As a brand, navigating a more socially conscious world is a difficult task, especially in the age of the internet. Social media platforms like Facebook and Twitter make it easy for people to stand up against injustices and easily circulate calls for action to millions of people online. The internet also makes it easy for anyone to dig up unsavory information on a person or an entity, no matter how old that information is. In order to survive the era of the internet rage machine, brands need to make sure they avoid stepping on certain cultural landmines, or risk having to fix what often ends up being a major PR nightmare.
One major cultural landmine that brands seem to keep stepping on is cultural appropriation. Cultural appropriation, as defined by the Oxford Dictionary, is “the unacknowledged or inappropriate adoption of the customs, practices, ideas, etc. of one people or society by members of another and typically more dominant people or society.” The power structure involved here, by definition, makes brands an easy target for accusations of cultural appropriation, especially since they stand to profit in some way from adoption of customs, practices, or ideas. Because of this, brands need to be extra careful in how they implement things they “borrowed” from cultures around the world, or face backlash from the public once the accusations come.
Things get even trickier for brands on the topic of cultural appropriation once you start factoring in things like trademarks. This week, Disney is facing backlash for a trademark registration with the US Patent & Trademark Office that it applied for in 1994 and received in 2003. The trademark registration is for “HAKUNA MATATA,” the phrase used by Disney in one of the company’s most popular movies, “The Lion King.” The phrase is also Swahili for what roughly translates in English to “no problems” or “no worries.”
Although the trademark registration was granted to Disney in 2003, the recent backlash can be credited to an individual named Shelton Mpala, who started a petition titled “Disney Robs Swahili of ‘Hakuna Matata’” on the popular petition site Change.org, and had garnered more than 103,000 signatures by Thursday afternoon, toward its target goal to 150,000. According to Mpala, Disney shouldn’t have been allowed to acquire a trademark registration for “something that it didn’t invent,” and notes that the phrase “has been used by most Kiswahili-speaking countries such as Tanzania, Kenya, Uganda, Rwanda, Burundi, Mozambique, and the Democratic Republic of the Congo.” The act of acquiring a trademark registration for the phrase, as Mpala notes, is “predicated purely on greed and is an insult not only the spirit of the Swahili people but also, Africa as a whole.” Mpala goes as far to say that “[t]he term ‘Hakuna Matata’ is not a Disney creation hence not an infringement on intellectual or creative property, but an assault on the Swahili people and Africa as a whole.” In order to solve this problem, Mpala proposes Disney “removes the trademark on Hakuna Matata.”
Although Mpala makes a passionate case here for the cancellation of the Disney “HAKUNA MATATA” trademark, much of it is actually based on various fundamental misunderstandings of how trademark law works. The “HAKUNA MATATA” registration Mpala speaks of in his petition is in the US, for “T-shirts” in International Class 025. Contrary to what many may think, trademark registrations are not blanket licenses to their owners, allowing them to stop anyone from ever uttering or using words or phrases.
In fact, a quick search of the phrase “HAKUNA MATATA” on the US Patent and Trademark Office’s database reveals there are four other active trademark filings for the phrase or that incorporate the phrase in the mark. What Disney’s trademark registration allows for is enforcement of its rights in the phrase “HAKUNA MATATA” for t-shirts, and not as a way to stop anyone from saying or using the phrase in connection with other goods or services.
Another misunderstanding is that a trademark registration in one country can be used to stop others from using it anywhere in the world. This is false, as trademark rights are geographic, which means that Disney can’t use the “Hakuna Matata” trademark registration to stop anyone in any of the countries Mpala noted in the petition. Aside from this trademark registration, Mpala doesn’t point to any examples of how Disney wants to claim complete and total ownership of the phrase.
A closer look at the recent history of the mark on the US Patent and Trademark Office’s website, however, reveals that Disney does claim some kind of trademark rights over the phrase “HAKUNA MATATA,” and did just that as recently as November 15, 2018. On that date, Disney filed a Notice of Opposition against an individual attempting to file a trademark registration application for “HAKUNA MATATA,” to use for a variety of child-related products, such as car seats, carriages and blankets. In this filing, Disney argues that its usage of the phrase “in connection with [Disney]’s well-known and enormously successful The Lion King films, television shows, musicals, sound recordings, books, video games, theme parks, and a wide variety of collateral merchandise” established its common law trademark rights in the phrase for a diverse variety of merchandise, which includes items like the ones the individual was trying to file for. By pointing to its extensive usage of the phrase for a variety of merchandise, Disney is essentially claiming that it has established ownership of trademark rights of the phrase “HAKUNA MATATA” for a large assortment of goods, without even having to federally register the phrase. The proceeding is, as of today, still ongoing.
The timing of the petition is interesting, given that Disney is set to release a highly anticipated remake of “The Lion King” in 2019, which will undoubtedly include the song “Hakuna Matata” as a part of the movie. Given that it claimed ownership of the phrase as recently as last month in goods beyond the scope of its filing, Disney may not be keen to relinquish any rights in the phrase, no matter how angry people get over its alleged cultural appropriation.
Still, how it chooses to address the allegations may provide other brands with an example of how to navigate these kinds of issues.