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.
These trade marks would also be registrable in South Africa. In fact, the trade mark WASHINGTON REDSKINS has been registered in South Africa since 1991 in class 25 in respect of “clothing, including boots, shoes and slippers” in the name of NFL Properties LLC.
But what about TCEs in the real sense? In terms of the South African Trade Marks Act anything that falls within the definition of a “mark” can be a trade mark. In terms of section 2(1) a “mark” means “any sign capable of being represented graphically, including a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour or container for goods or any combination of the aforementioned”.
Traditional words, names and symbols can therefore all be “marks”. Artistic works incorporated within a logo (or a device) also qualify as a mark. It is therefore possible for third parties to appropriate a community’s TCEs and use or register them as trade marks in terms of the Trade Marks Act, provided that the various other requirements for registration, such as distinctiveness, are met.
Objection to or cancellation of an offensive trade mark registration.
Since the 1960s, Native American rights organisations have been calling for the team to stop using the name REDSKINS and Native American imagery. In 1992, Susan Harjo and other Native Americans initiated cancellation proceedings on the grounds that the trade marks were registered contrary to section 2(a) of the Lanham Act (which at the time provided that a mark could not be registered if it consisted of ‘matters which may disparage persons, living or dead, institutions, beliefs or national symbols, or bring them into contempt or disrepute’) in that they were disparaging of Native Americans (Harjo v Pro-Football Inc 50 U.S.P.Q 2d 1705).
It is not necessary to discuss the specific details save to say that the application was ultimately unsuccessful. The Court upheld the team’s defence of laches, finding that there was an unjustifiable delay of 25 years in bringing the application. In order to avoid the same fate, Amanda Blackhorse and another group of Native Americans who had just reached the age of majority, filed another cancellation application (Amanda Blackhorse et al v. Pro-Football, Inc., No. 92046185 (T.T.A.B. June 18, 2014)). This time they were successful. However, while on appeal, in an unrelated matter (Matal v Tam 582 US 2017), the US Supreme Court ruled that the section 2(a) disparagement claim upon which the litigation rested, was unconstitutional because “speech may not be banned on the grounds that it expresses ideas that offend.” Consequently, the Redskin trade marks were reinstated and the case dismissed. After the cancellation proceedings were dismissed, the football team’s owner Dan Snyder was quoted as saying that “We’ll never change the name of the team. It’s that simple. NEVER – you can use caps”.
Our Trade Marks Act contains a similar provision. In terms of section 10(12), a mark is unregistrable if the use thereof would be contrary to law, be contra bonos mores, or be likely to give offence to any class of persons. This provision allows interested persons to object to the registration of a trade mark that is deemed offensive, or when read with section 24(1) to apply for expungement of the trade mark on the grounds that it “is an entry wrongly made in the register”.
When used as an adjective the word “offensive” means “to cause someone to feel resentful, upset or annoyed” (Oxford English Dictionary). The unauthorised use of TCEs as trade marks may be offensive for the following reasons: the trade mark itself is disparaging or perpetuates a negative stereotype (as in the Redskins case); the use of sacred or holy words and symbols out of context and in connection with random products is hurtful to the community as well as the “symbolic value” of the TCE in question; and lastly, “taking without asking” negates the right of the community to control the use of their TCEs.
Thus, South African communities are able to rely on section 10(12) of the Trade Marks Act to object to the registration of a trade mark on the grounds that it is offensive.
Section 16(1) of our Constitution also guarantees freedom of expression. However, in view of the exceptions provided for in section 36(1) thereof and the efforts made to protect TCEs as described above, it is unlikely that our courts will allow a defence based on freedom of expression to prevail.
Only a “defensive” measure
But, because this is merely a defensive measure in the Trade Marks Act it only prevents a third party from obtaining statutory trade mark rights. Even if an objection or expungement application is successful, without an interdict preventing use of the offending mark, the trade mark owner is free to do so. There is very little a community can do to stop this in such cases where they themselves do not have a positive right to rely on.
Nevertheless, the deprivation of statutory trade mark protection could in some cases persuade the brand owner to adopt a different trade mark. This of course depends on the nature of the products in question. Without a registered trade mark, a brand owner is not able to rely on the infringement provisions in the Trade Marks Act or the seizure provisions in the Counterfeit Goods Act no. 37 of 1997 and so it would be difficult for a brand owner to prevent the unauthorised use of the trade mark by competitors.
The court of public opinion
The murder of George Floyd in 2020 and the BLM movement highlighted all forms of racism. According to the Washington Post, in early July 2020 the team’s management were informed by their sponsors that, due to the risk of damage to their own brands, they would cancel their sponsorship agreements if the team continued to use the Redskins name and logo. By 13 July 2020, the team’s management confirmed that they would be “retiring” the name. Since then the team used a temporary name, the Washington Football Team, until it rebranded in February 2022 as the Washington Commanders.
Conclusion
In the absence of positive protection, communities have no choice but to rely on social and financial pressure to force change. Sometimes, as shown in this matter, this can be extremely effective. However, even if this pressure is not available, once the IKS Act enters into force the use of a registered TCE in South Africa will constitute a criminal offence. So, in addition to such a trade mark being offensive, it will also be contrary to law. Whether this will cause brand owners to pause before appropriating ‘exotic’ names and imagery, remains to be seen.
