Plant Breeders’ Rights and Intellectual Property Ownership

Summary:

In a judgment delivered on 23 August 2012 by Judge Griesel (Fortuin & Samela JJ concurring), the High Court of South Africa in the case of Voor-Groenberg Nursery CC and Another v Colors Fruit South Africa (Pty) Ltd [2012] has set an important precedent on the standard of proof of ownership of vegetative materials which are the object of intellectual property rights.

Legal Background

After Industrial Property and Copyright, Plant Breeders Rights is the third branch of intellectual property rights. This young branch of IP was born out of the UPOV Convention of 1961. UPOV stands for “Union internationale pour la protection des obtentions végétales”.
The Convention protects the variety of the plant not the plant itself therefore the subject matter of protection is the variety and not the whole plant. A variety is a new plant that is distinct from any other variety that is known to agriculture or published in any botanical literature. A variety is ‘known to agriculture’ if man has cultivated it. A variety is ‘known to botanical literature’ if it has not been recorded. Therefore any person who discovers a new plant variety that is wild, that man can use or domesticate, can apply to the competent authority for a Grant of a Plant Breeder’s Right.

The UPOV Convention 1961 was subsequently amended in 1978 and 1991. Kenya was the first country in Africa to domesticate the UPOV Convention. Kenya’s Seed and Plant Varieties Act Chapter 326 is modeled on UPOV 1961. South Africa’s Plant Breeders’ Rights Act 1976 is modeled on UPOV 1978.

Factual scenario in the case of Voor-Groenberg Nursery CC v Colors Fruit South Africa

Sheehan Genetics LLC (‘Sheehan Genetics’), a California-based company, developed ten different varieties of seedless grapes. Sheehan Genetics then entered into a licence agreement with a Spanish company, Antonio Munoz Y Cia SA (‘AMC’), in terms of which AMC was granted an exclusive licence to test and com­mercially develop all new plant material bred, acquired and developed by Sheehan Genetics. Later on,
Sheehan Genetics and AMC entered into a sub-licence agreement with Colors Fruit South Africa Pty Ltd. In terms of the sub-licence Colors was granted certain rights regarding the exploitation of the so-called “Sheehan varieties” in South Africa and Namibia.

The rights are set out in paragraph 5 of the judgment as follows:

” (a) an exclusive right (to the exclusion of both AMC and any third party) ‘to obtain from AMC … all the propagating samples of all new vegetative material bred and/or developed by Sheehan Genetics and received by AMC from time to time, so that Colors Fruit may (i) test, plant and cultivate them; (ii) obtain their products; and (iii) secure their statutory protection’ in the form of registration of plant breeders’ rights in the name of Sheehan Genetics within the defined territory (‘Planting and Cultivation Rights’); and
(b) a non-exclusive right to use the intellectual property rights of which Sheehan Genetics was the proprietor, to market and distribute the products in the agreed distribution territory (‘Marketing and Distribution Sub-Licence’).”

In terms of the sub-licence agreement, Colors was appointed as Sheehan Genetics’ South African agents in connection with matters relating to plant breeders’ rights, governed locally by the Plant Breeders’ Rights Act, 15 of 1976 (‘the Act’). To this end, Colors contracted the services of Voor-Groenberg, a local entity, to propagate and multiply the plant material obtained by it [Colors].

Things went south when AMC notified both Sheehan and Colors of its intention to terminate the licenses described above. Despite this notice of termination of the license, Colors took the view that it would not terminate any of its production or cultivation programs; and further that it would not surrender any of its rights in respect of the plant materials. Why? Well, Colors claimed it had acquired ownership of the Sheehan plant varieties! How? Colors made two separate arguments:

1. Colors argued that the sub-licence did not contain a reservation of ownership in favour of Sheehan Genetics or AMC. This fact, together with supply of the plant material to Colors, can lead only to the conclusion that the intention must have been for Colors to become owner.

2. Colors relied on the provisions of s 23(6) of the Plant Breeders’ Rights Act.

The High Court rightly dismissed Color’s ownership claim on both these grounds. The Court rightly dismisses Colors’ first argument at paragraphs 22, 23 and 24. However for purposes of this post, we shall focus on the second argument because it is directly pertinent to our discussion on intellectual property rights.

The point of departure is section 23 of the South African Plant Breeders’ Rights Act which states the holder of plant breeder’s right has certain exclusive rights in respect to the propagating material of the relevant variety; or harvested material, including plants, which was obtained through the unauthorized use of propagating material of the relevant variety. These include:
(a) production or reproduction (multiplication);
(b) conditioning for the purpose of propagation;
(c) sale or any other form of marketing;
(d) exporting;
(e) importing;
(f) stocking for any of the purposes referred to in paragraphs (a) to (e).

This section provides that any person exercising any of the above rights must have proof of prior authority from the rights holder in the form of a license.

It is clear from the above facts that Colors had obtained such a license however in the absence of any proof of assignment of rights from Sheehan, could Colors claim to be the holder of plant breeder’s rights in respect of the Sheehan variety? The answer is an emphatic ‘No’. Therefore Colors cunningly decided to rely on the exceptions provided in section 23(6) of the Plant Breeders’ Act to claim it had acquired the rights to use the plant varieties. This section provides that:

“a person who procured any propagating material of a variety in a legitimate manner shall not infringe the plant breeder’s right in respect of the variety if he or she—
(a) resells that propagating material;
(b) subject to the provisions of subsection (2), sells any plant, reproductive material or product derived from that propagating material for purposes other than the further propagation or multiplication thereof;
(c) uses or multiplies that propagating material in the development of a different variety;
(d) uses that propagating material for purposes of bona fide research;
(e) uses that propagating material for private or non-commercial purposes; or
(f) is a farmer who on land occupied by him or her uses harvested material obtained on such land from that propagating material for purposes of propagation: Provided that harvested material obtained from the replanted propagating material shall not be used for purposes of propagation by any person other than that farmer.”

To my mind, this section is akin to the exceptions and limitations provision in section 23 of the Copyright Act commonly known as the ‘fair dealing’ or ‘fair use’ provisions. However, in the case of copyright as is the case for plant breeders’ rights, such provisions can only be relied on as defences where there is an allegation of infringement of rights. The court makes a similar observations at paragraph 29:

“reading s 23(6) in context, it provides a defence – not a cause of action – to a limited class of persons, namely persons without a licence obtained under s 25 or 27, who are accused of infringing a plant breeder’s right. Like estoppel, therefore, s 23(6) is meant to be utilised as a shield, not as a sword.”

These exceptions are sometimes referred to as the “farmer’s privilege” as contemplated in UPOV 1978 and were part of a larger campaign to obtain international recognition of plant breeders’ rights which was finally realised in 1994 with article 27(3) (b) of the TRIPS Agreement.

Conclusion:

The High Court’s findings in this case are spot on in upholding the intellectual property rights of the plant breeder over any other competing interests. In the present case, the object of the plant breeder’s right is the plant variety including related propagating material and harvested material. One cannot claim ownership of the vegetative material of a particular plant variety if one is not recognised by law as the holder of the plant breeder’s right.

The Newly-Appointed 2012-2015 Kenya Copyright Board of Directors

The Attorney General who is the Minister responsible for copyright and related rights in Kenya has appointed 12 individuals to serve as Board Directors of the Kenya Copyright Board (KECOBO). These appointments took effect on the 17th of August 2012 and will run for a period of 3 years.

The announcement of these appointments can be found in the Kenya Gazette Notice No. 11825 available here.

1. Isaac Rutenberg Michael (Dr.) (“@iruten” on twitter) – nominated by registered software associations.

2. John Katana – nominated by registered musicians’ associations.

3. Charles Peter Asiba – nominated by registered filming associations.

4. Laurence K. Njagi – nominated by publishers, authors and writers associations.

5. Nancy W. Karimi – nominated by publishers, authors and writers associations.

6. Tom Mshindi (“@tmshindi” on twitter) – nominated by registered associations of broadcasting stations.

7. Anil Kapila – nominated by producers and distributors .of audio-visual works.

In addition, the following persons have been appointed by virtue of their knowledge and expertise in matters relating to copyright and other related rights:

1. Henry K. Mutai (Dr.) (“@HKMLegal” on twitter)

2. Rhoda J. Birech (Dr.)

3. David Murithi (who shared his reaction to the appointment on twitter via “@davidmuriithi”)

4. Catherine Ngengi

6. Joy Mboya

———–

IPKenya congratulates the new appointees and wishes them well as they steer the Kenya Copyright Board forward.

Uganda: Is it copyright infringement to use a politician’s speeches as ringtones?

New Vision in Uganda has reported that ex-Kampala Mayor Al Haji Nasser Ntege Sebaggala is suing leading telecommunications company MTN Uganda for copyright infringment by using his speech recordings as ringtones. It is reported that MTN has acknowledged that the recording is indeed Sebaggala’s voice but contends that he did not make the recording nor did he acquire any copyright for the speeches.

Sebaggala’s demands:
– all the proceeds collected by MTN in relation to the ringtones. In this connection he is reportedly demanding an audit to ascertain the money collected by MTN.
– a 20% monthly interest on the ascertained audited figure above, together with a 20% monthly interest on damages and costs of the suit, from the date of judgement until full payment.

MTN’s defences:
– Ssebaggala is not the author or the physical person who created work of the sounding recording or ringtones, and as such is not entitled to protection under the copyright law.
– The ringtones were procured and uploaded by SMS Media Limited, which signed a service provision agreement with MTN.
– Sebaggala’s speeches were publicly broadcast as current news of public interest and political events.

Comment:

A ringtone is defined as a sound file that is played by a cellular or a mobile phone. Copyright law would therefore recognise SMS Media Limited as the copyright owner of the ringtone.

However under copyright law, the act of Sebaggala reading his speeches is considered a performance and the law recognises performers’ rights as one of the types of related rights under copyright.

Therefore if Sebaggala’s case were being heard in Kenya, the court would consider Section 30 of the Copyright Act (as recently amended) which lays down the exclusive rights of a performer such as Sebaggala:

Subject to section 30 of this Act, a performer shall have the exclusive right to carry out any of the following acts:

(f) distribution of a fixation of his performance or copies thereof, to the public.
(g) the making available to the public of his fixed performance, by wire or wireless means in such a way that members of the public may access them from a place or a time individually chosen by them. [Emphasis added]

Furthermore, Section 30A of the Copyright Act creates a right of equitable remuneration for performers therefore Sebaggala would be entitled to compensation:

30A (2) If a fixation of a performance is published for commercial purposes or a reproduction of a fixation of a performance is used for broadcasting or other communication to the public, or is publicly
performed
, a single equitable remuneration for the performer shall be paid by the user to the collective management organization.
(3)The right of equitable remuneration under this section shall subsist from the date of publication of the sound recording or fixed performance until the end of the fiftieth calendar year following the year of publication, provided the sound recording or fixed performance is still protected under section 28 and 30.
(4) For the purposes of this section, sound recordings and fixations of performances that have been made available by wire or wireless means in such a way that members of the public may access them from a place and a time individually chosen by them shall be considered as if they have been published for commercial purposes. [Emphasis added]

Therefore under the Copyright Act of Kenya, Sebbagala would have a strong case for copyright infringement of his neighbouring rights as a performer. Uganda’s Copyright Act of 2006 also provides under section 22 that a performer has the right to authorise the following acts:
– the direct or indirect reproduction of a fixation of his or her performance in manner or form;
– the distribution or making available to the public of the original or copies of the fixation of his or her performance through sale or other transfer of ownership.

However unlike in Kenya, the Uganda Copyright Act does not provide a right to equitable remuneration for performers.

Another ground upon which Sebaggala can seek relief is image rights. The ringtones were made from the sound of his voice, which is a part of his likeness therefore any attempt to appropriate any aspect of a person’s likeness would be actionable as unjust enrichment. IPKenya will be keenly following this case and is confident that the IP-friendly Judge Madrama will take this opportunity to provide useful jurisprudence in this rather obscure area of law.

Upcoming Event #POWOAugust: Poets and Writers Online Discuss Digital Protection of Works

This Saturday 18 August 2012, IPKenya will be at #POWOAugust discussing the topic: “Protecting Your Work Online”. Some of the areas that will be discussed are: “All Rights Reserved” protection versus “Some Rights Reserved” protection, exceptions and limitations under the Copyright Act (“fair dealing”), technological protection measures (“TPMs”) and dealing with IP infringement online.

IPKenya is eager to hear from the #POWOAugust participants on their experiences with online publishing. In addition, it is anticipated that there will be discussions on the limitations and challenges of copyright, respect for intellectual property rights and the plagiarism menace. It is hoped that through these discussions, #POWOAugust participants will be able to reach a decision on which types of online protection are best suited to their needs.

Software Patents, Business Method Patents: State of Play in Kenya

“anything under the sun that is made by man [is patentable]”
– US Supreme Court in the case of Diamond v. Chakrabarty 447 US 303 (1980)

“From where does a man derive his right to possess something, and to refuse the whole world his right of ownership? This right originates from only one factor; the fact that man is nobody’s property. He owns himself and cannot be someone else’s possession. If, therefore, man possesses himself, it is clear that his wealth, his intellect, and his ability cannot be someone else’s property. So, whenever he uses his intellect, his health and his ability to make anything, that thing becomes his property”
– Mwalimu Julius Nyerere, “Freedom and Unity/Uhuru na Umoja” (1966) (cited at #CIPITConf by @IPKenya)

“Anything that won’t sell, I don’t want to invent. Its sale is proof of utility, and utility is success.” – Thomas A. Edison. (cited at #CIPITConf by @HKMLegal)

“When we work, natural law says we have the right to own our work. To let others steal this is to destroy the basis of civilization, to cast us into slavery. If I cut a tree and make a table, it is mine. If I write a story, it is mine. If I invent a new compression algorithm, it is mine. When someone takes my ideas, it is theft, and a just society must punish theft, or it falls apart. Software patents are thus a natural and necessary protection for original ideas.”
– Peter Hintjens. (cited at #CIPITConf by S. Kiptinness)

During CIPIT’s 2-day conference (#CIPITConf) on the patentability of software in Kenya, none of the speakers appeared to advocate for an outright position for or against software patents. Instead, all the presenters at #CIPITConf did their best to elaborate on the pros and cons of patents generally and software patents in particular.

With regards to the patentability of ICT inventions, the patent experts at #CIPITConf from the World Intellectual Property Organization (WIPO) and the Kenya Industrial Property Institute (KIPI) both seem to agree that one is most likely to be granted a patent for a hardware controlled by software and least likely to be granted a patent for a software embodied on a machine readable medium or through a network.

Therefore the decision Kenya needs to make is where to draw a line between unpatentable computer programs and patentable inventions that embody, apply or use the unpatentable computer program. In this regard it was noted by participants at #CIPITConf that there’s a lack of administrative and judicial interpretations on the exclusions from patentable subject matter provided for under section 21 of the Kenya Industrial Property Act. Thus, Kenya needs to develop it’s own clear tests for distinguishing non-patentable software and patentable software-implemented inventions. These tests will only develop from a large and consistent volume of software patent applications being filed at KIPI coupled with fervent litigiousness on the part of unsuccessful software patent applicants.

Read the rest of this article over at the CIPIT blog here.

Tobacco Plain Packaging Law: Intellectual Property Rights versus Human Rights in Kenya

Australia’s Parliament is without doubt one of the most proactive legislatures in the world. In a few short years, it has made history as the first country to legislate on carbon taxes and now it is taking on the multi-billion dollar worldwide tobacco industry. In the above clip, circa 10:53, Richard di Natale, Senator from Victoria had this to say on the need to legislate further against ‘Big Tobacco’:

“The one frontier that has remained open to tobacco companies is on the packets themselves. They are little billboards of nastiness advertising their wares to passers-by from pockets, from kitchen tables, on dashboards of cars, all around the country. And smokers do see the branding on these packets potentially dozens of times a day. And this Bill will remove that opportunity. An opportunity for tobacco companies to compete on grounds of brand awareness and image.

The Tobacco Plain Packaging Act 2011, when it does come into law, will remove the ability of tobacco manufacturers to display logos, images and promotional text on their packs and will replace it all with a plain brown packet. Current health warnings will be enlarged and accentuated… Under the Act it will be an offence to sell a non compliant product with potential penalties in excess of one million dollars for a wilful breach of the act by a body corporate. Under the Act, the packet will be tightly controlled: they have to be made of cardboard, packs have to be rectangular, contain no embossing, the colour needs to be a drab dark brown and no trademarks will be allowed. The location and orientation of the branding variant name are strictly prescribed and the graphic warning will be enlarged to 70% of the front of the packet.

In short, this bill aims to ensure that the packet of cigarettes is as ugly as the product itself.” (Emphasis added)

Australia has now enacted this Bill into law.

Meanwhile here in Kenya, the Tobacco Control Act 2007 remains in force and section 21 of this Act contains the following provisions with regard to packaging of tobacco products:

“21 (2) Every package containing a tobacco product shall –

(a) have at least two warning labels of the same health messages, in both English and Kiswahili, comprising of not less than 30% of the total surface area of the front panel and 50% of the total surface area of the rear panel, and both located on the lower portion of the package directly underneath the cellophane or other clear wrapping;
(b) bear the word “WARNING” appearing in capital letters and all text shall be in conspicuous and legible 17-point type, unless the text of the label statement would occupy more than seventy percent of such area, in which case the text may be of a smaller but conspicuous type size, provided that at least sixty percent of such area is occupied by the required text; and
(c) bear text that is black on a white background or white on black background in a manner that contrasts by typography, layout or colour with all other printed material on the package.

(3) All the warning labels specified in the Schedule shall be randomly displayed in each twelve-month period on a rotational basis and in as equal a number of times as is possible, on every successive fifty packages of each brand of the product and shall be randomly distributed in all areas within the Republic of Kenya in which the product is marketed.
(4) The Minister may, by notice in the Gazette, prescribe that the warning, required under this section, be in the form of pictures or pictograms; (..)”

Returning back to Australia, in the recent case of JT International SA and BAT Australasia Limited v Commonwealth of Australia [2012] HCA 30, Big Tobacco went to court challenging the constitutionality of the Plain Packaging Act. The High Court of Australia earlier issued orders ruling that “at least a majority of the judges” are of the view the plain packaging regime is valid under the Australian Constitution. The High Court rejected the arguments of Big Tobacco that there was an acquisition of property on less than just terms. See case citation here.

Meanwhile back to Kenya, BAT East and Central Africa Area Director Gary Fagan is reported as being “extremely disappointed” by the court] decision on the Australian Act which he termed as a “bad piece of law”. He adds that:

“”We fully support any form of evidence-based regulation but there is no proof to suggest plain packaging of tobacco products will be effective in discouraging youth initiation or encouraging cessation by existing smokers (…) In fact, plain packaging would only exacerbate an already significant illicit tobacco trafficking problem, and would have other significant adverse unintended consequences including driving down prices which would lead to increased smoking while reducing government tax revenue(…)”

As a matter of fact, earlier this year, IPKenya recalls government authorities raising the alarm over increased sale of counterfeit and smuggled cigarettes in Kenya. Kenya Anti-Counterfeit Agency (ACA) reported that cigarettes are rapidly becoming the most illegally traded product in the region, while health experts warned a health crisis could be looming. Local cigarette makers BAT-Kenya and Mastermind Kenya Ltd estimated that counterfeiters pocket upwards of US$1.05 billion (Sh100 billion) every year from sales across East Africa.

Comment:

In deciding whether Kenya should or shouldn’t follow Australia’s bold legislative approach, IPKenya asks: Is destroying trade marks or brands of Kenyan cigarette companies in order to discourage the use of tobacco products reasonable and justifiable under the limitation clause in Article 24 of the Constitution?

Unlike in Australia, Kenya’s Constitution has over 3 specific provisions on intellectual property rights including the broad provision on the protection of right to property enshrined in Article 40. In this regard, the stand-out constitutional provision which would need some legislative and judicial interpretation is Article 40(5) which states: “The State shall support, promote and protect the intellectual property rights of the people of Kenya”. This provision alone could form the basis of a constitutional challenge by Kenyan tobacco companies if the government decided to propose a law similar to the Australia’s Tobacco Plain Packaging Act 2011. In addition, Big Tobacco in Kenya may chose to rely on other persuasive arguments mentioned above such as the potential increase of smuggled and/or counterfeit tobacco products and its effect on illegal and organised crime in the country.

If our government was desirous to push for such legislation, it would argue that intellectual property rights must be balanced with other fundamental rights and freedoms also enshrined in the Constitution. In a recent High Court case discussed by IPKenya here, the court considered the intellectual property rights of pharmaceutical manufacturers protected in the Anti-Counterfeit Act but held that the provisions of this Act denied Kenyans access to essential HIV medicines therefore it violates the right to life of Kenyans as protected by Article 26 (1), the right to human dignity guaranteed under Article 28 and the right to the highest attainable standard of health guaranteed under Article 43 (1). The rights under Articles 26(1), 28 and 43(1) of the Constitution in addition to Article 42 on the right to a clean and healthy environment can be relied upon by the State in support of a plain packaging law.

Within Africa, it is reported that South Africa’s government has already expressed its intention to follow Australia’s controversial new tobacco law.

Hope for Intellectual Property in Kenya: CIPIT at Strathmore University

Yes folks, it’s a bow-tie!

For the last two days, IPKenya has been attending the inaugural event of the Centre for Intellectual Property and Information Technology Law (CIPIT) at Strathmore University. As many may already know, Strathmore Law School is the first law school in the entire Eastern and Central African region to set up a research centre wholly dedicated to intellectual property law. Within Africa, CIPIT is the fourth such institution after similar ones at Stellenbosch, Cape Town and Pretoria, all in South Africa.

In a earlier post titled: “A Challenge for Law Schools in Kenya to Take IP Seriously”, IPKenya highlighted the need for Kenyan universities to emulate their South African counterparts in setting up IP centres in a bid to achieve better support, promotion and protection of intellectual property rights for the people of Kenya.

In this connection, CIPIT’s timing could not have been any better. As Kenya works towards developing a National Intellectual Property Policy, conceptualises a sui-generis protection mechanism for traditional knowledge, struggles to raise IP awareness among its people while grappling with issues of piracy and counterfeiting, CIPIT has a chance to become the legal and scientific point of reference on many of these issues and truly become the hub where the private sector and the public sector can interact so as to positively develop IP laws in Kenya.

For now, only time will tell.

Godspeed CIPIT!