1 Intellectual Property Laws Amendment Bill, Redraft 1.3 Presentation to the Task Team on 21 July 2011 Adv Charmaine van der Merwe - Parliamentary Legal

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Intellectual Property Laws Amendment Bill, Redraft 1.3

Presentation to the Task Team on 21 July 2011

Adv Charmaine van der Merwe - Parliamentary Legal AdviserAdv Johan Strydom – the dti Legal AdviserAdv Mongameli Kweta – State Law Adviser

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Index1. The inputs / changes going into draft 1.2.

2. The inputs / changes going into draft 1.3.

3. Format of each set of amendments4. Minor issues – Resolved (4 slides)5. Minor issues – Still unresolved (1 slide)6. Major issues – Resolved (3 slides)7. Major issues – Still unresolved (4 slides)

The inputs / changes going into draft 1.2. (as handed out on 29 June 2011)

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The IP Laws amendment Bill

B8-2010 as introduced by dti

Proposed amendments

presented by dti 8 June 2011

dti amendments based on the dti

response document of 8 June 2011

Parliamentary Legal Adviser’s

presentation of 31 May 2011

Added headings to demarcate

each principal act

Grouped amendments to each principal act

under 1 set of sections or under 1 Chapter

Consequential amendments

The inputs / changes going into draft 1.3. (as emailed to Task Team members on 15 July

2011)

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Draft 1.2

Submissions received

•Academic and Non-fiction Authors’ Association of SA (ANFASA) •African Centre for Biosafety – representing the Masakhane Community•Dramatic, Artistic and Literary Rights Organisation (DALRO)•Free Market Foundation of Southern Africa (FMF)•Inhlangano Yababhali Usiba Writers’ Guild•Law Society of South Africa (LSSA)•Legal Resources Centre (LRC)•Licensing Executive Society of SA (LESSA)•MNET•National House of Traditional Leaders•National Economic Development and Labour Council (NEDLAC)•Publishers Association of SA (PASA)•Sesotho Writers Association in SA (MoabaSesotho)•SA Federation Against Copyright Theft (SAFACT)•SA Institute for Intellectual Property Law (SAIIPL)•SA Music Performance Rights Association (SAMPRA) •SA Screen Federation (SASFED)•Standing Advisory Committee on Intellectual Property (SACIP)•Southern African Music Rights Organisation (SAMRO)•Xitsonga Writers Association (XWA)

Individuals•Dr O. Dean (Spoor and Fisher)•Mr. G. Gilfillan•Prof J. Kirsten, (UP)•Dr D .Trotskie

Format of each set of amendments

Section Performance Protection

Copyright Trade marks

Designs

Definitions 1 1 2 1Application of the Act 8A 28A 43A 53AWhat is eligible 8B 28B 43B+C 53BNational Database 8C 28C 43D 53CObjection process i.r.o. database 8C(1) 28C(7) 43D(1) 53C(1)Ownership 8D 28D 43E Def + 53DObjection process i.r.o. register N/A N/A 43E(3) 53D(3)Nature of protection 8E 28E NONE 53EProtection term 8F 28F 43F 53FExceptions 8G 28G 43G 53GRoyalties 8G 28H 43G 53GNational Trust and Fund 8H 28I 43H 53HLicenses & Transfer of rights 8I 28J 43I 53IDisputes 8J 28K 43J 53JNational Council 8K 28L+M 43K 53KInternational agreements 8L 28N 43L 53LRegulations 8M 39 69 54

5Sections 1-2 Sections 3-5 Sections 6-9 Sections 10-12Sections in the Amendment Bill:

Minor issues - Resolved

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Issue Comment Sections in the Acts

Preamble - Nedlac requested a preamble. An amendment bill in practice does not have a preamble.

Used a preamble proposed in one of the submissions: Could not include it in the long title. Agreed to make an exception due to the unusual type of amendment bill we are dealing with

Preamble

Derivative / Original TIP

The “traditional” nature of TIP sometimes requires different treatment

Created “hereditary” and “derivative” TIP and distinguished between these

All the principal Acts (See sections below)

Performers Protection

Copyright Trade marks

Designs

Definitions 1 1 1 1

Eligibility 8B(4) 28B 43B(7) 53B(4)

Ownership 8D 28D 43E(1) definitions

Protection term 8F 28F 43F 53F(1)

Royalties 8G(7) 28H(5) 43G(4) 53G(4)

Transfer 8I 28J 43I 53I


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Usage of Indigenous v Traditional

Kept “indigenous” only i.r.o.- indigenous expression of culture or knowledge - indigenous community- indigenous origin

All principal acts

Alternative dispute resolution-The definition refers to a process in the bill. -The definition was not used in the bill

- Provide for regulations to set out the process. -Removed the definition

Performers Protection: 8JCopyright: 28KTrade marks: 43JDesigns: 53J

Communication to the public - Related to TIP not always being written down

Bill provides for “capable of substantiation from the collective memory of the relevant indigenous community”

Copyright: 28B(2)

Nature of copyright & exceptions to be expanded

Included the exact wording proposed in the submissions, as well as the wording in other sections in the Copyright Act that were excluded initially

Copyright: S28E, 28G

Need guidelines Provided for the Minister to issue guidelines on any aspect affected by the amendments

Performers’ Protection: S8MCopyright: S 39ATM: S69(6)Designs: S54A


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Live performances: Each live performance is new and subject to the requirements of registration etc.

Bill provides that a repeat performance is not new, but is protected as if it is the original performance

Performers Protection: 8B(5) & 8C(4)

“cinematograph film”Need to align the terminology of the Performers Protection Act with the Copyright Act:

Included “cinematograph” before all the words “film”

Performers Protection only

Linguistic comment Changed “constitute and function as the (Council /database/fund) of ….” to:“constitute and function in respect of (traditional performances /works/terms/designs) for purposes of this Act”

Performers Protection: S8C(1); 8H(1)Copyright: NoneTM: 43D(1); 43H(1)Designs: 53C(1); 53H(1)

Only recent works to be protected

“Hereditary TIP” now differentiated – work passed down from generations ago also protected

Definitions andPerformers Protection: S8B(4)Copyright: 28BTM: 43B(7)Designs: 53B(4)

Period of protection insufficient for TIP

Created “hereditary” and “derivative” TIP and distinguished between these

Performers Protection: S8FCopyright: 28FTM: 43FDesigns: 53F


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Hybrid TIP not provided for-Sharing ownership-Licensing the work in part

The normal rules for IP will apply as the acts are made applicable to TIP, thus this will not be problematic

Performers Protection: S8ACopyright: 28ATM: 43ADesigns: 53A

Academic etc exclusions not provided for

Included academic exceptions, reviews, legal proceedings etc

Performers Protection: S8G(8)Copyright: 28G(5)TM: 43G(5)Designs: 53G(5)

Business enterprises that communities may set up

The Company’s Act is already a source in this regard. Also provided for regulations and guidelines to be issued in this regard

Performers Protection: S8GMCopyright: 39TM: 69Designs: 54

Council and the Registrar to provide support to indigenous communities

This role has been allocated to the Trust and the Fund, which resorts under the Registrar

Copyright: 28I

What discretion does the Registrar have to question the National Council’s advice?

The registrar has the final say – this was clear in the bill from the start

TM: 43E(4)(c)Designs: 53D(6)

Recourse i.r.o. TIP incorrectly recorded on the database

Made provision for a process to object to a database entry

Performers protection: 8C(5)Copyright: 28C(11) and (12)TM: 43D(6)Designs: 53C(6)


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No provision to object to registration of a mark

Inserted a section which makes the registration process for all TM (including objections) applicable to TIP

TM 43E(3)

Geographical indications (‘GI’)

Provision is only made for the registration of a traditional term

Geographical indications can be registered as collective / certification TM

TM: 43B(4) & (5)

“indigenous terms or expressions” to constitute a certification mark, a collective mark or a GI

Changed “and” to “or” TM: 43B(2)

With GI only the Department of Agriculture is to be informed. Is a GI thus not registered in the register / database?

Included “GI” to be registered. The registrar now accepts all applications, thus GI will be properly registered.

TM 43E(2)

How will anybody know it is a GI and not another certification or a collective mark?

Added a proviso that the registrar must indicate in the register that the mark is a GI

TM 43B(4) & (5)


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Unnecessary repeat of TIP being revoked

Two sections stated the same - removed S53A(3)

S53A & 53F

The requirement that a “traditional design” registration will have to have a “traditional character” introduces a concept of uncertain meaning

Deleted “traditional character” requirement as the definition for “traditional design’” already provides for the requirement of traditional character

S53B(1)

A “traditional design” can not be “traditional” and at the same time “not form part of the state of the art” at the “date of application thereof.”

Hereditary TIP qualifies without having to “not form part of the state of the art”. Derivative TIP will however have to comply with this as any other design.

53B

No order of precedence i.r.o. the alternatives as to how a reasonable royalty “shall” be determined

The order is now set out more clearly with agreement being first and dispute resolution second.

S53G(2)(c)

Minor issues – Still unresolved

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Alternative dispute resolution

ADR to include customary dispute mechanism Performers Protection: 8JCopyright: 28KTrade marks: 43JDesigns: 53J

Add a section on Infringement

- Request to add an offence relating to offering or making copyright work available to members of the public by way of trade, including giving the public distance access.- Cannot add this amendment - In a redraft the committee can not amend any aspects of the principal acts which do not logically relate to the introduced bill. - This section can only be added by dti

Copyright: S27J (not in the bill)

Does the Department of Agriculture have to develop, maintain and manage a separate register?

The Dept of Agriculture must be notified if a GI is registered : dti to confirm

S43E(7)(b)

Major Issues - Resolved


Constitutionality

Expropriating ownership Not if viewed as “present owners are currently infringing unprotected rights”

Long Title and Explanatory memoPerformers Protection: 8GCopyright: 28H & G Trade marks: 43GDesigns: 53b(2)(b)(i) read with 53G

Taking rights away from indigenous communities

Allocation of ownership has been amended

Performers Protection: 8DCopyright: 28DTM: 43EDesigns: Definition of “proprietor”

Money Bill

Does asking royalties amount to a tax / levy / duty or surcharge? - s77 of the Constitution

-Not paid into National Revenue Fund; - - Not imposing = by agreement; - For benefit of specific communities only, not for public benefit

Performers Protection: 8GCopyright: 28H & G Trade marks: 43GDesigns: 53b(2)(b)(i) read with 53G

Breaching International agreements

National Treatment Included a section to deal with this Performers protection act: 8LCopyright: 28NTM: 43LDesigns: 53L

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Traditional IP cannot qualify under the current system

Requirements such as “New”; “Not part of state of the art”

Distinguished between “hereditary” TIP and “derivative TIP: I.r.o hereditary:-Exception made i.r.o. “normal” requirements

Performer’s Protection 8B(4) Copyright 28BTrade Marks 43B(7)Designs 53B(4)

Ownership of TIP and the extent thereof

-Self governance of communities affected by fund being owner-a custodian role for the Trust is more appropriate

-Hereditary TIP owned by the community (per a representative) -Derivative TIP by the author / creator-If author / creator unknown, owned by the Trust

Performers Protection: 8DCopyright: 28DTM: 43EDesigns: Definition of “proprietor”

-State intervention in transactions involving traditional knowledge should be clarified in the Bill

-Only hereditary TIP cannot be transferred-Agreements for Royalties to be registered with the Council, who may require re-negotiation

Performer’s Protection 8I, 8G(6)Copyright 28J, 28H(4)Trade Marks 43I, 43G(3)Designs 53I, 53G(3)

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Challenges to Sector Survival

Collecting Agencies Adverse affect on producers’ business models, if music industry collection model is applied to film and video. - Each act provides for its own collection agencies

Copyright Act only

Definitions

“author” Challenge i.r.o the community owning the TIP – Provided for a representative to own TIP

All principal Acts

“Collecting Society” Inserted a definition and provided for regulations i.r.o each type of TIP

All principal Acts

“Commission” Long reference in each amendment. Defined the term and affected consequential amendments

All principal Acts

“Proprietor” Challenge i.r.o the community owning the TIP – Provided for a representative to own TIP

All principal Acts

“traditional intellectual property”

Ownership conflicts- Resolved ownership conflicts

Copyright only

“Traditional term or expression”

-Proposed definition inserted already by dti-May be deregistered if not used: S43E(8) excludes the application of the relevant section

Trade marks only

Major issues – Still unresolved

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Retrospective Application

-Should not be retrospective -Transitional arrangements-Administrative arrangements to be in place before the Bill is enacted

-No retrospective application

- dti to confirm transitional arrangements & administrative arrangements

No sections affected, or providing for transition

Database, Council & Fund

- Are these cost effective? -Are these necessary at this early stage of TIP protection or can they be combined with current systems until the TIP sector has grown?-What are the roles of the Council, Trust and Database-How will these bodies be funded?-What are the roles of indigenous communities in relation to these bodies?

Changes made to these bodies are discussed in areas where the changes are more applicable.

In general, the structure and role remained unchanged from the introduced bill to draft 1.3. save for:

- In draft 1.3. the Council is more clearly indicated as being a body that regularly meets and not a permanent institution (28L(6))

DatabasePerformer’s Protection 8C Copyright 28CTrade Marks 43DDesigns 53CTrust and FundPerformer’s Protection 8H Copyright 28ITrade Marks 43HDesigns 53HCouncilPerformer’s Protection 8KCopyright 28L + MTrade Marks 43KDesigns 53K


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Royalties

- Who should pay Royalties & to whom?-How, when and to whom will payments be made?- Administrative duties and responsibilities of the fund- Surplus money-Who funds the Fund?- What is the role of the Indigenous Community?

-“Traditional” use by the indigenous community and normal bona fide use by a third party who has done so before this amendment allowed;-If commercial benefit is derived from the above activities, a royalty must be paid to the owner of the TIP-Royalty to be determined by agreement or dispute resolution process-All agreements for use of TIP to be submitted to the Council who may require renegotiation of any term not to the benefit of the relevant indigenous community-Owner of derivative TIP to pay a royalty to the owner of hereditary TIP-No royalties on normal exceptions e.g. academic use, review, legal proceedings etc-Regulations to be issues on management of the fund must include administrative and other fees, manner and regularity of distributions to communities, general administration of the fund

Performer’s Protection 8G Copyright 28HTrade Marks 43GDesigns 53G


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Challenges to Sector Survival

Geographical indications

Need a system to protect Karoo Lamb, Wine Industries and Rooibos amongst others

Trade Marks Only

Royalties Broadcasters and any user of performances : the potential liability for royalties is limitless and presents a significant financial exposure

Performers Protection / Copyright

Enforcement

Performances - A traditional performance can only be recognised after a performance making enforcement difficult. - What about performances not seen /heard of by the community (live performances not recorded)?

Performers Protection / Copyright


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Issue Comment Acts

Definitions

“Communicate” / “first communicated”

The definition of “communicate” is very broad and includes “convey in a non-verbal way”

Copyright only

“Expressions of culture or knowledge”

“Challenges” (no specifics) All principal acts

“Geographical Indication” -Not linked to Liquor Products Act definitionThere is no definition. S13A speaks about GI

Trade Marks only

“Indigenous community” A number of comments have been made on this definition. From the comments, all proposals have been joined in a document with proposed alternative wording that the committee can consider

All principal acts

“Indigenous expressions of culture or knowledge”


“Indigenous or traditional work”


“traditional design” - “recognised” introduces uncertainty- Straddles aesthetic and functional designs: broader than the protection currently granted to non-indigenous communities.

Designs only

“traditional performance” -“indigenous origin” / “traditional character” are vague terms-Subjective determination of what is a traditional performance creates uncertainty-“There is no such thing as a traditional performance”

Performers Protection & Copyright

Traditional work -Vague terminology (indigenous origin” / “traditional character”)with a subjective test-Could lead to disputes

Copyright only

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Thank you

Documents

1 Intellectual Property Laws Amendment Bill, Redraft 1.3 Presentation to the Task Team on 21 July 2011 Adv Charmaine van der Merwe - Parliamentary Legal