually the case, the trademark must
be objected
Defensive protection
to prevent others from using the sign
Ex: The defensive protection of ten petroglyphs by
the Snuneymuxw First Nation of Canada
Positive protection
The registration of TCEs as trademarks can have
the positive effect to increase consumer
recognition of authentic indigenous goods and
attract commercial benefits as the addition of
a trademark on a good adds to its value
Benefits of using trade marks
• Protection against inappropriate or offensive use
• A trademark registration of TCEs, combined with an
appropriate marketing strategy may increase consumer
recognition of authentic quality goods and help increase
commercial benefits for TCEs holders
• Once registered, trademarks can potentially be renewed
perpetually, provided the necessary steps are taken
Limitations of trade marks
• Trademark law will not prevent the offensive use of TCEs where the user
does not seek to register a trademark
• Trademark law will not prevent the registration of TCEs by third parties
where the signs are not considered offensive or deceptive
• The trademark system does not offer a comprehensive positive
protection system, as it would be prohibitively expensive to register all
names, signs and symbols associated with a community’s TCEs
• Trademark law does not protect the knowledge that is incorporated in the
TCEs
Geographical
indications
Certification marks
Trade marks
Misappropriation
✗
✗
✗
Inappropriate/
offensive use
✗
✗
✔
Benefit from
commercialization
✔
✔
✔
Attribution
Documentation
Preservation
Promotion
Sometimes
✗
✗
✔
✗
✗
✔
To some
extent
✔
Some factors to consider..
• The existence of an appropriate legal system within the
country of origin or the country where protection is sought
• The existence of goodwill and reputation in a TCE
• The cost of protection
• The length of time it will take to set up the system of
protection
• The support of stakeholders
• The ability to promote the system of protection
Some factors to consider..
• The importance to build a relationship with indigenous
communities
• Taking into account of the specific perspective on ownership v
guardianship of TCEs
• Each traditional community is different
• Ensure that values of TCEs holders are given meaningful
consideration
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