UCT’s Intellectual Property Unit strives to add an African voice to the global debate on IP-related issues. Our focus is on examining the link between IP, innovation, development and public policy, taking into account the needs of society, rights owners and consumers. Our vision is to be a leading voice in realising a continent where there is an open exchange about African ideas, creativity and innovation, in pursuit of sustainable development. We promote research, teaching, and learning in IP through holistic, balanced and open approaches, in order to stimulate innovation that drives development. Our core values are integrity, inclusiveness and relevance. We believe that South Africa has a leadership role in defining IP challenges in emerging and developing countries. We develop our programs through dialogue, research, debate and capacity building.
by Eve Gray and Tobias Schonwetter
The Copyright Amendment Bill of 2017 currently undergoing the consultative process in South Africa, proposes overturning the longstanding prohibition against parallel importation provided for in the present South African legislation, an action that could undo more than a century of colonially-based market manipulation. Clause 11 of the 2017 Bill proposes the insertion of the following Section 12B into South Africa’s Copyright Act:
(1) Notwithstanding anything to the contrary in this Act, the Trademark Act, 1993 (Act No. 194 of 1993), and the Counterfeit Goods Act, 1997 (Act No. 37 of 1997), the first sale of or other transfer of ownership of a transferred original or copy of a work in the Republic or outside the Republic, shall exhaust the rights of distribution and importation locally and internationally in respect of such transferred original or copy.’’
This article reviews the proposed elimination of parallel import restrictions (PIRs) in the light of the South African legislature’s revision of copyright law in the draft Copyright Amendment Bill of 2017, currently under discussion with stakeholders. The issues are explored against the background of a colonial history, involving the power politics that still prevail in the former British colonial territories. As a hangover of British imperial politics, most countries in Africa have prohibitions against parallel importation.
The Background – What is Parallel Importation?
For those unfamiliar with the terrain, the question of parallel importation arises at the boundaries of copyright law and commercial practice across international markets. It is a term applied to goods protected by IP rights, including copyrights, and produced with the permission of the rights holder overseas, but then imported into another country without the permission of the rights holder in that country. This article will focus on the parallel importation, or the prohibition thereof, in the context copyright protection. If national copyright legislation contains PIRs — as is the case with most ex-British colonies, including South Africa (see s23(2) of the South African Copyright Act as interpreted by the courts in Frank and Hirsch (Pty) Ltd vs A Roopanand Brothers (Pty) Ltd 199) — this gives copyright holders the right to control importation of their works, enabling rights holders to charge different prices for different countries and to vary the quality of the products in different countries – in other words it provides for price discrimination based on geography. Importantly, PIRs are not required by international copyright instruments such as the Berne Convention and the TRIPS Agreement. This geographical discrimination is underpinned by the idea of ‘territorial rights’; the ability to provide different pricing and sales conditions in different countries. It is PIRs that allow for the enforcement of this price discrimination across different territories.
Together with two institutions in India and Brazil, UCT’s IP Unit has just co-published a paper with the title ‘Innovation, Intellectual Property and Development: A Better Set of Approaches for the 21st Century.’ The paper is authored by Dean Baker, Associate Professor Arjun Jayadev and Nobel Prize winner and former Chief Economist of the World Bank Professor Joseph E. Stiglitz. It is part of a series of arguments from AccessIBSA: Innovation & Access to Medicines in India, Brazil & South Africa, a project supported by the Shuttleworth Foundation.
In the paper’s introduction, the authors state that “[i]f the knowledge economy and the economy of ideas is to be a key part of the global economy and if static societies are to be transformed into ‘learning societies’ that are key for growth and development, there is a desperate need to rethink the current [intellectual property] regime and to allow for a much less restrictive flow of information and knowledge. Moreover, if we are considering questions of ethics, the current regime is deeply regressive and inefficient.”
The paper aims to provide an intellectual basis to think about the relationship between development, intellectual property and innovation; where we currently are and what alternatives are available. The authors outline the basic logic for the implementation of intellectual property rights and detail alternatives to providing private monopolies to promote innovation. The paper then turn to the question of intellectual property rights and the process of development. The authors argue that both theory and the preponderance of historical evidence suggest that development, at least in its initial stages, is best promoted by a weaker intellectual property regime than reflected in TRIPS, or at the minimum a markedly different regime. The paper shows that the current global regime of intellectual property rights is inadequate in serving the purpose of economic development and welfare. This claim is supported by an extensive set of case studies in the areas of food security, education and climate change. Finally, the paper provides a simple laundry list of ways in which better laws could facilitate development and prevent the worst excesses of the global IP regime.
The paper is available in English and Portuguese under a Creative Commons licence, and in the next few weeks we will publish a series of short summaries of different parts of the paper on this website.
by Desmond Oriakhogba
A five-years courtroom tussle concerning the rights of access to knowledge for the advancement of education in India was brought to an end in May 2017 by the Indian Supreme Court (ISC). Interestingly, the struggle ended in favour of the right of access to knowledge. A petition for leave to appeal lodged by the Indian Reprographic Rights Organisation (IRRO) against the decision of the appellate division of the Indian High Court (IHC – which upheld the right of access to knowledge) was summarily dismissed by the ISC.
It all began in 2012 when three publishers (Oxford University Press, Cambridge University Press and Taylor & Francis) filed a suit before the High Court in New Delhi (trial court – the trial court was constituted by a single judge of the IHC.) against the University of Delhi and a photocopying services provider. The publishers sought a permanent injunction restraining the defendants from infringing the copyright in their publications. The publishers also applied for interim injunction pending the trial for the main suit.
The uncontested facts of the case are that the University of Delhi identified course materials based on its syllabi. The course materials included extracts from textbooks published by the publishers. The extracts where photocopied and bound in four course packs by the photocopying services provider and sold to students and faculty of the University of Delhi at a fee of 40 paise (~ZAR 0.08 at today’s conversion rate) per page. The photocopying services provider operated from the premises, and on the authorisation, of the University of Delhi. On the average, the extracts constituted 8.8% of the textbooks each of which cost 2,500 Indian Rupees (~ZAR 510).
by Bram van Wiele
3D printing technology holds great promise for social entrepreneurs to develop and produce affordable and locally needed products. But the cost of 3D printers remains a key challenge. One Open African Innovation Research (Open AIR) case study executed by members of the IP Unit — “3D Printing: Enabler of Social Entrepreneurship in Africa?” — examines the role of two types of initiatives in facilitating affordable access to 3D printing technology: so-called ‘Fab Labs’, which provide public access to a wide range of tools and machinery, including 3D printers, and the local production of low-cost 3D printers. In early July, Dr. Tobias Schonwetter and Bram van Wiele went to Nairobi, Kenya, to interview individuals involved in African Born 3D Printing (AB3D), the Happy Feet project, Fab Lab Nairobi and Artisan Hive.
Only a few days after convening a 2 day general copyright workshop at parliament for members of the portfolio committee Trade and Industry, the IP Unit submitted, based on an in-depth analysis carried out by domestic and international copyright experts, its comments regarding South Africa’s 2017 Copyright Amendment Bill. Our submission aims to speaks to most of the issues introduced by the Bill, and where appropriate suggestions and model language are provided for further improvement. We note that the 2017 Bill is, as far as the drafting is concerned — and subject to a number of specific comments contained in our document — a marked improvement to the 2015 Copyright Amendment Bill. Some technical drafting errors do, however, remain. In particular, in many sections of the Bill, the word “author” is used, sometimes with a list of others, instead of the term “rights owner” being used. In our comments concerning the 2015 Bill, we expressly welcomed the proposed introduction of a more flexible and open fair use provision. We therefore note with concern that the lawmaker has since decided to significantly reduce the provision’s utility by limiting its applicability to a closed list of permitted purposes, and we strongly urge the lawmaker to reconsider this decision and amend s12 of the 2017 Bill by opening it up again in line with the suggestions in our submission. (One key reason for adopting an open fair use right, i.e., to authorise so-called non-expressive uses of works, is further explored in this Intellectual Property Watch op-ed by professors Flynn (Washington) and Sag (Chicago).) A partial collection of other comments submitted to the South African Parliament’s Portfolio Committee on Trade and Industry regarding the Copyright Amendment Bill can be found here.
(this blog post by Cath Traynor first appeared on Natural Justice’s blog)
As part of the ‘Empowering Indigenous Peoples and Knowledge Systems Related to Climate Change and Intellectual Property Rights’ project, Natural Justice hosted on 13 and 14 March 2017 a workshop centred on community-research contracts ensuring socially just research processes. This workshop aimed to gain valuable insights from indigenous communities through exploring the development of a ‘community-researcher contract’ between communities and researchers within the context of researching indigenous knowledge related to climate change. The objectives of the workshop included legally empowering participants on issues related to laws and policies on indigenous knowledge systems, intellectual property rights and research ethics, and exploring the concept of contracts as a tool, and also critically reflecting upon the trail implementation of ‘community-researcher contract’ between two indigenous communities and three institutions conducting research with them. The first day focused on legal empowerment and internal community discussions with representatives from the Nama, Griqua and Khomani San communities and a legal adviser. The following day wider stakeholders were invited, including representatives from the University of Cape Town, including the UCT IP Unit, Indiana University (USA), legal experts, civil society organisations including the Heinrich Boell Stiftung Southern Africa, the Open Society Initiative for Southern Africa, and the Open and Collaborative Science in Development Network (OCSDNet). These varied interests and opinions contributed to a productive discussion regards where the tensions lie between the respective parties regards how research with indigenous peoples, both in terms of the frameworks that guide research processes and how in practice research with indigenous communities is conducted. Areas of tensions were identified and the role that community-researcher contracts could play to resolve these discussed.
(by Linda Daniels – first published for Intellectual Property Watch under CC BY NC SA licence)
“Fair use” was at the heart of discussions between intellectual property stakeholders at a recent workshop called to discuss the revised draft copyright amendment bill of South Africa. The one-day workshop, held in Cape Town on 6 December was the first of two IP sector workshops that brought together academics, activists and IP practitioners to discuss the merits and demerits of the copyright amendment bill and its anticipated revisions. The second one-day workshop was held in Johannesburg the same week on the 8th of December. The draft copyright amendment bill, was published in the government gazette by the Department of Trade and Industry (DTi) in July 2015. This opened a public submissions process into the bill which ran until 16 September 2015. During this period, government called a one day conference in Johannesburg to further inform the refinement process of the bill (IPW, Africa, 28 August 2016). However, the initial flurry of excitement around the bill’s first public appearance has been tempered by uncertainty over when the official revised version will be released. DTi spokesperson Sidwell Medupe told Intellectual Property Watch in December, “We are working on it with state law advisors (certification). Early next year this will be complete and will be introduced formally.” The revised bill has not been made public yet, however Intellectual Property Watch has seen a draft version.
According to one South African academic at the meeting. The current draft bill does not contain a US-style fair use right because – although it applies a similar flexible balancing test through a general clause – it is not open to any potential purpose. This may inhibit the clause from being applied to some purposes not included in the bill, for example to the millions of copies made each day by commercial internet search engines. Such copies are not for “research,” “education” or other specific purposes protected in the existing bill. Broadly defined, “fair use” refers to rights within copyright law to use protected works without license or permission of the rights holder to serve various public interests. Expanding such user rights in South Africa in a core purpose of the revision and the workshop explored the many ways in which users would benefit from the bill’s terms. These include expanding rights to use copyrighted works for education, libraries and to provide access for people with disabilities. The workshop also explored the extent to which the bill might implement the more specific “fair use” right that exists in the U.S., Israel, Singapore, and some other countries. Here, according to Professor Sean Flynn of American University Washington College of Law, “fair use refers to a general exception in copyright law that is open to use for any potential purpose and is applied through a flexible balancing test that considers the rights and interests of the author as well as that of the user and public at large.” It is less clear whether the South African bill will include a fair use provision that is general, open and flexible as is the US standard.
Dr. Tobias Schönwetter, director of the Intellectual Property Law and Policy Unit at the University of Cape Town (UCT) and the regional coordinator for Africa Creative Commons, opened the Cape Town workshop. He reminded workshop participants that the discussion would be limited to the published draft copyright amendment bill and what could be anticipated in the revised bill given that it has not yet been released. This latest workshop was organised by the IP Law and Policy Unit of UCT and follows on from an event entitled, “The Internet Rights, Cultural Development and Balancing Features in South African Copyright Reform conference” which was held in August 2015 and hosted by the same organisers.
The application deadline for CopyrightX:UCT has been extended until 27 January 2017. Successful applicants will be notified by 30 January 2017.
CopyrightX is a course taught globally by copyright experts at numerous leading institutions under the auspices of Harvard Law School, the HarvardX distance-learning initiative, and the Berkman Klein Center for Internet and Society. Through a combination of face-to-face seminars at UCT, pre-recorded Harvard lectures, readings, live webcasts, and online discussions, participants in CopyrightX:UCT will learn about copyright law in both South Africa and the US, and examine and assess the ways in which copyright law seeks to stimulate and regulate creative expression. Some reference will be made to South Africa’s ongoing copyright revision process.This course has been offered annually at UCT since 2015.
Nine contact sessions will take place at UCT on Wednesdays between 15 February 2017 and 26 April 2017. These seminars will be taught by UCT IP Unit director Dr. Tobias Schonwetter. The course is free of charge, and those who meet the attendance requirements and pass the exam will receive a certificate from Harvard. A small admin fee of R700 is charged if participants request a UCT certificate of attendance, provided they meet the attendance requirement of 80%.
Applicants must provide a motivation of approximately 400 words stating why they wish to participate in CopyrightX:UCT, and how they plan on utilising their knowledge afterwards. Applicants are expected to actively participate in the course and attend the weekly seminars at the University of Cape Town.
CopyrightX:UCT is a member of the growing CopyrightX Community, a network of affiliated courses offered by several universities and other institutions between January and April of each year. Through a combination of pre-recorded lectures, readings, seminars, live webcasts, and online discussions, the participants in these courses examine and assess the ways in which law seeks to stimulate and regulate creative expression. CopyrightX was developed by Professor William Fisher at Harvard Law School; it is hosted and supported by the HarvardX distance-learning initiative and the Berkman Klein Center for Internet and Society. A list of the other participating organisations and additional information concerning this educational initiative is available at http://copyx.org
CopyrightX:UCT consists of the Harvard pre-recorded lectures, accompanied by reading materials relating to U.S. and South African copyright law. Nine contact sessions will take place on Wednesdays between 15 February 2017 and 26 April 2017. The classroom seminars will discuss the pre-recorded lectures and will more closely analyse South African Copyright law and the issues faced. The seminars will be taught by Dr. Tobias Schonwetter.
The course is totally free of charge. Those who meet the attendance requirements (80%), may request a UCT certificate of attendance for a fee of R700.
Applicants must provide a motivation of approximately 400 words stating why they want to participate in CopyrightX:UCT, and how they plan on utilising their knowledge afterwards. Furthermore, applicants must make a commitment to actively participate in the course and attend the weekly seminars at the University of Cape Town.
Applications are open between now and 18 December 2016. Successful applicants will be notified by 27 January 2017.
For more info and to apply click here.
Recenly, Jasson Urbach, an economist with the Free Market Foundation, published an article in BusinessDay calling for an automatic approval in South Africa of drugs recognised in advanced countries. In his article, Urbach frames his proposal as a response to ever-longer approval timelines in South Africa that impede access to medicines in the country. Interestingly, and somewhat unconnected, he also laments that activists continue to wrongly accuse innovative pharmaceutical companies of making minor variations to existing drugs on which they hold a patent in order to ‘extend’ patent terms, commonly referred to as “evergreening”. He argues that new patents on the basis of a reformulated drug can after all only be granted if the reformation fulfills the requirements of, among other things, inventiveness and novelty as stipulated in the South African Patents Act. Otherwise, patented drugs would fall into the public domain after 20 years and competitors and generic drug producers are free to copy the drug.
In his response to the article, UKZN Professor and ASK Justice Steering Committee member Yousuf Vawda firstly suggests that Urbach significantly downplays the fact that oftentimes exorbitant prices are indeed the main reason why many South Africans can effectively not access essential drugs, and not their general unavailability as a result of overlong approval timelines. Perhaps even more importantly, however, Vawda correctly points out that in his analysis Urbach simply ignores that South Africa’s peculiar current depository system for patent protection continues to promote evergreening because secondary patents here can easily be granted “irrespective of whether they satisfy the criteria of novelty, inventiveness and industrial application”.
The above debate clearly shows that the issue of facilitating equitable access to medicines remains topical and controversial in South Africa, and that a deeper understanding of innovation dynamics and the role of IP law in this context is crucial to develop holistic policy responses. Projects like ASK Justice and Open AIR will continue to respond to what appears to be an obvious need of policy makers, grass-root stakeholders and civil society for scholarly research-based evidence in this area.
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