Root cause: protecting traditional knowledge

Maasai—Africa

From Masai Barefoot Technology fitness shoes, which are designed to promote core strength by mimicking the instability of walking on uneven ground in the wearer, to Louis Vuitton’s Masai-inspired range of clothing, the Maasai name has been used in the branding of many different consumer items.

Earlier this year, the Maasai Intellectual Property Initiative was founded to allow the semi-nomadic Maasai people of Kenya and Tanzania greater control over their ‘brand’, and assert IP rights to strengthen their economy.

It was founded by Light Years IP, a non-governmental organisation (NGO) focused on realising the value of IP to support communities in developing countries in Africa. Board members include Maasai elder Isaac Tialolo, who also chairs the Maasai IP Initiative.

Ron Layton, chief executive of Light Years IP, once said that if the Maasai brand were owned by a corporation, it would be worth more than $10 million a year.

He recommends that in order to protect the brand, the Maasai people must first form a representative organisation that can speak on their behalf in relation to their IP. He says they’re well on the way to completing that process, and that by 2014 they will be able to enforce their IP rights.

He suggests that adopting a combination of methods, as opposed to asserting IP rights in a purely legal context, is best for protecting traditional knowledge.

“Voluntary recognition”, or “soft licensing”, where the goal is to change a business’s practice from exploiting a brand without seeking permission to recognising the rightful owners of the brand, whether or not there are trademarks or other IP instruments in place, is a very important element, says Layton.

“Some companies that have been using the Maasai cultural brand … have already agreed that they’ll respect the Maasai right to own the trademark; if they own a trademark they’ll hand it over, and they’ll never use it again without the permission of the Maasai,” he says.

This method works for the Maasai, Layton says, as they’re not seeking to own a trademark just to create revenue, they’re seeking to own it for respect.

"Some companies that have been using the Masai cultural brand ... have already agreed that they'll respect the Massai right to own the trademark."

“The concept of respect is fundamental to their society,” he says.

While there are elements outside a legal system that can be effective, active licensing of IP rights allows a party to monitor what is happening in the market and take action.

Could a library of traditional knowledge, such as India’s Traditional Knowledge Database Library, which seeks to cut biopiracy by publishing details of traditional Indian medicines, work for the Maasai?

“The library is a very interesting idea,” says Layton. “It’s a clear issue in developing countries that if you have a new invention—or an old one—and you register your patent in the African IP Organization in West Africa, unless you also register that patent in places where it’s much more expensive to do so, all you’re doing is publishing it for someone else to pick up and register in the US or Japan.”

He adds that patent mechanisms are not very effective for protecting the IP of those in developing nations, whether it is traditional knowledge or modern knowledge, although a library has the potential to be quite powerful if access to it is well controlled.

William Maema, a partner at Iseme, Kamau & Maema Advocates in Nairobi, says that it has been alleged that traditional knowledge belonging to Kenyan communities, including textiles and herbal medicines, has been patented abroad.

“If this is true, then the commercial benefit that would otherwise enjoyed by the relevant communities in royalties is going elsewhere,” he said.

Kenya does not have a specific law for the protection of traditional knowledge, he says, adding that Maasai traditional cultural expressions would only be protected, if at all, by way of copyright, trademarks or trade secrets.

He continues: “The existing legal and institutional frameworks for the protection of traditional cultural expressions is inadequate considering that most Kenyan rural communities rely heavily on traditional knowledge, in particular agriculture and medicines, which are a major source of income and livelihood.

“Furthermore, poor legal protection and enforcement mechanisms have had the effect that revenue that could otherwise have been earned in royalties, license fees, tourism and publicity related to cultural knowledge and expression is lost. It is notable that tourism is the second largest source of foreign exchange revenue in Kenya, after agriculture.”

He adds that while current domestic IP rights are an inappropriate legal regime for the protection of traditional knowledge and traditional cultural expressions, this may not be the position internationally.

The Navajo case—the US

In contrast with the Maasai’s approach, some indigenous communities in the US are embracing a more established legal route in the protection of their IP.

In February 2012, the Navajo Nation sued Urban Outfitters for trademark infringement, trademark dilutions, unfair competition and commercial practice law violations, and for violations of the Indian Arts and Crafts Act (IACA). Urban Outfitters had used the word ‘Navajo’ to describe a range of clothing and items in its stores.

The Navajo Nation, who reside in the Southwestern US, claimed they have been known by the name ‘Navajo’ since 1849, and have used the name continuously in commerce. At the time of filing, the Nation, of which there are 300,000 members, had 86 trademarks registered with the US Trademark and Patent Office with the ‘Navajo’ component.

The IACA seeks to encourage the production of handicrafts and the economic development of native communities. It is a ‘truth in advertising’ law that prohibits the misrepresentation in marketing of Native American-produced arts and crafts products within the US.

In the complaint, the Nation said that Urban Outfitters’ products “evoke the Navajo Nation’s tribal patterns, including geometric prints and designs fashioned to mimic and resemble Navajo Indian-made patterned clothing, jewellery and accessories.”

It described the Navajo hip flask Urban Outfitters was offering as “derogatory and scandalous”, as the Nation has banned the sale and consumption of alcohol within its borders.

Rebecca Tushnet, a professor of law at Georgetown Law in Washington, DC, describes the case as an interesting interaction between the commercial, mass production aspect of IP and the traditionally handmade and individually produced native arts.

The Navajo Nation is asserting classic trademark claims as well as claims made under the IACA in this case, Tushnet says.

She says these claims “pull in different directions” because the trademark covers any kind of production and that the Navajo Nation is also claiming trademark rights over the term Navajo, regardless of whether it is used in handcrafts.

“If the Navajo Nation claims both that ‘Navajo’ means a product handcrafted by a Navajo (who may not be licensed by the Nation to produce such goods) and also that ‘Navajo’, as applied to any sort of good, tells consumers that the Nation authorised its production—the classic function of trademarks—then there seems to be a clash of meanings,” she adds.

Anthony Lupo, partner at Arent Fox LLP in Washington, DC, describes the case as “unique” because of these two separate claims.

He says the case is different because the Navajo are claiming they own Navajo as a trademark in addition to claiming false association. He adds: “Normally, this type of use is challenged as falsely designating a connection or origin with a group of people or location and not based on the fact that someone actually owns the word as a trademark.

“If someone used the word 'Paris' as a trademark for clothing they would likely be challenged if the product did not have a connection with Paris, not because someone actually owned the word Paris as a trademark.”

Srividhya Ragavan, a professor of law at the University of Oklahoma, says that Native American tribes are becoming “very serious” about protecting their IP. In the US such communities are using trademarks and some competition laws to create such protection, as opposed to traditional knowledge, which the US does not “necessarily” recognise, she says.

“It’s pretty much fallen outside the domain of IP as defined in the US,” she says. “Traditional knowledge has essentially been an area that developing and poorer countries have demanded because they have more of these kinds of rights.”

Tushnet adds: “The Navajo case is certainly a reminder that conventional trademark law has a role to play that is very different from laws specific to indigenous communities.”

She describes the IACA as a “very American” law, as it has a focus on economics: “That’s consistent with the American tradition, but it’s clearly out of sync with the moral claims that are made … for indigenous rights protection.”

"The Navajo case is certainly a reminder that conventional trademark law has a role to play that is very different from laws specific to indigenous communities."

The World Intellectual Property Organization (WIPO)’s Intergovernmental Committee on IP and Genetic Resources, Traditional Knowledge and Folklore is working on a global solution to effectively protect traditional cultural expressions and traditional knowledge, although in this case the US will likely remain an outlier, Tushnet says.

The trial is due in 2015.

South African solutions

In contrast with the US, South Africa, with its wealth of traditional offerings including the famous rooibos tea and biltong cured meat, has been working towards creating a law that recognises traditional knowledge as an IP right.

In April this year, a new draft Traditional Knowledge Bill was published, which aims to establish a new system of IP rights specific to traditional knowledge.

Rebecca Sikwane, a senior associate at law firm ENSafrica in Johannesburg, says that while the IP community has no issue with traditional knowledge being protected, it’s not very comfortable with it being done through IP legislation.

“It feels that traditional knowledge is far removed from laws which give limited monopoly rights as a reward for creativity or inventiveness,” she says.

“A particular problem is that our IP laws are closely aligned to the IP laws of most other countries—thus allowing for reciprocal protection for IP—and it’s felt that if our IP laws suddenly start providing protection for things that are not protected elsewhere, there may be problems.”

The new bill, also known as the ‘Wilmot Bill’ after the member of parliament Wilmot James who introduced it, keeps traditional knowledge outside IP statutes. Sikwane says that approach is shared by WIPO, which feels traditional knowledge should be protected as a sui generis right.

“The Wilmot Bill creates a brand new property right called Traditional Knowledge, which itself consists of three different rights,” she explains.

“These are the Traditional Work, the Traditional Design and the Traditional Mark.”

The bill was drafted by academic Owen Dean, who opposed an earlier bill, the IP Laws Amendment Bill 2007, which suggested protection for traditional knowledge by amending various pieces of IP legislation, including the Copyright Act, the Designs Act and the Trade Marks Act.

Cobus Jooste, fellow of the chair of the IP Faculty of Law at Stellenbosch University, wrote that the old bill was incapable of protecting traditional knowledge and financially benefiting indigenous communities, and that “the foremost IP practitioners in South Africa found it entirely impracticable”.

The new bill has not been approved, but if it is, IP practitioners will certainly keep their eyes on South Africa to see how traditional knowledge as an IP right operates in a legal context.

The protection of traditional knowledge is a sensitive issue which will inevitably be approached in different ways around the world. While some solutions may work in certain jurisdictions and for certain works, some will not, depending on a variety of factors including the stage of a country’s development and the strength of its communities.

Fundamentally it must be asked what the goal of protecting traditional knowledge is. Unlike other IP rights, it is not entirely economically driven—and in some cases far from it. Layton says it’s about preserving respect in addition to using traditional knowledge to communities’ advantage, while the IACA seeks to maximise the value of its people’s handicrafts in an economic context.

It may not be as cut and dried as creating a global legal framework, although when WIPO releases its proposed international model for protecting traditional knowledge, the world’s reaction will certainly provide a window into what would work best.