2018 Proposed Amendment to The Protection of Traditional Knowledge and Cultural Expressions Act

TK and TCE Act Kenya Amendment Bill 2018

The Statute Law (Miscellaneous Amendments) Bill, 2018 seeks to make various, wide-ranging amendments to the existing intellectual property (IP) law-related statutes. The Bill contains proposed amendments to the following pieces of legislation: The Industrial Property Act, 2001 (No. 3 of 2001), The Copyright Act, 2001 (No. 12 of 2001), The Anti-Counterfeit Act, 2008 (No. 13 of 2008) and The Protection of Traditional Knowledge and Cultural Expressions Act, 2016 (No. 33 of 2016). The Memorandum of Objects and Reasons for the Bill is signed by Hon. Aden Duale, Leader of Majority in the National Assembly and it is dated 29 March 2018. This blogpost will focus on the proposed changes proposed to The Protection of Traditional Knowledge and Cultural Expressions (TKCE) Act.

In our previous commentary on the TKCE Act (see here), we raised concerns about the lack of an implementation and enforcement framework thus terming the Act as an ‘orphan’ with no clear parent Ministry. Two years later, the 2018 Bill now proposes to amend section 2 of the TKCE to state that ‘the Cabinet Secretary for the time being responsible for matters relating to culture’ shall oversee the implementation and enforcement of the TKCE Act.

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Kenya’s Protection of Traditional Knowledge and Cultural Expressions Act No. 33 of 2016 Comes into Force

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On 31 August 2016, President Uhuru Kenyatta (pictured above) assented to the Protection of Traditional Knowledge and Cultural Expressions Bill, No.48 of 2015. The Bill was published in Kenya Gazette Supplement No. 154 on 7 September 2016 cited as the Protection of Traditional Knowledge and Cultural Expressions Act, No. 33 of 2016. The date of commencement of the Act is 21 September 2016, which means the Act is now in force. A copy of the Act is available here.

In previous blogposts here, we have tracked the development of this law aimed at creating an appropriate sui-generis mechanism for the protection of traditional knowledge (TK) and cultural expressions (CEs) which gives effect to Articles 11, 40 and 69(1) (c) of the Constitution. This blogpost provides an overview of the Act with special focus on the issues of concern raised previously with regard to the earlier Bill.

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Comments on the Protection of Traditional Knowledge and Traditional Cultural Expressions Bill, 2015

Call for Submission of Memoranda - National Assembly - TK Bill 2015 Kenya

This blogger has learnt that the Protection of Traditional Knowledge and Traditional Cultural Expressions Bill, 2015 has undergone Second Reading at the National Assembly as it nears enactment as a law in Kenya.

Other than the detailed commentary sent out last month by Prof. John Harrington and Dr. Lotte Hughes on the Bill, there has been no other substantive reactions or comments on the Bill excluding this recent piece on an earlier draft of the Bill.

A copy of the Bill tabled in Parliament is available here.

The commentary and response by Harrington and Hughes on the Bill reads in part:

“…the bill freely mixes ideas from conventional IP protection, sui generis regimes for TK and TCEs and the 2003 UNESCO Convention on the Safeguarding of the Intangible Heritage without trying to harmonise them or limit problematic consequences from the different approaches taken. The resulting system of protection may have some unintended consequences.”

What follows are some of this blogger’s thoughts on the Bill including some of the same issues raised by Harrington and Hughes.

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A Kenyan Perspective of South Africa’s Draft National Policy on Intellectual Property

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As many IP enthusiasts may have heard, South Africa has recently published a Draft National Policy on Intellectual Property (IP) (hereafter the Policy). Within the Kenyan context, this blogger has previously questioned the need for a national IP policy particularly in light of the recognition given to IP in the Constitution. However, for the purposes of this post, the policy provides a good basis for a comparative analysis of the state of IP in both South Africa and Kenya as well as possible recommendations to strengthen IP laws.

In the area of patents, Kenya’s IP office undertakes both formal and substantive examinations of patent applications whereas in South Africa, the Policy recommends the establishment of a substantive of a substantive search and examination of patents to address issue of “weak” vs “strong” patents. The policy’s recommendation to amend South African patent law to include pre-and post-opposition would also be instructive to Kenya.

Read the rest of this article here.

QOTD: Do You Own the Rights to Artistic Works Purchased at the Maasai Market?

 

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The “Maasai market” (not represented here) is an open-air market where shoppers can find curios, paintings, drawings, clothes and fabrics with Kenyan prints, jewellery and wood-carvings, hand-made by local artisans. The venue for the Maasai Market rotates between different shopping centres and other locations within Nairobi. For tourists and locals alike, the prices at Maasai Market are very negotiable subject to one’s bargaining prowess and ability to haggle down to the last cent. No receipts are issued for purchases made at the Maasai Market nor should a purchaser expect any warranties or guarantees on items sold at the Maasai Market.

This leads us to our question of the day (QOTD) which is:

If someone buys a painting from an art gallery the Maasai market, do they simultaneously buy the copyright and all rights under that copyright? Can the artist subsequently make copies or postcards of the painting that he/she sold? Can the buyer make postcards of the painting and sell them?

From the explanations above, it is clear that all works sold at Maasai market are subject to copyright protection mainly under the category of artistic works. Further, it must be assumed that these artistic works are sold either by the authors themselves, authorised agents or representatives of the authors.

One possible answer to the QOTD would be in the affirmative on condition that the purchaser waits fifty years after the end of the year in which the author of the artistic work dies. In the event that the identity of the author is unknown (which may be the case with Maasai market works), the purchaser would have to wait 50 years from the end of the year in which the artistic work was first created/published.

However, this blogger submits that there is a better answer to the QOTD. In the context of a Maasai market purchase, it appears that that there is no clear assignment of copyright and exclusive license to carry out any of acts controlled by copyright, including reproduction, adaptation and making of derivative works i.e. post cards. This is because section 33(3) of the Copyright Act provides that such assignment of copyright and exclusive license must be in writing signed by or on behalf of the assignor or licensor of the Maasai market work, as the case may be.

Nonetheless, this blogger argues that the purchaser of a Maasai market work enjoys a non-exclusive license to do any act the doing of which is controlled by copyright. According to section 33(4) of the Act, this non-exclusive license need not be in writing and may be oral or inferred from conduct. The Act however provides that such non-exclusive license may be revocable at any time unless granted by contract.

Therefore, for any IP lawyer, the solution to the uncertainty in ownership of rights to Maasai market works may be resolved by simply having something in writing along the lines of:

“I,……the Author hereby irrevocably assigns, conveys and otherwise transfers to…… the Assignee, and its respective successors, licensees, and assigns, worldwide, all right, title and interest in and to the works, and all proprietary rights therein, including, without limitation, all copyrights, trademarks, patents, design rights, trade secret rights, economic rights, and all contract and licensing rights, and all claims and causes of action with respect to any of the foregoing, whether now known, or hereafter to become known.”

This may be food for thought next time you’re strolling past the Maasai market and something catches your eye.

Benefit Sharing Deal for San & Khoi Communities Should Inspire the Maasai

Tom Lalampaa and Prince William

The Atlantic published an article titled: “The Maasai People Take Back Their Brand” in which it highlights the efforts of UK-based non-profit Light Years IP in helping the Maasai “trademark its customs and name and claim a share of profits” made from the use of its name by European companies such as Land Rover and Louis Vuitton. Readers of this blog will no doubt confirm that this misleading article by the Atlantic appears to have gone viral and has been widely shared, re-posted, tweeted and retweeted. (See previous stories on the “Maasai brand” by the Guardian and BBC.)

While the Atlantic article continued to flood the internet, the news24 network in South Africa issued a press release announcing that a benefit-sharing agreement was signed between Cape Kingdom Nutraceuticals, the South African San Council (SASC) and the National Khoisan Council (NKC). Michael Stander, Managing Director of Cape Kingdom Nutraceuticals – a Cape Town-based company that acquires and processes the buchu plant in South Africa – is quoted as having said that:

Read the rest of this article here.

Draft Bill Ready For Comments: The Protection of Traditional Knowledge and Traditional Cultural Expressions Bill 2013

kenya tk bill 2013

This month was the unveiling of the Protection of Traditional Knowledge (TK) and Traditional Cultural Expressions (TCEs) Bill, 2013.

The draft Bill is available for download here.

This Bill was adopted by the participants at the National Validation Stakeholders Seminar and the Inter-Ministerial Committee responsible for drafting this Bill are now inviting comments and contributions from stakeholders and members of the public. Please send your comments to the Kenya Copyright Board (KECOBO) at kenyacopyright@gmail.com on or before August 21,2013.

This blogger has looked through the draft Bill and will now make comments on the provisions sequentially.

Title of the Act

The word “protection” conjures up notions of protectionism and conservatism whereby Kenya seeks to jealously guard its TK, whereas it forms part of the common heritage of humanity. The word protection must go hand in hand with words like “promotion” especially in the context of TK and TCEs, since Kenya hopes that its communities will benefit from the exploitation of TK and TCEs by all.

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This legislation only gives effect to Article 11 of the Constitution and not Article 40(5). This position is reaffirmed by the Fifth Schedule of the Constitution which provides a time specification of five years from the promulgation date for the legislation in respect to Article 11(3) to be enacted by Parliament.

Definitions

Fundamentally, the definitions of TK and TCEs must be revisited. These definitions refer to both intangible and tangible TK & TCEs objects as protected subject matter.

The definition of appropriate authority appears to have been copy-pasted from an international instrument because of the use of the terms “authorised by the State” and “party to this Act”. It is proposed that the appropriate authority be defined any body or agency created under the Act.

It is proposed that the term “Act” be defined to include the Act itself and any regulations issued by the Cabinet Secretary under it from time to time.

It is noted that the Bill does not provide definitions for “owner”, “holder” which are used interchangeably throughout the Bill. The definition of “beneficiary” is also missing.

It is proposed that the terms: traditional knowledge rights and rights in traditional cultural expressions be defined in respect to the subject matter of protection namely, TK and TCEs respectively.

It is proposed that the term “holder” be included and defined as holder of traditional knowledge rights and rights in traditional cultural expressions. Further, the definition of “owner” would be the communuty representative or proxy delegated by the community to hold the latter’s rights in TK and TCEs. The definition of community could thus remain unchanged

The terms artistic works, cultural creativity, intangible cultural heritage, traditional cultural rights are all superflous and it is proposed that they are deleted.

National Competent Authority

This name totally lacks a descriptive character. The name becomes even more problematic because the national competent authority in the Bill is defined as the Kenya Copyright Board (KECOBO) – whose name is even further removed from the theme of TK and TCEs. It follows that a descriptive name like the National Commission for (Protection of) TK and TCEs would be more fitting.

More fundamentally, issues may be raised about whether KECOBO is fit to be the national competent authority under this Bill. As we know KECOBO is created under the Copyright Act of 2001 and therefore it is not advisable for it to have statutory functions and mandates emanating from a different piece of legislation.

The Bill also creates the National Cultural Agency which is considered to be the implementer of the Bill. However questions may be raised over the need to have two separate government bodies carrying out more or less the same functions under the Bill.

Protection

Section 5 provides the conditions for protection of TK. However this section simply describes the various recognised origins of the protected TK but it fails to provide how TK is to be protected, especially where it is in an intangible or inchoate form.

Formalities

This section states that protection of TK shall not be subject to any formality. However subsections a) and b) appear to appoint KECOBO as “the Registrar of TK”, as it were by providing for registers and records of TK to be maintained and administered by KECOBO. There is therefore need to rethink this section.

More fundamentally, there is need to rethink the position that protection of TK shall not be subject to any formalities. Given the nature of TK, certain formalities may be necessary in order to clearly identify the traditional rights holders while notifying the rest of the world that the TK is both “owned” and “protected”.

Rights conferred to holders of TK

The Bill proposes that rights conferred to TK owners shall depend on whether the TK is a product or a process. For most, this typology appears to have been borrowed from section 54 of Industrial Property Act, 2001. There is need to revisit this provision given that the problematic definition of TK provided by the Bill which includes both tangible and intangible subject-matter.

Traditional Cultural Expressions

This Part VI lists a number of uses of TK or TCEs that would require the prior and informed consent on the traditional owners. However, the sticking point for some remains the issue of tangible vs intangible subject matter. For instance the Bill’s first restriction states “to reproduce the TK or TCEs”. One wonders whether how reproduction of an intangible subject-matter can be proved.

Exceptions and Limitations

This section borrows heavily from the ‘fair dealing’ provisions in section 26 of the Copyright Act, 2001. However this appears to be a closed list that excludes several other important exceptions including public interest. Ideally this list should be general in nature and allow for other exceptions that may arise from time to time.

Moral Rights

Under copyright law, moral rights protect an author’s non-economic interests. In the context of TK and TCEs, moral rights appear to be able to meet some of the needs of holders of TK and TCEs. However the rights to paternity, attribution and integrity all depart from the premise that the subject matter under protection is tangible!

Duration of Protection

This section creates an important distinction between situations where the duration of protection is indefinite and where it is time-bound. However there is a flaw in the criteria for the distinction. The first section seems to relate to collectively owned TK however the protection criteria under section 5 refers to both individually or collectively held TK under 5(2)(d).

In conclusion, this blogger applauds the Inter-Ministerial Committee for coming up with this draft Bill. However, there are some fundamental flaws in the document that must be addressed in order to ensure consistency and practicability. It is contended that intangible TK and TCEs must be protected retrospectively once they are reduced to a material form by or on behalf of the originating traditional community on condition that the latter is recognised by the State as the originating community. The definitional issues in the draft bill would be dealt with once the subject matter of protection for TK and TCEs is both tangibly identifiable and the rights flowing from this protected subject-matter is clearly delineated.

The Bill also fails to recognise the new system of devolution which many have argued would be an important catalyst in Kenya’s efforts to identify, promote and protect TK and TCEs throughout the 47 Counties.