April 01, 2020 Feature

Cultural IP vs. Commercial IP

J. Janewa Osei-Tutu

©2020. Published in Landslide, Vol. 12, No. 4, March/April 2020, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

Who, if anyone, should control the use of the Hawaiian greeting “aloha”? This seemingly simple question can generate a lot of controversy. Claims of cultural appropriation are not new. Cultural appropriation in fashion, film, and the food industry continues to generate controversy, and in some instances force change. For example, trademarking or attempting to trademark cultural words and phrases, such as “aloha,” “Día de los Muertos,” and “kimono,” has led to public consternation and rebuke.1 Companies are well advised to pay attention to cultural intellectual property (IP) because although a name or word may be legally available as a trademark, there may be reputational and financial costs to using words or symbols in ways that are perceived as cultural appropriation. Kim Kardashian West, for instance, received significant public backlash, reflected by the hashtag #KimOhNo, for attempting to trademark the word “Kimono” for her shapewear.2 A kimono is a type of traditional Japanese dress, and the decision to call the shapewear “Kimono” was not well received. Kardashian West decided to rebrand and has now called her shapewear “Skims.”3

As public awareness builds regarding cultural appropriation and as countries develop laws to protect their cultural IP, the clash between classic trademark law and cultural IP can be expected to intensify. This article will discuss cultural appropriation as it relates to IP to contrast the ways trademark law protects commercial identities as compared to cultural identities. Although there are a number of examples that could be referenced, one domestic example and one that underscores international considerations are provided. In the domestic example, Aloha Poke, there are no IP laws to protect the cultural aspects of the IP that are claimed. In the second example, Ghanaian kente cloth, there are relevant laws in place in another country.

Aloha Poke Restaurant and Native Hawaiians

In 2018, it was reported that a Chicago restaurant sought to enforce its trademark for the phrase “Aloha Poke” and sent cease and desist letters to various businesses, including one in downtown Honolulu, Hawaii.4 The trademark for “Aloha Poke” was registered by the Aloha Poke Company in 2017.5 The word “poke” was disclaimed. The attempts to prevent others from using the word “aloha” generated some negative public reaction.6 This is because the word “aloha” is a Hawaiian greeting that can be used to say “hello” or “goodbye.”7 Hawaiian poke is a traditional dish of raw fish that has been cut into chunks.8

Someone started a petition on behalf of the Kanaka Maoli peoples of Hawaii to have the Aloha Poke company in Chicago remove both words from its name.9 The Kanaka Maoli are considered Native Hawaiians. According the petition:

The root base of aloha are the words ALO and HA. Alo means presence, or as some kupuna have described it, recognition. HA means the breath of life. Therefore, when we as Kanaka Maoli say “Aloha” we are recognizing being in the presence of another person’s breath of life. To threaten suit to Kanaka Maoli families who are simply trying to practice their generations old culture and feed the community? So that you can profit off of a culture and a people that are not yours to sell? That is what we call HEWA.10

The word “hewa” refers to something that is wrong.11 This trademarking of the word “aloha” was perceived as an appropriation of Native Hawaiian culture. People were offended that a private company in Chicago was claiming Hawaiian words and seeking to prevent others, including Native Hawaiians, from using the word “aloha” as part of their business names or branding.12 The Native Hawaiians had not, it seems, claimed an individual exclusive right to use the greeting as a trademark. There may be a number of reasons for this, but one important aspect is the recognition of the term as a cultural symbol rather than as a commercial symbol.

The trademark may not be legally problematic insofar as it serves as a source identifier for the Chicago business, but it raises issues regarding cultural IP.13 In response to Aloha Poke, the Hawaiian legislature passed a resolution that created a task force to look into the protection of Native Hawaiian cultural IP, traditional knowledge, and genetic resources.14

Ghanaian Kente in the Black Panther Movie

Turning to a situation with international implications, it was reported that the Ghanaian government had taken issue with the unauthorized use of Ghana’s traditional kente cloth in the Marvel Studios film Black Panther.15

The Black Panther movie beautifully showcased African traditional wear from a number of countries. For example, the lead character, T’Challa, wore a kente stole in the film. Kente designs are quite popular and often seen as a symbol of black pride. It is not unusual, therefore, to see kente cloth incorporated into North American fashion items or as part of the graduation attire at some historically black colleges and universities in the United States.

The difficulty, however, is that, like the Japanese kimono, kente cloth is part of Ghana’s traditional cultural wear. Kente is a recognizable intricate pattern of silk woven cloth that originates from the Akan region of Ghana.16 Ghanaians typically wear kente for special occasions. Moreover, kente is protected as folklore under Ghanaian law as part of Ghana’s cultural heritage.17 The folklore is held in trust by the president of Ghana for the people of Ghana.18 Personal use of folklore is permissible without the need to seek permission, but it appears that one would need to seek permission from the National Folklore Board to use kente for commercial purposes.19 Of course, given the territorial nature of IP law, this law would apply to the use of folklore in Ghana, but it is not clear how Ghanaian law could help prevent the unauthorized use of kente in an American film in the United States. The primary international IP agreements, such as the Berne Convention, the Paris Convention, and the TRIPS Agreement, do not require the U.S. to recognize and protect folklore or cultural IP.20

Cultural or Commercial?

As the aloha and kente examples illustrate, conflicts can arise when cultural words or symbols are appropriated by private actors for commercial purposes.

Trademark law protects commercial symbols but not words or symbols that are primarily cultural in nature. Section 45 of the Lanham Act defines a trademark as a “word, name, symbol, or device . . . used by a person, or . . . which a person has a bona fide intention to use in commerce.”21 A cultural word or symbol that is not used in commerce is not protectable as a trademark under U.S. or international law.22 Certainly, trademark law can be used to protect cultural words or symbols when those words or symbols are used in commerce to distinguish the goods or services of one entity from those of another. However, cultural symbols that are not used in commerce will not be protected as trademarks.

Copyright can protect some traditional cultural works, as can geographical indications.23 Geographical indications, for example, have a cultural component because they identify a good as coming from a particular region or territory where there is some quality, reputation, or other characteristic of the good that can be attributed to its geographic origin. But much cultural IP is comprised of intergenerational literary and artistic works, or words and symbols that are not protectable under classic IP law. This includes works that may have been protectable by copyright but have now fallen into the public domain, or distinctive symbols that have cultural significance but are not protected as trademarks or geographical indications because they are not used in commerce as indicators of source.

In sum, cultural IP as used here includes a narrow category of intangible cultural goods that could be protected under copyright or trademark law if temporal limitations or commercial use requirements were removed. Ghanaian kente cloth is an example of cultural IP. Kente is protected intangible cultural property under Ghanaian law, but there was little Ghana could do to prevent the use of the common kente pattern in the United States. Certainly, a specific variation of kente may be copyrightable, but the common pattern that has been around for generations is, arguably, in the public domain.

Legal and Nonlegal Solutions

One option is to create some form of international protection for cultural IP.24 The World Intellectual Property Organization has been engaged in discussions related to this topic for several years.25 Arguably, the law should protect intangible cultural goods that have elements of what is protectable under current IP law. This could include cultural goods that would be protected as trademarks or geographical indications if used in commerce, or that would have been protectable under copyright law at one point in time. The literary or artistic works, words, or symbols in question should be protected if they are recognizable as symbols or representations of a particular culture, even if they are not used in a commercial sense.

Secondly, cultural IP from other countries should be recognized if it is protected by that country’s domestic law. If an artistic work or cultural symbol is protected by domestic IP law as part of the cultural heritage of a nation, it should, like other IP, be protectable across borders. This protection could also be limited to cultural words or symbols that could be protected as trademarks if used in commerce as indicators of source or by copyright if the term of protection had not expired.26 However, the trademark use in commerce would not be required, nor would the copyright temporal limitation apply.

Finally, businesses can do their due diligence before using words or symbols from another cultural group. This voluntary approach is the most likely short-term solution because the international legal solutions proposed above, while preferable, are not a realistic short-term option. Often allegations of cultural appropriation are related to questions of respect, attribution, and, in some instances, benefit sharing. When a business uses IP law in ways that are perceived as respectful, it is likely to help—but unlikely to harm—the brand. The first step may be simply to start a conversation with the particular indigenous or cultural community before using their cultural symbols, clothing, songs, or dances as commercial symbols. One can choose to do this even if it appears that there is no legal barrier to using the cultural symbol in the commercial context.

Endnotes

1. See, e.g., #AlohaPokeCo, Twitter, https://twitter.com/hashtag/alohapokeco (last visited Feb. 14, 2020).

2. Vanessa Friedman, Kim Kardashian West and the Kimono Controversy, N.Y. Times (June 27, 2019), https://www.nytimes.com/2019/06/27/fashion/kim-kardashian-west-kimono-cultural-appropriation.html.

3. Layla Ilchi, Kim Kardashian Reveals New Name for Shapewear Brand after Backlash, WWD (Aug. 26, 2019), https://wwd.com/fashion-news/fashion-scoops/kim-kardashian-kimono-brand-rename-backlash-1203208936.

4. Audrey McAvoy, Hawaii Pushes Back after Chicago Restaurant’s “Aloha Poke” Trademark: “They Need to Have Some Cultural Sensitivity, Chi. Trib. (Apr. 19, 2019), https://www.chicagotribune.com/business/ct-biz-hawaii-aloha-poke-trademark-20190419-story.html.

5. Aloha Poke Co., Registration No. 5,123,102.

6. Nick Kindelsperger, Hawaiian Activists Call for Boycott of Aloha Poke, Chi. Trib. (July 30, 2018), https://www.chicagotribune.com/dining/ct-food-aloha-poke-boycott-trademark-issues-petition-20180730-story.html.

7. Aloha, Oxford Learner’s Dictionaries, https://www.oxfordlearnersdictionaries.com/us/definition/english/aloha (last visited Feb. 14, 2020) (“a Hawaiian word meaning ‘love,’ used to say hello or goodbye”).

8. Rachel Tan, 6 Things to Know about Hawaiian Poke, Michelin Guide Wash., D.C. (Nov. 9, 2017), https://guide.michelin.com/us/en/washington/washington-dc/article/features/poke-hawaiian-raw-fish-dish.

9. Kalamaokaaina Niheu, Aloha Poke Co, Remove “Aloha” and “Poke” from Your Name, Change.org, https://www.change.org/p/levy-family-partners-aloha-poke-co-remove-aloha-and-poke-from-your-name (last visited Feb. 14, 2020).

10. Id.

11. Hewa, Hawaiian Dictionary, http://wehewehe.org/gsdl2.85/cgi-bin/hdict?e=d-11000-00---off-0hdict--00-1----0-10-0---0---0direct-10-ED--4-------0-1lpm--11-haw-Zz-1---Zz-1-home---00-3-1-00-0--4----0-0-11-00-0utfZz-8-00&d=D3431&l=en (last visited Feb. 14, 2020) (“[m]istake, fault, error, sin, blunder, defect, offense, guilt, crime, vice; wrong, incorrect, wicked, sinful, guilty; to err, miss, mismanage, fail”).

12. Carla Herreria, How a Hawaiian Family Suffered When a Chicago Chain Trademarked Native Words, HuffPost (Aug. 3, 2018), https://www.huffpost.com/entry/hawaii_n_5b60d5cfe4b0b15aba9d9d6a.

13. Since the U.S. Supreme Court struck down the Lanham Act provision on disparaging marks, there is no basis for preventing the use of culturally offensive marks. In any event, the use of “aloha” may not have been “disparaging” to Native Hawaiians. See Matal v. Tam, 137 S. Ct. 1744 (2017).

14. H.R. Res. 142, 30th Leg. (Haw. 2019); S. Res. 164, 30th Leg. (Haw. 2019); see also Amanda Robert, After “Aloha” Restaurant Dispute, Hawaii Pushes to Protect Cultural Intellectual Property, ABA J. (Apr. 26, 2019), http://www.abajournal.com/news/article/after-aloha-dispute-hawaii-pushes-to-protect-cultural-ip.

15. Ghana to Sue Producers of Black Panther Movie, GhanaWeb (May 24, 2019), https://www.ghanaweb.com/GhanaHomePage/entertainment/Ghana-to-sue-producers-of-Black-Panther-movie-748937.

16. Boatema Boateng, Adinkra and Kente Cloth in History, Law, and Life, in Textile Soc’y of Am., 2014 Biennial Symposium Proceedings: New Directions: Examining the Past, Creating the Future 932, 933 (2014).

17. Copyright Act, 2005, Act 690 § 4 (Ghana). Folklore is defined as “the literary, artistic and scientific expressions belonging to the cultural heritage of Ghana which are created, preserved and developed by ethnic communities of Ghana or by an unidentified Ghanaian author, and includes kente.” Id. § 76.

18. Id. § 17 (“The rights vested in the President on behalf of and in trust for the people of the Republic in respect of folklore under section 4 exist in perpetuity.”).

19. Id. §§ 19, 64.

20. See Berne Convention for the Protection of Literary and Artistic Works, Sept. 9, 1886, 828 U.N.T.S. 221; Paris Convention for the Protection of Industrial Property art. 6ter, Mar. 20, 1883, 13 U.S.T. 2, 828 U.N.T.S. 107, as revised at Stockholm on July 14, 1967, 21 U.S.T. 1583, 828 U.N.T.S. 305.

21. 15 U.S.C. § 1127.

22. Id.; Agreement on Trade-Related Aspects of Intellectual Property Rights art. 15, Apr. 15, 1994, Marrakesh Agreement Establishing the Word Trade Organization, Annex 1C, 1869 U.N.T.S. 299 [hereinafter TRIPS Agreement].

23. Geographical indications “identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.” TRIPS Agreement, supra note 22, art. 22(1).

24. J. Janewa Osei-Tutu, Harmonizing Cultural IP across Borders: Fashionable Bags & Ghanaian Adinkra Symbols, 51 Akron L. Rev. 1197 (2017).

25. See Traditional Knowledge, World Intell. Prop. Org., https://www.wipo.int/tk/en (last visited Feb. 14, 2020).

26. Osei-Tutu, supra note 24.

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J. Janewa Osei-Tutu is an associate professor of law at Florida International University College of Law in Miami, where she teaches various intellectual property law courses. She is currently researching and writing about intellectual property, culture, and human rights.