Tuesday, 4th September, 2012
New Zealand intellectual property framework inadequate to protect Maori IP
In a recent opposition hearing, the Intellectual Property Office of New Zealand found in favour of Prokiwi International Limited (Prokiwi), a New Zealand themed souvenir company, and refused to register applications by Te Runanga o Toa Rangatira Incorporated (the Runanga) for KA MATE, UPANE KAUPANE, WHITI TE RA, and KA ORA (Te Runanga O Toa Rangatira Incorporated v Prokiwi International Limited  NZIPOTM 14, 1 June 2012). The Assistant Commissioner considered the marks had no distinctive character, because other traders were likely, in the ordinary course of their business, to want to legitimately use the marks in relation to their own goods or services.
Te Runanga O Toa Rangatira Incorporated v Prokiwi International Limited  NZIPOTM 14 (1 June 2012)
The words of the trade marks applied for form part of the haka Ka Mate, a traditional Maori dance. Authored in the 1820s by Te Rauparaha, a chief from the Ngati Toa tribe, Ka Mate is now known and associated internationally with New Zealand. Te Rauparaha's authorship and Ngati Toa's role as kaitiaki (guardians) of Ka Mate has been acknowledged by the New Zealand Government.
The Runanga is a Ngati Toa representative body and was acting on the Tribe's behalf in pursuing these trade mark applications. One of the stated ambitions of the Runanga was to prevent culturally offensive and unauthorised commercial use of Ka Mate.
The Ka Mate haka is widely regarded as being symbolic of New Zealand and a great many souvenir suppliers feature words from Ka Mate on their products. It is clear these traders are not making use of Ka Mate in an attempt to represent that Ngati Toa is the source of their products. But the question remains whether the use of the Ka Mate haka by souvenir supplies can be considered "legitimate" as concluded by The Assistant Commissioner, when these traders are attempting to gain commercial benefits from culturally offensive and/or unauthorised use of the haka. If this ruling is correct, then it provides further evidence the current intellectual property framework is not adequate to prevent the misuse or misappropriation of Maori intellectual and cultural property.
WAI 262 report
The limitations of the current IP framework in relation to Maori intellectual and cultural property have recently been acknowledged by the Waitangi Tribunal (the Tribunal). The Tribunal is a commission of inquiry established by the New Zealand Government to investigate and make recommendations on claims brought by Maori relating to actions or omissions of the Crown, that breach the promises made in the Treaty of Waitangi (an 1840 Treaty between the Crown and various Maori tribal leaders).
The 262nd claim brought before the Waitangi Tribunal (known as WAI 262), covered a wide range of subject matter, including the claim the Crown has breached its obligations by failing to provide adequate protection under the current intellectual property framework for Maori intellectual and cultural property.
In its report, issued in July 2011, the Tribunal agreed with the claimants in this respect and recommended an alternative framework be set up to protect Maori intellectual and cultural property.
Alternative framework proposed
The report proposed varying levels of protection for different categories of Maori intellectual and cultural property and the establishment of a new expert committee (the committee) to adjudicate on disputes related to the use of Maori intellectual and cultural property.
In proposing graduated levels of protection, the report introduced new terms Taonga works, Taonga-derived works, and closely-held matauranga Maori.
Matauranga Maori translates roughly as "Maori knowledge" but is broader than that as it refers not only to the knowledge itself but also to the Maori way of knowing. No clear definition of closely-held matauranga Maori was given. But it appears that matauranga Maori will be considered closely held when it attaches to a particular iwi (tribe) or hapu (sub-tribe), has whakapapa (ancestral) connections and living kiatiaki (guardians).
The report defines a Taonga work as "a work, whether or not it has been fixed, that is in its entirety an expression of matauranga Maori; it will relate to ancestral connections, and contain or reflect traditional narratives or stories". Taonga works are those considered most sacred and will always have living kiatiaki. Taonga can be translated as "treasures" and the term encompasses both the tangible (land, flora, fauna, cultural works) and intangible (language, matauranga Maori). Ka Mate appears to fall within this definition of a Taonga work.
The report defines a Taonga-derived work as "a work that derives its inspiration from matauranga Maori, but does not relate to or invoke ancestral connections, nor contain or reflect traditional narratives or stories, in any direct way. A Taonga-derived work is identifiably Maori in nature, but has neither mauri (lifeforce) nor living kaitiaki".
Taonga works and closely-held matauranga Maori would be granted the highest level of protection under the proposed framework. Any future commercial use of Taonga works and closely-held matauranga Maori would require the prior consent from the relevant kaitiaki. However, there would be no limitation on private, non-commercial use, provided that use is not offensive or derogatory.
On the other hand, under the proposed framework, Taonga-derived works would be free to be used commercially or otherwise without prior permission, provided that use was not offensive or derogatory.
The role of the committee
The report proposed giving the committee power to:
- hear objections that use of a Taonga work, Taonga-derived work, or matauranga Maori is offensive or derogatory (objections can be made by anyone)
- hear objections by kaitiaki that a Taonga work or closely-held matauranga Maori is being used commercially without consultation or consent from kiatiaki
- decide whether a work is a Taonga work or closely-held matauranga Maori
- provide declaratory rulings on whether the use of a Taonga work or closely-held matauranga Maori is permissible
- identify kaitiaki
- keep registers of Taonga works and kaitiaki
- develop and establish best practice guidelines for the use, care, protection, and custody of Taonga works, Taonga-derived works, and closely-held matauranga Maori
- develop and establish best practice guidelines for consultation with kiatiaki and Tohunga(experts).
Proposed framework to affect commercial use
If the proposed framework were in place, souvenir sellers wanting to use Ka Mate on their products would need the prior consent of Ngati Toa to do so. This is because Ka Mate appears to fall within the definition of a Taonga work and Ngati Toa are already acknowledged as its kaitiaki. The proposed committee would have the power to make rulings on objections to unauthorised commercial use raised by Ngati Toa as kaitiaki or objections to offensive or derogatory use.
The outcome of the hearing discussed above is that Ngati Toa are unable to fully perform their role as kaitiaki of Ka Mate by preventing culturally offensive and unauthorised commercial use of it.
This decision provides further evidence the existing intellectual property framework is not capable of providing adequate protection for Maori intellectual and cultural property and the establishment of an alternative framework, along the lines of that proposed by the Tribunal, is a workable solution. However, given the controversial nature of the recommendation, the road to implementation of the Tribunal's recommendations is likely to be slow. The Runanga have elected not to appeal the hearing decision, but are considering taking this matter to the Waitangi Tribunal.
An edited version of this article was published in the 39th edition of World Trademark Review, Oct/Nov 2012.