Published on 6 October 2011 @ 1:19 pm
Inside Views: South Africa: TK Legislation In The New Tradition
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Intellectual Property Watch
“Ex Africa semper aliquid novi”, which can be freely translated from Latin to mean “there is always something new coming out of Africa,” said Pliny, the ancient Roman writer and scholar. Presumably then, as is the case now, the concept of “new” included an expression of sarcasm and deprecation as in “absurd, nonsensical and ridiculous.” Well, Pliny has been proved right once again.
The South African Government is on the threshold of passing legislation to grant protection of, and the facility to derive revenue from the use of, so-called “traditional knowledge” (TK) – i.e., folklore, tribal art and music and the like, or so it thinks. The Trade and Industry Portfolio Committee of Parliament has finalised the Intellectual Property Laws Amendment Bill and it is well on its way towards becoming law. It is indeed a “new” piece of legislation coming out of Africa.
The Drafting Process
The Bill [pdf] has been at least four years in the making. A first draft prepared by the Department of Trade and Industry (DTI) first saw the light of day in 2007. After three years of introspective effort on the part of the DTI, the Bill came before the Portfolio Committee. To its credit, the committee soon recognised that it was rubbish and that it could not advance in the state in which it had been received. The committee wisely realised that there was little prospect of the DTI coming up with anything better and decided that it would, itself, redraft the bill. It probably did not, and still does not, realise the enormity and complexity of the task.
To its credit, the Portfolio Committee has greatly improved the Bill and has altered it radically. Its version has not been made available to the public for scrutiny and comment. It contains a number of new provisions and principles and has (thankfully) radically changed the original version. This raises the question of whether the revised Bill should have been re-published for public comment and whether, in the absence of its re-publication, there has been adequate consultation on it as required by the Constitution.
The approach adopted by the DTI, and regrettably perpetuated by the Portfolio Committee, was to take four of the existing intellectual property (IP) statutes, namely the Copyright, Designs, Performers Protection, and Trade Marks Acts, and to write into them provisions aimed at granting protection to traditional works akin to the subject matters of the individual statutes. Unfortunately, this approach overlooks a fundamental and very basic principle of each of these acts, namely that they are based on the philosophy that new creative works can be protected for the benefit of their individual originators for a strictly limited period of time subject to the condition that, upon the expiry of the term of protection, they are surrendered to the public at large and become free for use by all. In other words, they fall into the public domain. Traditional works, on the other hand, are already in the public domain and are now to be plucked from it and become the private property of traditional communities who will be entitled to remuneration for their use forever hereafter.
It is not difficult to realise that a set of rules designed for one situation is not going to be easily applicable to the antithesis of that situation. And so it has proved to be. Attempting to protect traditional knowledge in the existing IP statutes has been akin to driving a square peg into a round hole. There has been no shortage of eminent and knowledgeable people pointing out the error of their ways and drawing attention to the fundamental and numerous flaws and errors in the draft Bill. These have included the specialist IP profession, academics, the judiciary, the compilers of the Regulatory Impact Assessment commissioned by the President and the World Intellectual Property Organization (WIPO), the agency of the United Nations that administers IP throughout the world as well as the international treaties that regulate it.
There has been a constant refrain that if you want to protect TK – it was to be done in a sui generis, or customised piece of legislation designed to take account of the unique and special nature of TK.
WIPO itself has been grappling with the problem of protecting TK for several years and has been devoting its specialist expertise towards achieving a workable outcome. It is on the verge of a breakthrough and it is anticipated that next year a model sui generis law and an international treaty providing for it will be presented to the international community. The sensible approach would be to await this development and then to pass domestic legislation in tune with the model law and treaty, thus enabling South Africa to be in step with the international movement. One would expect our Government to want our TK to be protected internationally, like our IP generally, but we have rather chosen to buck the international trend and to be the only one in the army not marching in step. This will result in our not being eligible to join the treaty when it comes along, thereby passing up the opportunity of meaningful international protection being available for our TK.
The simple fact of the matter is that IP is a highly specialised branch of the law and is dealt with in practice by people who have particular expertise. It is a complex and esoteric subject and not easily understood by people who have not acquired specialist skills, hence the creation of this Chair. With the best will in the world, knowledge of IP is in short supply in the DTI and is virtually non-existent in the Portfolio Committee. In redrafting the original Bill, the Portfolio Committee has utilised the services of Parliamentary draftspersons. With the greatest respect, to expect such persons to take on the task of taking a fundamentally misconceived draft Bill and convert it into a highly specialised piece of legislation dealing with subject matter that IP specialists around the world have struggled to come to terms with, is asking the impossible, and the results show. The Bill in its final form is half-baked, riddled with anomalies and practically unworkable. It is submitted that it is destined to become a dead letter and to produce no good results.
It is trusted that, by disclosing the inner workings of the drafting process of the Bill, we have not revealed secret state information as contemplated in the notorious so-called “Secrecy Bill” and have thus become “whistle blowers” who have transgressed and would be liable to prosecution. But then the Secrecy Bill has not yet passed into law so our right of freedom of expression remains untrammelled for the present. Something that the present Bill has in common with the Secrecy Bill is that the Government has also shown a determination to forge ahead with it come what may, riding roughshod over all opposition. And, despite concerted protest, at this stage in the proceedings it has shown indecent haste to complete the legislative process. Perhaps this is the new tradition in passing legislation!
Who Needs Assistance?
Numerous IP experts, including the President of the South African Institute of Intellectual Property Law (the professional body that represents the specialist IP attorneys), on behalf of its members, and this Chair, have offered their expertise and assistance, free of charge, to the Government to assist with the drafting of a suitable workable Bill. Unfortunately, these offers have been spurned, either by not taking them up or, where an audience has been granted, by ignoring any advice given.
It is true that the DTI and the Portfolio Committee have sought counsel from certain individual purported experts but, judging by the results, either the views of these individuals have also been ignored or misunderstood or bad advice, out of the mainstream, has been given.
The DTI and the Portfolio Committee have by and large shrugged off all critical comment directed at the Bill. Anyone criticising it has been labelled as someone who is against protecting TK and is thus bordering on being unpatriotic. The DTI and the Portfolio Committee have been unable or unwilling to distinguish between opposition to the principle of protecting TK (of which there has been virtually none) and opposition to the present Bill as an appropriate vehicle to provide such protection (in respect of which there has been a clamour from all sides). This has probably been a factor in the disregard of all advice from experts.
So, we now face a Bill that is a blot on the statute book. It is not only unworkable and will not provide any meaningful protection to TK (which is likely to lead to considerable unfulfilled expectations) but it also undermines and does injury to well-established and clear principles of IP law, which will lead to confusion and uncertainty of interpretation in the future, where there has been clarity in the past. Moreover, by not providing automatic protection to works of foreign origin in the case of certain of the manifestations of TK (more especially literary, musical and artistic works that have a traditional character and are to be protected as such), the Bill is in breach of our international treaty obligations through not providing so–called “National Treatment”.
This will bring us into conflict with the World Trade Organization. It is debatable that the Bill is, on this score and on other counts, unconstitutional and it is likely that a constitutional challenge to it awaits.
In broad terms, the Bill purports to create monopolies in the use of traditional works, which by and large in each instance (with certain exceptions) become the property of an “indigenous community”. This term is defined to mean any recognisable community of people that originated, or historically settled, in a geographic area or areas located within South Africa, which group is characterised by social, cultural and economic conditions distinguishing it from other sections of the national community, and which identifies itself, and is recognised by other groups, as a distinct collective. This definition has been paraphrased to make it more intelligible. It is a very broad definition and probably includes the major black tribes (but what about clans within the tribes?), the Indian and Coloured [Wikipedia definition here] communities, Jews and Afrikaners.
These communities’ ownership of their traditional knowledge entitles them to demand royalties for the use of their TK. They can also exercise these rights over the use of works derived from, or containing significant elements of, their TK. The TK over which they have rights of ownership includes works, whether in a tangible or intangible form, in which TK or culture is embodied, passed on from generation to generation. The term of protection for certain of these works is in perpetuity.
Whereas licences for the use of conventional IP works can be obtained informally, licences in respect of TK are subject to stringent conditions and formalities and certain agreements pertaining to such licences are required to be scrutinised and approved by state entities. These conditions and formalities are such that in the modern business world they are likely to stifle or frustrate the economic use of TK.
A database for the recordal of TK, a trust fund for the collection and distribution of royalty revenue, and a council for giving advice regarding TK are provided for. If nothing else, the Bill should satisfy the Governments objective of creating employment. In this regard it might be mentioned that the regulatory impact assessment on the Bill concluded that the whole purport of the Bill is not economically viable and that the costs of operating the system would probably exceed the revenue generated by it. It found that any benefits from the system were outweighed by the substantial costs and other attendant disadvantages attaching to it. As mentioned, this assessment has been disregarded.
The fundamental purpose of IP legislation is to foster and promote creativity and innovation in the form of the making of future works for the ultimate benefit of all. The Bill is not aimed at this objective. Its goal is to look backwards and not forwards and to turn what already exists, and has perhaps existed for past centuries, into moneymaking tools. It does nothing “to promote the progress of science and useful arts” as is required of IP legislation by the American Constitution and is a common-sense principle which should guide our legislature.
It is beyond the scope of this report to go into any detail regarding the nature of the protection purported to be granted to TK, and more importantly, the practical difficulties that will be encountered in attempting to interpret the legislation and to enforce the protection. This presents sufficient subject matter for an entire textbook. It suffices to say that there are going to be monumental problems in establishing the subsistence and ownership of the property and in bringing successful claims before the court enforcing the rights and payment of the envisaged royalties. It is apparent that no one involved in the drafting process of the Bill has ever conducted IP litigation.
Be it as it may, the current situation could lead to substantial employment opportunities and the generation of wealth in the legal profession. However, the crucial question is: where is the money going to come from?
[Editor's Note:] Prof Dean also recently wrote on this subject in the context of the South African conference “Accelerating IP and Innovation”. A link to his blog post is available here.
He is a consultant and former senior partner at Spoor and Fisher, intellectual property attorneys, with specialisation in trademark and copyright law with a special emphasis on litigation and opinion work.. He holds a B.A (Law), LL.B and LL.D from the University of Stellenbosch in, respectively, 1964, 1966 and 1989, and was admitted to practice as an attorney in South Africa in 1974, also admitted as an attorney in Namibia and Botswana.
Dean served on the Government’s Advisory Committee on Intellectual Property Law for 20 years, including as Chairman of the Copyright Sub-Committee. He is a Past President of the South African Institute of Intellectual Property Law. He conceived, and chaired the Drafting Committee of, the Counterfeit Goods Act, and as well conceived and drafted Section 15A of the Merchandise Marks Act (ambush marketing).
He is author of the “Handbook of South African Copyright Law”, and numerous other publications, serving on editorial boards and publishing in a very wide range of intellectual property publications, and is frequent speaker at events.
Dean also holds appointments to the Panel of Adjudicators for South African Domain Name Disputes, WIPO Panel of Arbitrators for Domain Name Disputes, Stellenbosch University Business School Panel of Mediators and IP Panel of Arbitration Federation of South Africa (AFSA).