Guide to the Intellectual Property Laws Amendment Act, 2013 (IPLAA,2013)

What is Indigenous Knowledge?


IK can refer to the knowledge belonging to a specific ethnic group. This is the   knowledge that people in a given community have developed outside the formal educational system over time and continue to develop. It is based on experience, often tested over centuries of use, adapted to local culture and environment, dynamic and changing. Also known as Traditional knowledge it is an important element of the intellectual and cultural heritage of indigenous people. It reflects the social and historical identity and significantly contributes to the future well-being and sustainable development of indigenous people. 


This definition encompasses all forms of knowledge – technologies, know-how skills, practices and beliefs – that enable the community to achieve stable livelihoods in their environment. Examples include indigenous or traditional dances, music, designs, utensils, terms and expressions, food security, human and animal health, education and natural resource management etc. Indigenous knowledge is sometimes called Traditional Knowledge (TK) or Local Knowledge (LK).


Indigenous Knowledge has been discussed globally for at least ten years at the World Intellectual Property Organization (WIPO).Finally, WIPO member states agreed that indigenous knowledge is important and should therefore be valued, recognized and protected. The Act seeks to protect indigenous/traditional communities from exploitation by individuals, corporate and multinationals.


Once recorded or protected through the normal intellectual property registration, IK can be commercialized by communities that owns it. Therefore the Act has brought about the protection of indigenous knowledge through IP.

Intellectual Property

What is Intellectual Property?


Intellectual Property (IP) refers to creations of the mind, being, inventions, literary and artistic works, symbols, names, images, and designs used in commerce.
IP is divided into two categories namely Industrial property and Copyright  


Industrial Property

 

  •  Inventions (patents),
  •  Trade marks,
  • Industrial designs, and
  • Geographic indications of source;


Copyright and related rights include:


Literary and artistic works such as:

  • Novels,
  • Poems and plays,
  • Films,
  • Musical works,
  • Artistic works such as drawings,
  • Paintings,
  • Photographs
  • Sculptures, and
  • Architectural designs.



Rights related to copyright include those of

  • performing artists in their performances,
  • producers of phonograms in their recordings, and
  • those of broadcasters in their radio and television programs.


Industrial Property and Copyright combined form Intellectual Property in South Africa as is the case at the World Intellectual Property Organisation (WIPO).


Benefiting from Indigenous Knowledge works:


Pure indigenous knowledge cannot be commercialised, only derivative works that have Indigenous knowledge can be commercialised on meeting certain conditions/requirements.

What are the conditions/requirements?

 

  • There must be a disclosure of the origin of indigenous genetic/biological resources
  • There must be a disclosure of traditional knowledge
  • There must be a prior informed consent of the indigenous peoples
  • There must be benefit-sharing agreements; and 
  • There must be co-ownership of the patents (where applicable).

What is a derivative work?


Simply put a derivative work is a new, original product that includes aspects of a pre-existing work that might /might not be the subject of Copyright. Also known as a "new version," derivative works can include musical arrangements, cinematography, art reproductions, sound recordings or translations and performances.


The IPLAA, 2013 introduces statutory provisions to establish:

 

  • a National Council in respect of indigenous knowledge
  • a National Database for the recording of indigenous knowledge, and
  • a National Trust and Trust Fund for purposes of indigenous knowledge.


The implementation of the Act:

 

  • Companies and Intellectual Property Commission will implement the Act(CIPC or  Commission).
The National Council in respect of indigenous knowledge

The Act provides that the Minister shall establish a National Council for Indigenous Knowledge (the Council). The Commission shall be responsible for the administration of the Council.


Composition:


Not less than 15 members, appointed by the Minister following a call for nominations.  The Minister shall also designate one of the members of the Council as the Chairperson of the Council.  The Council shall be broadly representative of indigenous communities from different cultures within the Republic, and at all times have as members at least two persons with expertise, knowledge and patronage of;

  • traditional cultures and values of indigenous communities,
  • traditional artistic, literary, musical works and performing arts, and
  • law.

Functions:


The main tasks of the Council are to:

 

  • advise the Minister on matters concerning indigenous cultural expressions and knowledge,
  • advise the registrars of patents, copyright, trade marks, and designs on any matter relating to the registration of indigenous cultural expressions or knowledge (see sections 28M of the Copyright Act, 43J of the Trade Marks Act and 53J of the Designs Act),
  • advise the Minister on matters relating to performances of traditional works (see section 8C of the Performers’ Protection Act),
  • advise on the integrity of a database of intellectual property in relation to indigenous cultural expressions or knowledge,
  • perform other functions as provided in the Patents Act, Trade Marks Act, Designs Act, and Performers’ Act,
  • refer any dispute received for dispute resolution.

The Council may recommend to the Minister appropriate measures to ensure the effective implementation of the Bill.

The National Database for the recording of indigenous works

Section 28C of the Act provides for the establishment of a National Database. For that purpose, indigenous knowledge databases shall be kept at the offices of the registrars of copyright, trade marks and designs, as subsections of existing intellectual property registers.  These databases shall incorporate separate sections for the recording of information on different manifestations of indigenous cultural expressions or knowledge.

Whereas section 28C deals with the “copyright database”, its provisions shall also apply to the “, trade marks and designs databases” with respect to applications for registration in order to commercialise

Aim:  The aim of the National Database is to facilitate access to information regarding Indigenous Intellectual Property.

Purpose of the registration of recordal:

Registration of traditional works shall be for the purposes of recordal of ownership and identification of representation within an indigenous community.  A recordal shall serve as prima facie proof of existence of the manifestation of indigenous cultural expression or knowledge and of the veracity of the information recorded, but shall not give rise to any rights other than expressly provided in the Performers’ Protection Act, Copyright Act, Trade Marks Act or Designs Act.

Format of the databases:

The databases may be kept in an electronic format.

Accessibility of the databases:

The databases shall be accessible to the general public. However Sacred IKS will be kept as such .They shall be open for inspection during office hours, upon payment of a fee (as set out by the Minister of Finance).

Parties who may request a recording:  

Any person who is an author, who is authorized to act on behalf of an author, or who is appointed by the Minister to act on behalf of an indigenous community which is no longer in existence may submit to the Registrar of the relevant database information for a manifestation of indigenous cultural expressions or knowledge to be recorded.  If the applicant is an existing indigenous community, the request for a recording must include a community protocol, which will be kept with the recordal of the indigenous work.

Community protocol:  

A community protocol is a protocol developed by an indigenous community that describes the structure of the indigenous community and its claims to indigenous cultural expressions or knowledge and indigenous terms or expressions or geographical indications, and provides procedures for prospective users of such indigenous cultural expressions or knowledge or indigenous terms or expressions or geographical indications, to seek the community’s prior informed consent, negotiate mutually agreed terms and benefit-sharing agreements.
In the context of the databases, the community protocol shall contain the following information:

  • an identification of the indigenous community and its acknowledged structure,
  • the details of the appointed representative of the indigenous community in whose name the right must be registered,
  • if the representative is a juristic person, details of the registration of that juristic person,
  • the indigenous work that is being recorded and the justification for the indigenous community claiming rights to it,
  • whether such indigenous work is sacred, or should for any other reason, which must be provided, be kept confidential, and
  • a written undertaking by the representative of the community to the effect that he or she will hold the right granted (whether this is a copyright, a trade mark, etc..) on behalf of the indigenous community.  The Council shall assist the indigenous community to ensure that the community protocol corresponds with the structure of the indigenous community.

Confidentiality:

The Commission or CIPC may determine which information recorded in the databases must be treated confidentially.  However, where the community protocol indicates that information is sacred or must be kept in confidence, the Commission must treat that information confidentially.

Request for information or advice:

The registrar or national council may request any relevant person to provide them with information or advice in order to assess a request for recording.

Recordal:  

If the request for recording meets the prescribed requirements for recording, the registrar must accept the request.

Opposition:

Any person may oppose the recording within three months from the date of publication of the request for recording. However, the registrar may, upon application, allow a further period for oppositions.  The notice of opposition shall set out the grounds for opposition.

The registrar then has the option to

  • refuse the recording of the information concerned,
  • record the information, or
  • record the information subject to conditions.

Amendment or removal:
Any of the persons who may request a recording, as well as any party who has an interest in a traditional work may submit to the registrar a request for the amendment or removal of a traditional work, together with the appropriate information:

  • Where the request did not originate from the owner or proprietor of the indigenous cultural expression or knowledge, the registrar shall (i) notify the owner or proprietor of the request, (ii) require a written response from the owner or proprietor within a stipulated timeframe, (iii) upon receipt of the written response, refer the matter for dispute resolution, and (iv) implement the decision of the dispute resolution institution.
  • Where the request originated from the owner or proprietor of the indigenous cultural expression or knowledge, the registrar shall (i) consider the request, (ii) consider any opposition received at the time of the initial recordal.

 

 

 

The National Trust and Trust Fund for indigenous knowledge

In section 28I, the Bill establishes a National Trust for Indigenous Knowledge (National Trust).  The Commission shall be responsible for the administration of the National Trust.

Aim:

The aim of the Trust Fund is to facilitate the commercialization of indigenous knowledge and the application of income generated to the benefit of indigenous communities

Trustees:

The Minister shall appoint no more than five persons as trustees.
Responsibilities of the National Trust:  They include, but are not limited to, the following:

  • the commercialization and exploitation of indigenous cultural expressions or knowledge for the purpose of generating income,
  • facilitating the development of indigenous communities with respect to training on, and awareness of, their intellectual property and associated rights,
  • assisting indigenous communities in the application of the Bill and other legislation dealing with indigenous cultural expressions or knowledge.

The Trust Fund:

The National Trust shall establish a Fund to be known as the National Trust Fund for Indigenous Knowledge (Fund).


The Sub-Funds:  

The Fund may be subdivided into separate sub-funds.

Administration of the Fund and sub-funds:

The trustees shall administer the Fund.  The sub-funds may be administered on behalf of and at the request of the National Trust by the registrars of patents, copyright, trade marks and designs, respectively.

Income:

All income derived by the National Trust from the use of indigenous cultural expressions or knowledge shall be National Trust monies and shall be paid into the respective sub-funds, to be applied for the benefit of indigenous communities.  The Minister may however prescribe fees and modalities.

Alternative dispute resolution (ADR)

Any dispute arising from the application of the Act must be instituted in an institution accredited by the Commission.  For that purpose, the Commission must accredit certain institutions which have the necessary capacity to adjudicate disputes arising from the application of the Bill.
The terms of dispute resolution are the same for all the amended IP laws. See sections 8B of the Performer’s Protection Act, 28K of the Copyright Act, 43I of the Trade Marks Act and 53I of the Designs Act.
Legal representation:  Persons appearing in proceedings before an accredited institution shall not have the right to legal representation unless:

  • the adjudicator and all other parties consent, or

 

  • the adjudicator concludes that it would be unreasonable to expect the party to deal with the adjudication without representation, after considering (i) the nature of the questions of law raised, (ii) the complexity and importance of the dispute, and (iii) the comparative ability of the parties to represent themselves in adjudication.

Customary law:
Any adjudication must take into account existing customary dispute resolution mechanisms.

Enforcement:

The decision of the accredited institution may be served, executed and enforced as if it was an order of the High Court.

Appeals:

Any party may appeal to a court of law against any decision of an accredited institution.  Such appeal will be noted and dealt with in the manner prescribed for appeals against a civil order or decision of a single judge.

Fees, processes and formalities:

They shall be prescribed by the Minister and will be the same as in the current Legislation except where the was no fee prescribed prior this Act coming into force

Examples of Derivative works and original works:

 

fnb.jpg "Soccer City sourced from www.vanitytours.com  11 July 2014"

 

ndebele.jpg "Ndebele Art sourced from nicholasblogspot.com 11 July 2014"

 

rooibos.jpg  Rooibos Plant from renovataiene.com.