Intellectual Property Laws Amendment Bill: Deliberations on Version IP 17, Input by Panel of Experts

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Trade, Industry and Competition

12 September 2011
Chairperson: Ms J Fubbs (ANC)
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Meeting Summary

The drafters briefed the Committee on the latest changes to the draft of the Intellectual Property Laws Amendment Bill (the Bill) as contained in IP17, and explained that the items in red represented matters on which agreement had been reached, whilst those in blue showed matters still to be debated. The drafters explained the amendments relating to the Performers’ Protection Act (PPA). In response to concerns that the content of the performance was not adequately protected, new definitions had been added for "artistic works", "dramatic works", "literary works", "musical works" and "works of joint authorship". However, the drafters had deleted clauses or phrases dealing with matters that were covered already by the Copyright Act. The phrase “traditional performance” was changed to “performance of a traditional work”. Clause 8B was deleted as this was dealt with elsewhere. Clause 8C had been criticised as placing too cumbersome a burden on administration and was deleted. Clause 8D was not relevant in this context, as it dealt with copyright aspects. Clauses 8E, 8F and 8G were covered adequately already in the principal Act. In addition the references to the national Trust were not relevant in this context, because that Trust would receive royalties only when a community was not in existence and the owner of the right could not be ascertained, and this did not relate to performance matters.

Members then discussed the content of the current draft. Members agreed that the amendments had eliminated some redundancies. Members discussed whether clauses on disputes had been retained here, and one of the Team of Experts cautioned that there might be a problem in finding adjudicators whose focus was specific enough to deal with some issues, and thought that the right of appeal needed to be specified. Members would also need to take a decision whether they wished to allow for legal representation at arbitration stage. The Expert asked for further time to consider whether the new definitions were correctly placed and covered all aspects. A DA Member commented that he thought the Committee was moving too quickly through the Bill and that although issues may have been discussed, it should not be assumed that finality was reached on them.

Members discussed the reasons for the Community Protocol, and one of the Experts suggested that it might be useful to refer to this even in those cases where a registered user wished to communicate with a community who had not recorded or registered a right. It was suggested that perhaps reference to the Community Protocol be included in the definition of “indigenous community”, but the drafters felt that no requirements should be imposed before official recognition of a community as “an indigenous community”, and said that deeming provisions could contradict the Berne Convention. An expert said that recognition of a community was subjective, whilst another expert pointed out that there should be self-determination. Members then discussed whether parallel rights of ownership existed. The drafters emphasised that only one copyright existed in the work, but one of the experts said that parallel rights were created. The Chairperson noted that a written answer was still awaited from the World Intellectual Property Organisation on various points.

The definition of “indigenous community” was discussed, and there was a difference of opinion as to whether a community could become extinct, or whether it would merely evolve over time. The Bill provided for the Trust to deal with royalties of extinct or untraceable communities, but one expert suggested that their matters should fall into the public domain. Some Members expressed the view that a historical record would not have to be written, and two experts thought that “cultural” record was a better term. The term “area” was expanded to “area or areas”. One expert suggested that the definition of “folklore” was too restrictive and suggested that it be substituted with “traditional works” and new definitions inserted into the Copyright Act. The drafters were concerned that this departed from internationally-preferred wording.

In the evening session, the Team of Experts responded to questions that the Committee posed on various aspects of the Intellectual Property Laws Amendment Bill (the Bill). In relation to royalties, two of the experts suggested that “benefits” was a preferable term to “royalties” as it could also include non-financial benefit, whereas the other said this would be unusual. In relation to the question of whether this Bill might breach international agreements, the South African Institute of Intellectual Property Law (SAIIPL) had expressed some concern in relation to offering protection to “a community historically located within the borders of the Republic”, pointing out that TRIPPS required signatory states to give the same protection to foreigners as to own nationals. It was suggested that section 37(3) of the Copyright Act could be inserted here. The State Law Advisors cautioned that there should not be an attempt to legislate extra-territorially and noted that the Minister could deem a community as an indigenous community. A DA member thought that the deeming provision did not cure the potential conflict with TRIPPS.

Members discussed, at some length, the question of juristic persons, and whether clause 28D, extending authorship beyond a natural person, might not be in conflict with the Berne Convention. One of the experts noted that section 37 of the Copyright Act allowed the Minister to extend the provisions of that Act, that this section had not been challenged, and this clause in the Bill was seeking to achieve something similar. The Parliamentary Law Advisors thought that protection for juristic persons would not be contradictory. One of the experts said that a community could not properly be described as a “juristic person” because someone would have to institute a court action on its behalf, and suggested that it may be preferable for communities to establish a trust or similar entity. The Committee noted that the World Intellectual Property Organisation (WIPO) itself grappled with this concept and had not reached finality. Members cautioned that it would be necessary to achieve proper protection for communities, and noted that the three options were to establish a trust, to require a Community Protocol, or to use a juristic person provision. Members noted that juristic structures might only assist with trademarks or designs but there could still be problems around copyright.

Queries were raised around the definition of “indigenous cultural expression or knowledge”, and Members noted that knowledge could be broader than cultural expression. Proposals were made to amend subparagraphs (c) and (d), whilst (b) would not apply to trademarks. One of the experts explained that the items described could be regarded as a “pot” and would not necessarily apply to all of copyright, trademarks and designs, but that this would determine how anyone wanting to use those designs must source them. Members then discussed the differences in “aesthetic” and “functional” designs, and asked why the term “functional and/or aesthetic” should not be used. In answer to the dti’s assertion that different criteria and time periods applied to the Registers, Members asked why, in principle, a third category could not be created, applying the higher criteria. The issue would be flagged for further discussion.

Clause 28E was raised but it was explained that the Department had not had a mandate to deal with these issues at the National Economic Development and Labour Council. In regard to the suggestion that a specific clause was required to create moral rights, the experts agreed that this was desirable but the drafters pointed out that this was already included because the provisions of the Copyright Act, in which these rights were set out, was made applicable to traditional works. The question of parallel rights was also discussed, and the drafters explained how something could be registered as an existing design, yet the indigenous community would also now be able to claim protection. The experts noted that sufficient time would have to be provided, in the transitional provisions, to allow both registered design holders and indigenous communities to settle their respective positions. The obligation to negotiate with a community would fall on the users of the design. Members also discussed the requirement in the Copyright Act that something be reduced to tangible form, and noted the concern of the experts that extending copyright to something not tangible would extend the ambit of copyright protection. Members also discussed briefly whether communities should have to prove that they had used the work continuously, were generally agreed that there might be sufficient reason why they had not, and noted that a response from WIPO on this point was still awaited.

One of the experts suggested that clause 28D should be re-titled as “Ownership of an indigenous knowledge right” and other references to “copyright” should perhaps be similarly replaced with “indigenous knowledge right”. The DA noted its request that a ceiling for regulation should perhaps be introduced into clause 28G, so that not every performance would necessarily involve the payment of a royalty. One expert suggested that it might be useful to consider the nature of the activity, rather than the numbers.

Meeting report

Intellectual Property Laws Amendment Bill: Version IP 17 deliberations
The Chairperson thanked Mr N Gcwabaza for acting as Chairperson during her absence, and also expressed her thanks to Ms S van der Merwe for leading the Intellectual Property Task Team, as well as to all Members for their dedication to their work.

Ms S van der Merwe (ANC) said that considerable progress had been made in the last meeting. She gave a brief explanation of the colours used to highlight text in the new version, numbered as IP17, of the Intellectual Property Laws Amendment Bill (the Bill).

The Chairperson asked whether the Committee had dealt with the whole document.

Mr N Gcwabaza (ANC) responded that the Committee had reviewed the whole document. All the items now marked in red had been agreed upon, while the text in blue represented new additions.

The Chairperson said that she had studied the inputs that had been submitted by Mr Harris, Mr Albert and Mr Oriani-Ambrosini. She asked Members had to raise their issues as the Committee went through the Bill.

Advocate Charmaine van der Merwe, Parliamentary Legal Advisor, noted that additions had been made that related to the Performers” Protection Act (PPA), in answer to concerns that the content of the performance was not adequately protected. New definitions were now included for “artistic works", "dramatic works", "literary works", "musical works" and "works of joint authorship". She highlighted the need to align the content of the performance with the Copyright Act, but there was no need to burden the PPA with matters already dealt with in the Copyright Act.

The drafters had also changed the wording in every clause that dealt with traditional performance, to specify “performance of a traditional work”. The whole of Clause 8B, dealing with protection of performers” rights in respect of performances in the Republic, had been deleted, because the PPA already dealt with this issue.

Clause 8C had been criticised because the wording noted that every performance created a right. This would, however, mean that if a performer gave 12 performances per day, each lasting only 10 seconds, every one of those individual performances would need to be registered on the database, and this was too cumbersome. It had now been amended.

Clause 8D, relating to the “Ownership of copyright in traditional performances" was not relevant, and had been deleted. Clauses 8E, 8F and 8G were already covered in the principal Act and were therefore deleted. In addition, the clause relating to the “National Trust” had been deleted. This Trust would only receive royalties when the owner of the right could not be ascertained, or if the community was no longer in existence. Clause 8I, relating to assignment and licences, was also deleted. The Clause headed "Compliance with international agreements" was also deleted, because the Bill provided elsewhere for reciprocity. However, the clauses dealing with disputes and the National Council had been retained. The definition of “folklore” had not been changed.

Adv A Alberts (FF+) agreed with the amendments, which had eliminated some redundancies. He highlighted that an important definition of “performance” had been inserted in the Bill, and because this was now much broader, it was more constructive.

Mr T Harris (DA) said that the changes were substantial. However, he cautioned that Members would need to refer back to the Copyright Act and the PPA, and ensure that the new definitions did not affect the rights given to performances previously. He requested an opinion from the experts in relation to the new amendments. He asked why the clause on “Disputes” had been retained. He added that he had a general query around definitions and whether they had not created additional loopholes.

Ms Tshepo Shabangu, Attorney, Member of South African Institute of Intellectual Property Law, and member of Team of Experts, responded that if there was a dispute between a performer and the owner of a copyright, the Copyright Act should provide a mechanism for resolving the dispute. She would not have any problem with including a mechanism in relation to a dispute arising out of the performance by a performer. However, she was not satisfied that the adjudicators who dealt with disputes would necessarily have the competence to deal with very specialised cases. She was also worried that there was no right of appeal, saying that this could create a Constitutional issue.

Advocate Mongameli Kweta, State Law Advisor, Office of the Chief State Law Advisor, responded that the appeal issue would be addressed by the Promotion of Administrative Justice Act (PAJA), which provided that any decision that was made by an administrative institution was subject to review by a court of law. He said that sub-clause (5) empowered the Minister to issue regulations that related to the institution and the adjudication of disputes, but he was not sure whether this would be sufficient enough to cover concerns about the expertise of adjudicators. Legal representation was allowed, but it was limited. The adjudicator had to make a decision based on the complexities of the matter, questions of law, and whether the parties should be allowed to have legal representation. One of the parties might not have financial resources to engage legal representation in practice.

Ms Shabangu said that in instances where parties did not have legal representation, there were many avenues that they could explore, such as pro bono advice. However, she did see a problem in making the right to legal representation subject to a decision by an adjudicator. The right to legal representation should not be curtailed. She added that in some instances, the contracts of the performers set out how disputes should be handled.

Adv Alberts said that adequate space for an appeal procedure was not created. The appeal procedure provided by PAJA related only to procedures, and not to substantive issues. He added that even procedures before the Commission for Conciliation, Mediation and Arbitration (CCMA) would allow for an appeal.

Adv van der Merwe responded that Clause 8B(6) provided that the Minister should prescribe “the fees, processes and formalities relating to the institution and adjudication of dispute resolution problems”. There was no problem in including wording also that related to an appeal. She stressed that the clause did not, in its present form, preclude appeal. In regard to the legal representation, the Committee would need to decide whether there should be legal representation permitted, from the start of the proceedings. She said that curtailing the use of legal advisers was not unheard of in South African law, and that they were not allowed, for instance, in proceedings before the Small Claims Court. She reiterated a statement at the Intellectual Property Law Conference to the effect that there was far less availability of specialised IP judges. Because of that, there was no need to insert a provision that dealt with the expertise of adjudicators. The question of the expertise of adjudicators was a question that had to be raised from an oversight point of view.

The Chairperson said that the point was clear, and this clause was trying to ensure that many small players did not have to find and pay for legal representation. She agreed that the Committee needed to take a decision on the matter.

Mr J Smalle (DA) asked whether the panel of experts would have a specific tenure, and suggested that a clause should be inserted in the Bill in this regard, rather than this issue being dealt with in the regulations.

Mr Harris asked whether Ms Shabangu agreed with the points raised by Adv van der Merwe. In addition he requested that the experts should look at the definitions.

Advocate Johan Strydom, Legal Advisor, Department of Trade and Industry, outlined the new definitions that had been inserted. He added that if the definitions were read together, it became easier to see why some provisions had been removed in respect of the PPA. The dti conceded that the protection was in face better located and suited to the Copyright Act provisions, rather than those of the PPA.

The Chairperson asked whether Mr Harris was satisfied.

Mr Harris responded that this information was useful. He said that he was still concerned that the existing performance in the PPA was dependent upon the definition of “literary works” and “artistic works”. He asked whether the new definitions applied to the existing provisions.

Ms Shabangu asked for further time to read the new definitions and assess the impact that they had. She said that she was not sure how the Committee would deal with parallel rights of derivative and indigenous works.

Mr Harris asked whether Ms Shabangu was satisfied by the answer that had been given by Adv van der Merwe in relation to legal representation.

Mr MacDonald Netshitenzhe, Chief Director: Policy and Legislation, Department of Trade and Industry, said that when the dti had brought the Bill to Parliament the Department had already done extensive research. On many of the issues, it was up to the Committee to make a final decision, as these essentially related to policy.

Ms Shabangu said that the main issue was whether these provisions were going to help the people.

Professor Pitika Ntuli, Tshwane University of Technology, member of Team of Experts, reiterated what Adv van der Merwe had said.

Mr Harris asked if inserting a provision providing explicitly for rights of appeal would address Ms Shabangu’s concerns.

Adv Kweta proposed that it might assist if a new clause was inserted, stating: “Any party to the proceedings before an institution referred to in sub clause (1) may appeal against any decision of such an institution, and the appeal must be noted and handled in the manner prescribed by law for appeals against a civil order or decision of a single judge”.

Mr Harris expressed his concern that the Chairperson was going very quickly through new matters raised, and asked if he had the right to revert on some of these issues.

The Chairperson said that she had understood that the Committee had agreed upon these in the previous meeting.

Ms S van der Merwe said that the Committee had agreed on the content, on a number of issues. However, the Committee had not agreed in relation to the “indigenous community” issue.

Mr Harris said that the Chairperson could not simply assume that the full Committee had agreed on all the issues, as this was not so. For instance, the Committee had not finally agreed on the content of the new amendments.

Mr N Gcwabaza (ANC) said that the Members had agreed that if anything new, that had not previously been discussed, arose, then Members would raise those issues for the Committee’s attention and discussion. However, he noted that in respect of some of the issues, there had been general agreement.

The Chairperson said that she would rely on Mr Gcwabaza’s input, since he had chaired the previous meetings. She asked Members to confine themselves to discussing new issues only, and not to continuously raise matters that had already been debated.

Dr Johanna von Braun, Post doctoral Researcher, UCT, and member of Team of Experts, asked whether there was a retroactive provision for users who were already using indigenous work. If so, she asked what effect would be created by adding provisions that catered for the future.

Adv van der Merwe responded that the provisions dealing with this issue were clauses 28G(2) and (3). The Community Protocol would be relevant in relation to an indigenous community who wanted to record their ownership, and this was set out in clause 28C. The use of the Protocol as proof in the future would be covered under clause 28C(7). The Community Protocol was not for current users, and did not affect them at all.

Dr von Braun asked whether every future use would have to be noted on the database, and asked how this would affect the Protocol.

Adv van der Merwe responded that the Bill did not prescribe that prospective users were supposed to go through the database. The database was set up essentially for the community, should it wish to use this. If an existing user wanted to approach a community that had not registered its ownership, the existing user would be allowed to do so, and in such an instance the Community Protocol would play no role. If a user asked the Registrar for information from the database, the Registrar would be able to refer to the database and the Community Protocol details would then indicate which person in that community should be approached. The provision was not intended to encumber the process, but to assist. There was no exclusion of anything that was not recorded on the database.

Dr von Braun suggested that a Community Protocol should always be a means of communication between the user and the community, even where this did not involve the database.

Mr Harris agreed with what Dr von Braun had said. He suggested that, to solve the problem, the Committee could insert Community Protocol requirements into the definition of “indigenous community”.

Mr Gcwabaza asked what effect this would have, if requirements on a community protocol were to be included in the definition.

Dr von Braun suggested that there should perhaps be a reference to, or use of a Community Protocol in all situations where there might possibly be engagements between registered users and the community.

Adv van der Merwe expressed her concerns about this suggestion. She felt that this would in fact not serve its purpose, and did not agreed that any requirements should be imposed before such time as the community was officially recognised as “an indigenous community”. She cautioned that if any deeming provisions were inserted, then there was a risk of the Bill falling foul of the Berne Convention.

Ms Shabangu said that there was a subjective element rather than an objective element in recognising a community. She asked how derivative works, which were based on traditional works, were going to be dealt with.

Adv van der Merwe responded that current right holders were provided for in Clause 28G. There would be no interference with those already-registered rights. However, there would be a need then to deal with the issues arising from those rights that related to the indigenous community.

Mr Harris said that he would appreciate the input of the experts on this point.

Dr von Braun said that the definition used wording from the World Intellectual Property Organisation (WIPO). The thinking here was based on the discussion about the self determination of indigenous communities. She agreed that for this reason there was a subjective element.

Ms Shabangu said that there was need for a measure of objectivity to deal with competing rights.

Dr von Braun responded that the Bill also provided for a situation where ownership might be claimed by more than one community. She said that this was where the Council would be involved, and that was where the objective element would be added.

Mr Harris was concerned that Clause 28G did not deal with the fact that essentially one work could contain two elements of copyright, and asked where this clause addressed the duality.

The Chairperson said that the issues had been addressed.

Mr Harris said that the Chairperson’s interjection amounted to an attempt to silence him. He had simply asked for an explanation so that he could get closure on the issue.

The Chairperson reiterated that the question had already been addressed.

Mr Harris said that there was a problem of semantics. The experts were not available when the Committee dealt with some of the issues. In addition, the fact that the Committee had “dealt with” some of the issues did not mean that the Committee had agreed upon them. He said that it was important for the experts to give the Committee guidance on this issue.

The Chairperson said that the experts had already done so.

Adv van der Merwe clarified that two sets of copyright were not being created. Any copyright that dealt with indigenous work or derivative indigenous work was separate from the current “conventional” system. There was only one copyright that existed in an indigenous work. No new right was being created.

Ms Shabangu said that she did not understand Adv van der Merwe’s comments that there was one right. She thought that there were in fact parallel rights. The demarcation was not clear. There was still a need for the Committee to look at the issue of parallel rights and to decide how these should be dealt with.

Mr Netshitenzhe responded that the dti had provided a booklet from WIPO, which dealt with the issue of the derivative rights. One the issue of demarcation, he thought that there might be a misperception that the intellectual property was used to “steal” or “poach” rights. He reminded Members that the conventional intellectual property that was registered may have appropriated existing traditional knowledge.

Adv van der Merwe responded by giving an example of a song, saying that there would be no new rights created for the derivative owner.

Mr G Selau (ANC) said that the issue of parallelism could not be avoided. He noted that the effects of the new Bill would not in fact supercede or change what was currently the situation.

The Chairperson thought that there was a need to reflect on the intention of the proposed legislation. It intended to afford some form of protection to indigenous knowledge. Other legislation that would provide improved protection would be drafted in the future. She wanted the voices of every Committee Member to be heard, because each Members was representing his or her own communities, and whatever was finally produced by this Committee must be constitutionally robust. She added that she had consulted with the Chairperson of the Task Team or Working Group on this Bill, so that the Committee received a list of issues that had been raised by some of the Committee Members.

Ms S van der Merwe said that these issues were isolated by various Members as points on which expert opinion was needed. Some of the issues had been addressed, and a written response had been submitted.

She then highlighted that the first issue was that of the Performers’ Protection Act, and that was dealt with. There had been a redraft of the provisions dealing with the PPA, and she thought that significant progress had been made.

The next issue was the definition of “indigenous community”, which had been queried by several Committee Members. One of the questions was whether the Bill intended to protect living communities only or whether it also protected extinct communities. Another was whether there was need for a historical record as proof of existence.

The fourth issue was whether the term “royalties” had to be substituted with the word “benefits”.

The question of international agreements, and whether there was any conflict between this Bill and international treaties or conventions had been dealt with by an opinion being submitted.

A written reply had been submitted by one of the Team of Experts on the definition of “indigenous cultural expressions of knowledge”.

There were concerns about the use of the word “peregrination”.

The Department (dti) had been asked to give an indication of the number of patents registered that related to indigenous knowledge, as also to clarify the funding of the Trust.

There was a need to clarify the question of whether an indigenous design could be regarded as aesthetic or functional.

Ms S van der Merwe then she suggested that the Committee should perhaps deal with these issues in turn, rather than proceeding with a clause-by-clause discussion on the Bill.

Mr Harris agreed with the nine issues outlined. He added that some of the issues that he had raised had not, however, been highlighted in this list.

Dr M Oriani-Ambrosini (IFP) raised concerns that perhaps Dr von Braun had not received the documentation that he had submitted, and suggested that there seemed to be a problem with his documents being forwarded.

Ms S van der Merwe said that she had paraphrased the issues that had been raised by the various Members, rather than indicating each and every issue separately.

The Chairperson noted that some of the issues that had been raised earlier had formed the subject of opinions already given to the Committee.

Ms S van der Merwe agreed with the Chairperson that some of the issues had been addressed already. Where this had happened, these issues were not again forwarded to the experts for comment.

Mr Harris said that he appreciated the effort that had been put by Ms S van der Merwe. However, he still indicated that some of the issues he had raised were not noted here, and that they had not been resolved.

Dr Oriani-Ambrosini stressed that there was no need to rephrase or paraphrase questions that he had raised, because this could result in a slight change in meaning or emphasis.

The Chairperson then suggested that the Committee should proceed to discuss the issues in turn.

Definition of “indigenous community”
The Chairperson said that the first issue was the definition of “indigenous community”, in relation to living and extinct communities, historical record as proof of existence and in relation to the geographical area.

Dr von Braun said that she had not addressed the issue of living and extinct communities in writing. She thought that protection of the knowledge of extinct communities was probably beyond the scope of this Bill, but noted that this would probably be a question that needed to be decided upon by the Committee. She would have thought that this should be something left in the public domain.

Prof Ntuli asked whether there was an example of an extinct community.

Dr Oriani-Ambrosini responded that examples might be unknown communities who had left bushman kloof drawings. Another might be the Basta communities that moved to Namibia.

Prof Ntuli disagreed with Mr Oriani-Ambrosini that a community could be described as “extinct” and added that the use of this term to describe the community that moved was very derogatory.

Ms S van der Merwe said that the Committee had discussed to what extent the heritage laws protected extinct communities.

Dr Oriani-Ambrosini said that this Committee, because it was writing a new law, must take a rational approach. He disagreed with Prof Ntuli and reiterated that it was possible for a community to become “extinct” if its heritage could no longer be traced. It was not known which communities had done the kloof paintings, and the artists of these could not be traced. He also said that he was not intending to be derogatory when referring to the community by its generally accepted name.

Mr Gcwabaza asked for clarity on Dr von Braun’s suggested that knowledge could be placed in the public domain.

Dr von Braun responded that if there was a community that had become extinct, then government could take a policy decision that rather than paying over any benefits from use of that knowledge to a specific person, the benefits could be enjoyed by the public at large.

Mr Gcwabaza said that if traditional knowledge were simply considered to be “in the public domain”, this could mean that anyone could use that knowledge, without paying any contribution to the State. He added that some of the examples raised by Mr Oriani-Ambrosini could include communities who had changed their names. However, the mere fact that they may have adopted a different name did not mean that the communities were extinct.

Ms Shabangu said that she had not considered the definition of “indigenous communities”. She said that she was not sure of the rationale behind protecting extinct communities.

Mr Harris said that the section 27(3) of the National Heritage Resources Act provided specific protection to bushman paintings, and this Bill was essentially repeating that type of protection. He thought that the heritage legislation probably provided sufficient protection for extinct communities.

Mr Oriani-Ambrosini suggested that in this case the Committee should insert the word “existing” before the word “communities” or make a specific reference to “extinct communities”. He did not agree with Dr von Braun’s suggestion that traditional knowledge should be left to the public domain.

Ms S van der Merwe said that if proper protection was afforded in other laws, there was no need for the Bill to reiterate this point.

Mr Gcwabaza was not comfortable with Dr Oriani-Ambrosini’s suggestion to include the word “existing” in relation to communities. He thought that no community could be referred to as an extinct community, because communities evolved constantly.

Mr B Radebe (ANC) said that the main aim of the Bill, apart from protection, was to allow for indigenous knowledge to be exploited commercially, but for the royalties then to be paid where appropriate. He asked whether royalties would be generated from the work of extinct communities.

Mr X Mabasa (ANC) emphasised that there was no way in which a community could be an “extinct communities”. He said that it would be better for the Committee to err on the side of caution and include all communities in general, rather than to try to exclude any.

Mr Harris said that proof of a historical record was important, in order to prevent fraud and opportunists.

Prof Ntuli asked in what context the Committee was speaking of a historical record.

Dr Oriani-Ambrosini said that there could be potential conflicts arising from people’s desire to use traditional knowledge for commercial gains. He thought that a historical record was something that was not necessarily in writing.

Ms Shabangu said that she supported the previous draft, which had indicated that a community should have some historical records that proved its existence.

Prof Ntuli said that he would prefer that the word “cultural” be used, as this embodied a historical element.

Dr von Braun agreed with Prof Ntuli on this point.

Dr von Braun then clarified that she had not intended to suggest that anything should go into the public domain. In addition, she would not presume to voice an opinion on whether there could be an extinct community in South Africa.

Mr Smalle noted that the word “area” could be read as both plural and singular. This might be less confusing if the Committee changed this to “area or areas”.

Adv van der Merwe responded to the points about the heritage legislation, noting that the National Heritage Act did not provide for royalties for a replication that had been sold. She highlighted that it was not the artefact, but the concept, that would be registered.

Adv van der Merwe then clarified the thinking in relation to historical records, saying that a community should be able to produce something that distinguished it from other communities, and that showed recognition as a community by other people.

Adv van der Merwe agreed with Mr Smalle’s proposal on “area or areas” and said that this suggestion had been put forward by the drafters some time ago.

The Chairperson added that on these points, she had written to WIPO, as requested, but had received only a telephonic report that seemed to indicate some reluctance on the part of WIPO in putting anything in writing. WIPO was in fact awaiting this Committee’s decision on issues. She had urged that WIPO should provide something in writing for consideration by this Committee.

Mr Harris said that he would await a written report from WIPO. He questioned why there seemed to be reluctance, pointing out that WIPO had produced comment in 2009.

The Chairperson reiterated that on this occasion, WIPO was reluctant to put anything in writing.

Definition of “folklore”
Ms Shabangu commented on the definition of “folklore”. Some of her colleagues had expressed the view that traditional work was much broader than folklore. She had initially been of the view that the PPA should not be amended, because it protected performers, whilst other works were protected in terms of the Copyright Act. However, if “folklore” were to be substituted by a reference to “traditional works”, then this would incorporate the definition of performers. She also recommended that the definitions of  “dramatic works” and “musical works” be assigned to the Copyright Act, so that there would be uniformity.

Adv van der Merwe said that the reason why the drafters had added a definition of “folklore” was that it was not included in the Copyright Act. If, as suggested by Ms Shabangu, the term “folklore” was to be discarded, it meant that effectively South Africa would distance itself from the internationally-preferred terminology. There were also implications if South Africa was to ratify the WIPO Performances and Phonograms Treaty.

Ms Shabangu reiterated the view that traditional work went broader than folklore. In addition, she said that the Copyright Act protected works that were original. Folklore did not comply with this definition.

Mr Harris said that he still did not think that the Committee had resolved the definition of “indigenous community”. He had a problem with what Adv van der Merwe suggested. He thought that vesting ownership of the intellectual property of extinct communities in the State was going too far.

Adv Alberts said that there were other practical aspects that needed to be considered if the government was going to receive revenues from extinct communities. This might include how the money was going to be managed and spent.

Dr von Braun responded that there were limitations on how far intellectual property laws could protect traditional knowledge.

The first session was adjourned.

The Committee met with the Minister of Trade and Industry and the Companies and Intellectual Property Commission (CIPC) about the progress of the CIPC since July 2011. (See website for separate report on this). Thereafter, the Committee continues with its deliberations on the Bill.

Intellectual Property Laws Amendment Bill: Version IP17: comments from experts
The Chairperson tabled a list of questions, on which the Committee wished to hear the opinion of the experts. She noted that the Committee was dealing with Draft IP17 of the Intellectual Property Laws Amendment Bill (the Bill).

Royalties / Benefits
Dr Johanna von Braun, Researcher, Natural Justice and member of Team of Experts, said that she had already stated her opinion in relation to whether “royalties” or “benefits” should be used. She preferred the use of the term “benefits” as it was likely to create less conflict in communities. The term “royalties” carried the implications of substantial and continuing monetary payments, and in the case of the Hoodia use, many promises had been made about future monetary benefits, that had created a problem. In order to include the sharing of “non-monetary benefits” she felt that the term “benefits” was more appropriate.

Prof Pitika Ntuli, Professor, Tshwane University of Technology, and member of the Team of Experts, agreed, saying that “benefits” could include provision of schools, bridges, clinics and other structure for communities. There should not be any limitation to financial payments by way of royalties.

The Chairperson asked whether the experts believed that the compensation should go wider.

Dr von Braun said that she believed that the compensation should be wider than merely monetary payments, so would prefer to use “benefits” instead of “royalties”.

Ms Tshepo Shabangu, South African Institute of Intellectual Property Law (SAIIPL) and member of the Team of Experts, held a contrary view. In cases of this nature it was unusual to have a “benefit” that was not a royalty, although she conceded that a contractual arrangement could be entered into, for instance arranging how the royalties would be calculated, but noted that it was most unusual to legislate for this.

Prof Ntuli said that the word “benefit” was broad enough to cover everything. A royalty could be one of the benefits, but he agreed with Dr von Braun that it should not be limited to a royalty only.

Dr von Braun said to Ms Shabangu that she did not think that this would be a particularly unusual way of dealing with matters, because all of the precedents from traditional knowledge protection had related to protection. Benefit-sharing could include royalties and a range of other options.

Mr B Radebe (ANC) noted that when the Bill was first brought to Parliament there was an attempt to “mainstream” traditional knowledge. The term “royalty” was generally used in relation to musicians or artists, and some of the indigenous work could be music. He suggested that the term “benefits and royalties” could be used, to make it clear that both could be covered.

The Committee agreed that this would make sense.

International agreements
The Chairperson asked the experts to comment on whether the Bill might be breaching international agreements.

Ms Shabangu noted that there had been a response by the Committee of the South African Institute of Intellectual Property Law (SAIIPL). The current international laws applicable would be the Berne Convention and TRIPPS. She had some concerns over the possible conflict between these and what was currently in the Bill. The definition of “indigenous community” covered a community historically “located within the borders of the Republic”. Article 3.1 of TRIPPS obliged South Africa, as a signatory, to give the same protection to foreigners as it gave to its own nationals. This limitation to “within the borders” did not comply with that requirement, and she pointed out that, for example, an Australian Aboriginal might want protection for rock paintings as was accorded to a San Bushman doing similar artistic work.

She added that there were no requirements for signature of any bilateral agreements, but noted that Section 37 of the Copyright Act granted the Minister the power to extend the operation of that Act.

Dr von Braun said that she had previously raised a concern on the Ministerial aspects, but understood that this was resolved.

Adv Charmaine van der Merwe, Parliamentary Legal Advisor, referred the Committee to clause 28N, appearing on page 53 of the Bill. This, excluding the portions now highlighted, was inserted following the suggestion of the SAIIPL. If there was a different proposal that might resolve the concerns, then she would see no problem in repeating section 37(3) of the Copyright Act, which listed the more traditional works.

Ms Shabangu suggested that “indigenous community” should include everyone who would be entitled to get protection for their works in South Africa, including protection under the international law.

Adv Mongameli Kweta, State Law Advisor, Office of the Chief State Law Advisor, said he would be reluctant to interfere with the current definition in the Bill, as the suggested alteration might amount to legislating extra-territorially. The position was already catered for by way of the provision allowing the Minister to deem a community as an indigenous community, for the purposes of this Bill. He thought that Ms Shabangu’s concern was therefore already covered.

Mr T Harris (DA) queried this, noting that national treatment should be automatically extended to those from other countries. He thought that the very fact that the Minister had to specify communities was breaching that requirement.

Question of “juristic persons”
Mr Harris also wished to raise another point on the Berne Convention. He had understood that in that Convention, an “author” would be a natural person only. Clause 28D extended ownership beyond a natural person. He wondered if this did not pose an additional risk of contradiction with the international legislation.

Dr von Braun responded that she was a little dubious on the question of national treatment. If the Minister still had to enter additional agreements to treat foreigners in the same way as South African nationals, then this was certainly at the least a further administrative hurdle.

Adv van der Merwe stated that the opinion on international agreements received from SAIIPL had noted that there was an exception and that administrative steps could be taken. She agreed that section 37 of the Copyright Act stated that the Minister could, by notice in the Gazette, provide that any provision of the Act should apply to certain works, persons who were citizens, those domiciled in South Africa, bodies incorporated under that law, or broadcasts. That notice may also provide that certain or general provisions should apply. It should not be issued in respect of any country with whom South Africa had not already concluded an agreement, although the Minister may extend it to another country where an agreement had not been concluded although certain criteria had already been met. As far as she was aware, this provision of the Copyright Act had not been challenged. The Bill was essentially trying to create something similar.

Adv van der Merwe thought that there would be no problem with the acknowledgment of protection for juristic persons as well as natural persons. Clause 28D(1) did not contradict that fact that a natural person could be an author. South Africa’s international agreements already provided for the possibility that juristic persons in other countries could be recognised as an author, so this was likely to be a future development in copyright law, although she did not want to go into that in any detail. She added that nothing would prevent a country from legislating for more rights than an international convention allowed. She proposed that the wording of section 37 of the Copyright Act, which had stood the test of time, should be carried across into this Bill.

Dr von Braun said that she would not have an opinion. In national treatment, if there was an exception to provide for administrative actions, then she would think that that was acceptable.

Ms Shabangu said she found the deeming provision problematic. She thought that a community could not be described as a “juristic person”, because a juristic person could incur rights and sue on its own behalf, which an indigenous community could not.

Adv van der Merwe said that the drafters had a problem because copyright vested automatically, and unless, in that case, a community appointed a representative or was deemed to be a juristic person, the Berne Convention would be contravened because the community would not otherwise have an “entityship” acknowledged. This deeming provision was inserted precisely to avoid the removal of rights that would otherwise exist, and to cater for a situation where everyone knew that, for instance, songs or dances from time immemorial belonged to a particular community. She acknowledged that the drafters had grappled with how best to express the concept.

Ms Shabangu reminded the Committee that she had not been present when this was discussed in the previous week. She was still not satisfied that the deeming provision was sufficient. She would prefer a situation where the communities established a juristic entity, such as a trust or company. The community should make its own decision on this.

The Chairperson said that these points had been raised and discussed fully at that meeting.

Adv A Alberts (FF+) reminded the Committee that there were other ways in which other communities would be regarded as juristic persons, and cited the example of a jockey or sports club, which would state, in its constitution, that the club was a juristic person. Nothing more formal than that would seem to be needed, so a community should be able simply to say that it was acting as a juristic person.

Mr Harris clarified that the points were raised at the last meeting, but he did not think that they were finally decided, and the Team of Experts had probably not considered the question before today’s meeting. He agreed that Ms Shabangu had raised a valid question as to whether a juristic person would need to fulfil more requirements and suggested that more time was needed to consider these issues.

The Chairperson said that she herself had not been at that meeting, but she had referred to the notes made. She was certainly not discounting the opinions of the experts, it was discussed and a couple of points were put forward. She herself had not been at the meeting, but she was not ignoring the experts, simply making her point. She had repeatedly said that the Committee was charting fresh territory, and that was the difficulty that the World Intellectual Property Association (WIPO) also faced. The Committee would have to apply its mind to fresh examples. She agreed that a community would not usually have a constitution. The Committee needed to consider what “a community” meant, and some characteristics of a community had been discussed at the meeting earlier that morning. If it was clear that a group of people was a community, its rights should be enhanced and protected. The Committee was cognisant of the fact that this Bill was being written in the context of global legislation and conventions. Exceptions had been effectively addressed under the current Copyright Law.

Dr von Braun noted that the Team of Experts had had a discussion around the complications of imposing a legal structure on a community, and that provision was probably trying to deal with those concerns.

Ms Shabangu said that if the community wanted to enforce its rights, it was necessary to consider in whose name the action would be brought. She did not want to include something that would not be to the benefit of the community.

Prof Ntuli noted that this was the reason for coming up with the suggestion of forming a juristic person, who would be answerable to the community and act on its behalf.

The Chairperson noted that the community would have a right to identify such a person.

Ms S van der Merwe (ANC, Chairperson of Task Team) agreed that the deeming provision had been discussed, as well as the proposal by Adv Alberts. At that time, some other wording had also been included in the draft, which had persuaded the Committee of the necessity for a deeming provision. Those lines, had read: “….or in the case of a tradition having originated in an indigenous community, in a duly appointed representative of the community, or a juristic person created by the indigenous community”. When they were removed, the deeming provision was inserted in their place. This phrase was not marked as a deletion, on page 36 of the document IP17, in clause 28D(2).

Adv van der Merwe noted that the definition of “author” provided for both a natural person and a community. Furthermore, the provisions allowing the community to apply allowed for the application to be done either through a natural or juristic person. She agreed that the four lines deleted had essentially been replaced.

Adv Alberts noted that another point must be made. A partnership was another type of association, and although it was a juristic entity that could sue and be sued in its own name, each individual in that partnership would be responsible for the debts and liabilities of the partnership. This could be very detrimental to a community. A proper juristic person status would confer more protection.

The Chairperson said that this was why the deeming provision became even more important.

Mr Harris provided some context, saying that nobody had suggested that there should not be a formal structure. One option was still to establish a trust. Another option was perhaps to require a Community Protocol before ownership could vest. The Community Protocol structure was quite innovative. The third option was that the community could be called a “juristic person”. Nobody on the Committee had argued for anything less than these options. The problem with the third option was that it might not stand the test of other structures outside of the Bill, because even if the community was deemed a juristic person, some formal structure was still needed to act on behalf of that community. He thought that the Protocol might be required as a precondition.

Mr X Mabaso (ANC) said that the Committee was seeking to ensure a good understanding, simplicity and accessibility. The Committee must not isolate the very community it was attempting to protect. It was necessary to have regard to the fact that no lawyers might be available to assist the community.

Adv van der Merwe responded to Mr Harris’ points. She had heard the concerns about “forcing” communities into a formal structure. Even if this was done, she thought that it would only assist with trademarks, but there would still be a problem around Copyright Act matters until a Community Protocol was formed. It might be necessary to amend the wording to ensure that a community was deemed a juristic person for the purposes of every piece of legislation. She agreed that the deeming provision would only apply in relation to the specific legislation named, so that, for instance, no action could be instituted against a juristic-person community under another Act. That was not something that this Bill must correct, and the question around this would probably fall to be decided upon by another committee dealing with social structures of communities.

Prof Ntuli pointed out that most communities had their own structures, which dealt with collective land rights and a host of other issues.

Definition of “indigenous cultural expression or knowledge
The Chairperson indicated that Dr M Oriani-Ambrosini (IFP) was not present at this meeting, but he had raised questions on the definition of “indigenous cultural expression or knowledge” and had suggested that there should be a new definition. She pointed out that the inputs of the various Members had been circulated.

Dr von Braun said that in respect of (e), where indigenous knowledge was shared between more than one community, there should not be a limitation on sharing of knowledge and cultural expressions. The question of knowledge in the public domain and public availability had been raised under (f), and if this was included, then one community might be able to appropriate knowledge from another.

Mr Harris asked if “knowledge” was actually defined anywhere. This clause still referred to “indigenous cultural expression or knowledge” and this may need to be tightened up.

Ms S van der Merwe noted that on the previous Friday Members had noticed that the expression “or knowledge” had been added to “cultural expression”, but this did not answer Mr Harris’ question.

Adv van der Merwe said that if the Team of Experts thought it was not necessary to use “cultural expression or knowledge” then this could be deleted wherever it appeared in the Bill.

The Chairperson thought that there had been an agreement to keep this phrase in the Bill.

Mr McDonald Netshitenzhe, Chief Director, Department of Trade and Industry, noted that knowledge could be broader than cultural expression. Education and learning materials were a component of knowledge, and he saw no reason why a phrase wider than “cultural expression” should not be included.

Adv van der Merwe said Ms Shabangu had made another point that what was set out in subparagraphs (a) to (d) might not apply in all instances, and some wording may not be applicable in the context of different Acts.

Ms Shabangu noted that subparagraph (c) referred to “expressions by action, such as dances, plays ceremonies, rituals, and rituals in sacred places”. She did not understand why both rituals, and rituals in sacred places, were stated separately as she had thought that “rituals” could cover both. Sports were also included. She questioned if, for instance, the fact that Afrikaaners concentrated on playing rugby meant that it would be said to apply to the Afrikaans community. She felt that rights could apply only to literary and artistic works and protection could not be given to traditional knowledge about sacred places.

Prof Ntuli made the point that there were various “traditional” indigenous sports, and there was no attempt to confine a particular sport to a particular community. He thought that “rituals” in the broad sense could be separated from rituals held in a certain set and sacred place, and the “space of the sacredness” that the community held in value must be noted.

Dr von Braun noted that there was a reason why sacred rituals were included and it did not refer merely to a geographical location. This definition comprised matters discussed at length, and was not an arbitrary list.

Ms Shabangu still thought that her comment, and that of Ms du Plessis of SAIIPL stood. Copyright could not cover everything on this list, as it related to literary and musical works.

Adv van der Merwe noted that this definition had drawn on WIPO experience and on-the-ground usage. It may need to be fine-tuned to specific things that were to be protected. Originally the phrase had been included under “performance protection”.

After a short break, Adv van der Merwe noted that the matter had been further discussed with the Team of Experts. She referred the Committee to pages 27 and 28 and proposed some changes. It was now proposed that subparagraphs (b) and (c) be deleted, in relation to the Trademarks Act, because they could not apply to trademarks. Under (a) the words “phonetic or verbal” would be deleted, so that the phrase now read: ““expressions such as word signs names and symbols”. In subclause (d), the words “handicrafts and architecture” were to be deleted, as well as references to music or sound or expression by action, which could not fall within a trademark.

Therefore she summarised that (c) would read: “expression by action, such as dances, plays, ceremonies, rituals, expressions of spirituality or religion, sports and traditional games, public performance and other performances, whether fixed or unfixed”. In subparagraph (d) the phrase “ “tangible expressions such as material expression of arts, tangible spiritual forms and  tangible spiritual forms, or expressions of sacred places” would be used.

Then Dr von Braun said she had proposed that this be inserted in relation to each Act, for the sake of consistency, but would not have any objection to this being done in another way.

Ms Shabangu said that she did not understand how an “expression of sacred places” would apply in practice. It could be a picture or trademark. She would look at the point on designs.

The Chairperson noted that the word “peregrinations”, of which she was particularly fond, need not be dealt with again, as the Committee had opted for “not in a fixed place” for the sake of simplicity.

Mr Netshitenzhe said that the dti had some problems with these proposed definitions. Some cultural devices could be registered as trademarks, but certain symbols that were cultural in nature could not be either copyrighted or trademarked. He noted that a smell could be registered. He would prefer that nothing be taken away. Something like a Maori mark was a portrayal of the people, and it was necessary to think again about what could be registered as a trademark. He agreed with a point made earlier by Ms Shabangu that a jingle could also be registered as a trademark.

Ms Shabangu said that something, in order to be registered, had to pass the test that it was distinctive. There should not be different dispensations or treatment, and that had been part of the problem with the representations. She reiterated that if a logo were to be registered, then there should be no compromise to the set principle that it must be distinctive.

Dr von Braun said that perhaps she did not understand Ms Shabangu’s concern. This definition tried to define “the big pot of knowledge”, which would then also determine how a person could source something. Not everything would be protected per se, but the way in which it was used would be controlled. Not everything in that “pot” would necessarily fall within trademark protection, but this should control its ultimate use.

Ms Shabangu said that the application of trademark principles could be problematic. A story could not be the subject of a trademark, although the name of a book could, if it was distinctive enough. A legend could be copyrighted, if original. She questioned how something like a dance could be protected, and concluded that perhaps only the name of the dance, but not the steps themselves, could be protected under the Copyright Act.

Dr von Braun cited the example of the fable of the Musicians of Bremen, saying that if an artist were to draw a picture of the story, it could be used as a trademark, and this was how something “in the pot” could be turned into a trademark by another person.

Mr Netshitenzhe agreed, saying that both a logo and a design could get trademark protection, or design protection. He thought that if these matters were included, it was possible for trademark, design or copyright protection.

Adv van der Merwe said that she would not have a problem in leaving the definition as it had been before, and not making the deletions proposed earlier, if Members preferred to have a “big pot” as referred to by Dr von Braun.

Outstanding query to be responded to by dti: Number of patents registered
Ms S van der Merwe noted that the dti had been asked to report back to the Committee on the number of patents registered. Although this was not one of the questions on which the Team of Experts was asked to give an opinion, this remained in the document as a reminder of the point outstanding.

”Functional” or “aesthetic” indigenous designs
The Chairperson asked the Committee to move to page 82 of the Bill, where a new definition of “derivative indigenous design” was noted.

Prof Ntuli questioned why reference could not simply be made to “aesthetic and/or functional”.

Ms van der Merwe noted that the Committee Members, at the meeting on the previous Friday, had noted a number of problems with the definition, resulting from the “cut and paste” attempts. The Committee needed to deal with what were derivative designs, or traditional designs. That had raised the question of the registers. One register related to functional matters and one to aesthetic matters, and this was why the new insertions had been made, to try to distinguish between them.

Mr Harris noted that he had raised a question whether a category was not needed for something that was both functional and aesthetic. The threshold of “creativity” was lacking under the original definition of an “indigenous design”. He confessed, however, that he had not quite followed the intricacies of the arguments on the various levels.

The Chairperson questioned why there was a problem.

Adv van der Merwe explained that something could be registered as aesthetic (A), functional (F) or Traditional Aesthetic (TA) or Traditional Functional (TF). She suggested that a definition could be used, reading along the lines of: “Derivative indigenous design means any anaesthetic or functional, or both aesthetic and functional design meeting the subject of this Act”. The same could be done for the definition of “indigenous design”.

Mr Netshitenzhe said that five criteria must be met for registration as “aesthetic”, but only three must be met for registration as “functional” and the time durations also differed.

Ms van der Merwe asked if one design could be registered twice, under both categories.

Mr Netshitenzhe said it could not, because the criteria were not the same.

Ms van der Merwe cited an example of a bowl, which might be aesthetically beautiful but was also functional.

Prof Ntuli agreed, noting that everything connected with serving and preparation of food would have an aesthetic content, and “high” and “low” art could be collapsed.

The Chairperson agreed that there was a point to be made here.

Dr von Braun said if the aesthetic protection was higher than the functional protection, then it would seem to make sense to simply apply the higher level of protection to an item that was both functional and aesthetic, whilst the lower level could apply to something that was merely functional.

Ms Shabangu noted that SAIIPL had already made comment on this, although the Institute had not seen the latest draft of the Bill. This was a highly technical area of law. Although she was not a patent attorney, she wondered if “traditional design” would meet the requirements of novelty.

The Chairperson agreed that this was an important point.

Mr Netshitenzhe said that the WIPO had put out a booklet describing a derivative work. The considerations of what might be in the public domain or not protected were not the issue here. The moment that a person could show that something new had been created, which could stand alone, it could pass the novelty test. Another example could be found in patent law, where a person could apply for a licence to “piggy-back” a new patent on another already-registered patent, because it formed an extension of it, in which case the novel criteria would be noted by the Registrar. It was irrelevant when that matter came into the public domain.

The Chairperson asked if another category should not be included, to allow for something that was traditional and functional and aesthetic.

Mr G Selau (ANC) had some difficulty in following the debate, and suggested that the Committee accede to the suggestion of Prof Ntuli to use “aesthetic, or functional, or both”. He did not see why a combination of these should pose any problem.

Ms Z Ntuli, Deputy Director General, dti, said that Mr Netshitenzhe had indicated that there might be practical problems and asked for some time to consider this further.

Mr Radebe suggested, and the Chairperson agreed, that the parties be given time to consider the matter, and the issue would be flagged for further discussion the following morning.

Ms Shabangu added that she would have like to get input from SAIIPL as far as designs were concerned.

Questions on clause 28K
Mr Harris said that he would withdraw the question noted under this clause.

Question on clause 28E
The Chairperson thought that the query raised on page 3, in relation to clause 28E, had been dealt with.

Mr Harris thought it had not. This question related to parallel rights, as Ms Shabangu had raised earlier. The National Economic Development and Labour Council (Nedlac) comments suggested that if the right to communicate to the public was included in clause 28E (d), in relation to works of a “literary or musical nature”, then that had to be extended also to other literary artistic works and cinematograph films. He read out the section of the Nedlac report that noted that labour and business had supported the idea of communication to the public, but had suggested that the catalogue of and business supported the introduction of communication to the public. However, the catalogue of traditional copyright holders must be amended, by adding it to the catalogue for literary, music or traditional works.

Adv van der Merwe said that Mr Netshitenzhe was part of the Nedlac process. The reason why this had been done in this way had to do with the fact that enabling treaties were not signed, so although there was no problem in including this submission from a drafting point of view, it might conflict with policy.

Mr Netshitenzhe confirmed that he was part of Nedlac process. There was not a problem with indigenous knowledge in itself, but South Africa had not yet acceded to certain WIPO treaties. It was possible for Parliament to take a decision on this point, as it was a policy issue. In principle, dti preferred not to commit itself to piecemeal agreements, but would prefer to consider signature of several treaties in principle.

Ms Ntuli added that Mr Harris’ concern had obviously arisen out of the proposal, and one of the rules during Nedlac negotiations was that this process should not be used to interfere with areas that were related to what was being proposed. Therefore, dti had not had a particular mandate on this point. Dti wanted to limit the scope for negotiations to matters that actually involved indigenous knowledge, and it came down to a question of policy.

The Chairperson acknowledged that the scope of mandate must be respected, and said that the Committee would take the final decision on this point.

The Chairperson noted that another issue related to clause 28E (d) was a suggestion that a specific clause was required to create moral rights

Mr Harris noted that this was an old issue, and arose from the difference of opinion as to whether the moral rights in the Copyright Act related also to the new forms of IP.

Dr von Braun said that she was not familiar with moral rights.

Ms Shabangu asked if Mr Harris was asking for moral rights of the community to be set out. When he confirmed this, she agreed that a community should be able to object to any mutilation or distortion of their work.

Ms Ntuli noted that this issue had been brought to the fore when a rain dance symbol had been displayed in the wrong position, which had offended the community.

Ms Shabangu confirmed that anything which, according to the author, was a mutilation or distortion should be actionable.

Adv Alberts agreed on this point. Section 20 of the Copyright Act bestowed moral rights in respect of copyright, and this was applicable both as a prohibition against mutilation, and to ensure that there was attribution towards the author, whose original authorship should be acknowledged in the work. From his reading of the Copyright Act, he thought that should extend automatically to the amendments in the Bill that related to traditional knowledge.

Dr von Braun noted that one reflection of this might be that a sacred symbol, for instance, could not be incorporated into a design for, say, underwear.

Ms S van der Merwe noted that it would be useful to have a proposal from the drafters as to how this could be addressed.

Adv Kweta noted that on page 30 of the Bill, clause 28A(1) stated that the provisions of the Copyright Act would apply to traditional works, and he said that moral rights were therefore already included in the Bill.

Mr Harris was aware of this, but had felt that perhaps it was not strongly enough stated, and it made sense, in his opinion, to provide separately for moral rights in the Bill.

Ms Shabangu agreed that protection of moral rights was very important for the community. The Performance Protection act would cover certain actions, but she thought that it would be useful to specify that moral rights were also covered, as this was a new type of protection.

The Chairperson asked if there would be any harm in re-emphasising it.

Adv Kweta reiterated that it was already covered, and nobody would be able to claim that section 28A did not bestow the same rights as included in the Copyright Act.

Dr von Braun thought that it would then make sense also ensure that the principles should apply to the other pieces of legislation as well.

Adv Kweta thought that they were included, with the necessary changes required by the context. The drafters had already tried to ensure that nothing fell through the cracks.

Ms Ntuli agreed that moral rights should be extended; the question was simply whether it should be expressed differently, and she suggested the drafting team consider this and revert with suggestions.

Adv Johan Strydom, Legal Advisor, dti, agreed that this was already stated specifically, not just included by implication, and he cautioned that if the drafters were to single out moral rights, then this could give rise to other problems in interpretation, because other rights had not been dealt with in an equal manner.

Mr Mabaso agreed that over-emphasising one point might, by implication, be regarded as de-emphasising other points.

The Chairperson noted that Dr Oriani-Ambrosini had, on several occasions, raised a query whether indigenous knowledge would be protected better by this Bill than by other forms of protection, and he had referred specifically to the reed dance.

Parallel rights
Mr Harris said that there were still some outstanding points by the DA which had not yet been considered. On page 3 of his submission, handed out earlier that morning, he had raised a question of parallel rights. He said that there was still a question of whether protection of rights should extend also to other rights that did not breach the originality provisions or perpetuity requirements. He cited a work that might be an original literary, artistic or musical work, and which would therefore be protected already under the Copyright Act. If this work was also an indigenous work, then the question was whether it would also benefit under protection of traditional work, or whether it would be considered only as a derivative work, and whether the holder of the rights would then have to choose. He wondered if a “traditional derivative work” must be non-original, to avoid the dual systems applying.

Ms Shabangu said that this issue had been discussed earlier in the morning. The effect of the proposed amendments would indeed be to have two types of protection running parallel. The Committee would have to decide whether this was desirable. She thought that where something had been taken away from communities, they should be remunerated. However, she also said that rights should not be taken away from existing rights holders. It would be necessary to consider then how communities could start to share in and obtain compensation from people already using the works.

Adv Strydom gave an example. If a pen, for example, was currently an existing design, registered under the Designs Act, the right was vested in the designer and therefore protected. Once the Bill came into effect, it might be realised that this design was in fact derived from a design of an indigenous community, used in that community for years. This would be an example of parallel or conflicting rights, because the proprietor of the registered design was now confronted with a parallel claim by the indigenous community, who were original authors. Ms Shabangu had suggested that this situation should never have arisen, because if that design related to, or was derived from, an indigenous design in the public space, it would have been incorrect to register the design in the first place.

Adv Strydom then referred to the clauses on page 94, which set out provisions on savings and infringement. Nothing would happen in relation to the use of the that design for years gone by. However, if the pen designer wanted to continue to derive a commercial benefit in future, then he would have to contact and negotiate with the indigenous community and comply with the provisions around benefit sharing agreements. He hastened to add that he was not saying that this was what the policy should be, but that was what the Bill currently provided, and it was up to the Committee to decide it this was correct.

Ms Shabangu clarified that if an examiner was looking at a design, which was not new, in the sense that it was not inventive, and was already in the public domain, then that design should not be registered. However, if it did have some traditional aspects, but had fallen through the cracks, then she agreed that compensation should be paid to the traditional owner. She was still concerned about the transitional provisions. Existing copyright holders would have to be given notice or time to regularise the situation, and that was why she had suggested that transitional provisions should be considered.

Mr N Gcwabaza (ANC) asked if there was not something to that effect already.

Adv Kweta reminded him that this was contained on page 94, in subclause (2).

Adv van der Merwe said that she had some difficulty with this. The owner of the derivative design (the pen designer) would remain the owner of that design. However, it did not make sense to suggest that a derivative design need not be novel, because then this would surely refer straight back to the original work, and a link must be established. The portion of the design that was indigenous would not be owned by the derivative designer, who would “own” for himself only what was added.

She suggested that perhaps the drafters could advise what should be covered in transitional provisions. She agreed with the point about giving notice, but said that the Committee would need to discuss other aspects.

Ms Shabangu thought that there was some confusion. She attempted to clarify this, saying that if a design was based on a traditional work and it was in the public domain, then the derivative design could not satisfy the requirement that it was new or invented, not new, and it should not be registered because it would fall foul of design requirements. However, if the derivate design was new and complied with the requirements of indigenous knowledge, then it could be registered. The issue was then what royalties would need to be paid. She also thought that six months notice might not be sufficient, and consideration might be needed as to whether communities would be ready to exercise rights given under this Bill.

Dr von Braun said that the obligation to negotiate with the community fell on the users of the design, and it would not be the responsibility of the indigenous community to find out who was using their designs. The reality was that many patterns, such as those used in textiles and jewellery, were based on traditional knowledge, although they claimed to be based on public research. This was a real issue and many examiners did not have the capacity to consider what in fact a traditional design was.

Mr Harris said that, in line with the Committee’s discussions, then perhaps the period, which he had thought was too short, must be addressed.

Mr Radebe agreed. He thought that any sharing of benefits should start from commencement of the new Act.

Clause 28E:
Mr Harris referred to the DA submission and noted that a point was raised on page 2, in relation to clause 28E, that non-indigenous works could not be given rights of copyright.

Clause 28I
Mr Harris said that his submission noted that it should be made clear, as agreed to at Nedlac, that the national Trust would be funded by the fiscus. He also felt that the Community Protocol must be given additional status, but the second half of that point was dealt with earlier in the day.

Clause 28B
Tangible form
Ms Shabangu said that what Mr Netshitenzhe had suggested earlier seemed to suggest that this would fall under conventional copyright and she referred to the phrase “or otherwise is capable of substantiation from the collective memory”. The Copyright Act required something to be reduced to tangible form, rather than held in someone’s memory, and she thought that extending copyright to matters that were not tangible would amount to extending the ambit of copyright for traditional matters beyond the ambit that applied to current rights holders.

Mr Netshitenzhe said that it was not true that everything under the Berne Convention had to be reduced to writing.

Prof Ntuli was disturbed by the suggestion that the communities themselves should be burdened with the issue of proof. On the one hand there was a need for protection, but on the other hand they should not be placed under substantial burdens.

Ms Shabangu asked that the Committee should look at section 2(2) of the current Copyright Act, in relation to reducing a work to “tangible form”.

Clause 28B: Continuous use of right by community
Mr Harris referred to the WIPO indication that a community would have to prove that it had continuously used the work, but this point remained undecided. He agreed with the WIPO recommendation.

The Chairperson noted that she had written to WIPO, as requested by the committee, but to date there had been no written response, only an acknowledgement of receipt of her letter. However, she had had a telephone conversation with WIPO that morning, reiterating that a written response was required. She said that there seemed to be some reluctance on this point, possibly because what the Committee had advanced took the position in fact further than WIPO had done. She reiterated that there was no consensus at WIPO, as matters were still under serious deliberation or debate. He could only express his individual views. He also indicated that WIPO looked forward to receiving the Bill produced by this Committee.

Ms Shabangu said that in relation to clause 28B she had expressed concern that traditional works should be eligible for copyright, because there were certain requirements that would not be fulfilled, and this might blur the existing principles. Although she did not have a final solution on this, she suggested that it might be preferable to refer to “traditional knowledge rights” instead of “copyright”, and if any traditional work satisfied the requirement for copyright it should be protected there.

Adv van der Merwe said that she did not see that there would be any problem with changing the term “copyright” to “indigenous knowledge right” wherever this occurred. She had tried to do the same with “designs and trademarks” but this was more difficult. She pointed out that there was already reference to “traditional design” and “traditional expression”. She suggested that the title of clause 28D, on page 36, should read “Ownership of an indigenous knowledge right”. She said that “indigenous” was used instead of “traditional” to be consistent with other references to an indigenous council and similar expressions. At the bottom of that page the wording would then read: “the ownership of an indigenous knowledge right… similar to that conferred by sections 3 and 28B”

Mr Radebe noted that this Bill was intended to mainstream indigenous knowledge to the main IP. He asked what the reason would be for excluding it. He was worried that this might defeat the aim of the Bill.

In respect of continuity of use, Mr Harris maintained his argument that the Bill currently contained no requirement for the community to prove that it had used the work continuously up to the present time. He proposed that this requirement must be added to the definition.

The Chairperson said that this query was the reason why the letter was written to WIPO, and, as previously indicated, WIPO seemed to be reluctant to respond on this point. It was possible that some of what was stated in 2009 might have been overtaken by subsequent discussions. 

Mr N Gcwabaza (ANC) asked why a community should have to prove this, in order for the right to be recognised. There could be circumstances that could have caused a community to discontinue the use for some time, and then revive it. He cited the example of the Reed Dance, which was discontinued at one point, but then revived. Another example was that in the 1960s, apartheid legislation had banned and criminalised the making of Zulu traditional beer, so that other derivatives took over for a while. However, the traditions had now been revived.

Dr von Braun agreed with that point. WIPO had referred to this to indicate that a certain degree of continuity may be required, but this was probably captured already in the reference to a culture passed between generations.

Ms Ntuli thought that this was introducing a new requirement. This brought the Committee back to the issue that the fact that some traditional knowledge was not protected did not mean that it was in the public domain. The Committee had to be clear on that issue. It would be wrong to try to pre-empt a decision as to whether an application might fit the requirements in the future, and might be indicative of a particular perception of intellectual property.

Clause 28G
Mr Harris said that he had previously raised some concerns on the ceiling for regulation, and referred Members to clause 28G(6). He noted that a group of dancers might perform a traditional dance at a tourist site, and be dependent on this activity for their income. As the Bill currently stood, they would have to fulfil the requirements of getting prior consent from the community who “owned” the dance, and enter into a benefit sharing arrangement. This, however, would be overly onerous for many owners of derivative works, and in addition to that they may, themselves, have come from the community. He and the drafters had suggested that the Minister should prescribe a ceiling below which those requirements would not need to be fulfilled, on the basis of the principle that something insignificant should not attract the attention of the law (de minimis non curat lex).

Dr von Braun said she supported the intention behind this suggestion.

Ms Shabangu asked how the value would be determined.

The Chairperson noted that this would be an economic activity, and whilst one community may consider a figure “small” another may hold a different view. The amount would need to be set out in the regulations,  and be reviewed from time to time. The question was whether the royalty sought by the community, if it had to be paid, would be affordable to the performers.

Ms Shabangu asked if the requirement for payment of a royalty would curtail the use of the traditional work.

Ms Ntuli wondered if the same principles would be applied also to other IP areas – like CDs being sold in the street. The income was not significant, but the scourge was. It was not just the value that needed to be considered when assessing whether something was serious. There was a need to be consistent.

Mr Selau did not believe it was up to the legislators to look at those details, and it was merely the principle that must be considered..

Prof Ntuli agreed with Mr Selau.

Adv van der Merwe said that when the drafters were looking at this exception, they were looking at what the Minister should be able to prescribe. She noted that it would be quite complex for dti to determine whether “sector” “value” or other aspects would have to be prescribed.

Dr von Braun suggested that instead of looking at numbers, it might be useful to consider the nature of the activity, and whether it was “a wilful, commercial activity” or something less formal.

Ms S van der Merwe felt that most of the issues had been addressed. It was now up to the Committee to move forward. She felt that the drafters and experts had done a fine job in pulling all the issues together.

Ms Shabangu asked that the Copyright Committee of SAIIPL had commented on the issue of works in perpetuity. She said that many of the aspects in this Bill were entirely new and it should perhaps be published again for public comment. She would have liked more time for meaningful contribution, as she thought that there were more amendments still needed to the Bill.

The Chairperson said that the issue of perpetuity had been discussed on many occasions, even prior to this team when the Committee was dealing with the new draft.

The Chairperson thanked all the experts for their contribution. They had given greater insight into many of the issues that the Committee Members could not resolve. Some Members of the Committee may still engage with experts either within, or outside this Panel. She commented that the Team of Experts were well-known to, and well respected by WIPO.  She reiterated that WIPO was looking forward to developments in this Committee, which would assist WIPO in its own deliberations. The Bill as passed would no doubt not satisfy every Member of the Committee, and they would be free to share their concerns with the House.

The meeting was adjourned.


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