Cricket South Africa recently announced a new apparel and merchandise sponsorship deal with Castore, a company based in Manchester, England. With the announcement, came the unveiling of a new kit to be worn by the Proteas men’s team at the ICC T20 Cricket World Cup in the UAE. This new kit, cut from the best (sports technical) cloth, incorporates what Castore calls a ‘striking geometric pattern’. The pattern, striking as it is, very well looks like it is a design inspired by drawings or patterns generally found in cultural pieces from indigenous communities in South Africa. The new kit made me revisit the question on the protection that is afforded to traditional knowledge and cultural expressions in South Africa.
WIPO, and most international countries, have made a push to develop and afford protection for indigenous communities’ traditional knowledge and traditional cultural expressions which protection is equivalent to the protection afforded to conventional forms of intellectual property. Traditional knowledge is said to be a living body of knowledge that is developed, sustained, and passed on from generation to generation within a community and this knowledge is considered to form part of the community’s cultural identity. It is possible that some of the knowledge may have been passed on over years and it is considered to have a continuous ‘living nature’. As such, it is not easily defined, recognised, or protected.
WIPO identified three distinct fields or species of traditional knowledge:
- Traditional knowledge in the strict sense (know-how; skills; innovations related to biodiversity, agriculture, or health).
- Traditional cultural expressions / expressions of folklore (cultural manifestations such as music, art, designs, symbols, and public performances).
- Genetic resources (genetic material of actual or potential value in plants, animals, and micro-organisms).
South Africa’s solution to bolstering our intellectual property laws in its aim to recognise and protect traditional knowledge was the drafting of the Intellectual Property Law Amendment Act (IPLAA). This Act aims to provide recognition and protection for indigenous knowledge as a species of intellectual property rights by amending the current IP legislation to insert provisions which specifically creates protection for the species of traditional knowledge. IPLAA is however not yet in force, and it remains doubtful whether it will be put into effect considering the criticism it has received for not being compatible with the fundamental aspects of intellectual property laws and without derogating further, for being poorly drafted.
An indigenous community is defined in the IPLAA as any recognisable community of people originate in or historically settled in a geographic are or areas located within the borders of the Republic, existing at the date of commencement of the IPLAA, characterised by social, cultural and economic conditions which distinguish them from other sections of the national community, and who identify themselves and are recognised by other groups as a distinctive collective.
Indigenous cultural expressions or knowledge in turn, is defined in the IPLAA as any form, tangible or intangible, or a combination thereof, in which traditional culture and knowledge are embodied, passed on between generations, and tangible or intangible forms of creativity of indigenous communities, such as amongst others; stories, epics, legends, poetry, riddles, songs, rhythms, instrumental music, the sounds which are the expression of rituals, dances, plays, ceremonies, rituals, expressions of spirituality or religion, sports, traditional games, puppet performances, other performances whether fixed or unfixed, handicrafts, architecture, tangible spiritual forms, and expressions of sacred places.
The discussion that follows will deal with traditional knowledge and the protection afforded, or the protection that would be afforded if the IPLAA was in force, to a “striking geometric pattern” that features on the apparel, manufactured by an international company, for a national sports team.
The provisions of IPLAA aims to protect traditional terms and expressions as certification or collective trade marks, provided that they are capable of distinguishing the goods or services of indigenous communities in respect of which they are registered from the goods or services of another community or person.
An indigenous term or expression is defined as a literary, artistic or musical term or expression with an indigenous or traditional origin and a traditional character, including indigenous cultural expressions or knowledge, which was created by persons who are, or were members, currently or historically, of an indigenous community and which is regarded as part of the heritage of the relevant community.
A derivative indigenous term is defined as any term or expression forming the subject of this Act, applied to any form of indigenous term or expression recognised by an indigenous community as having an indigenous or traditional origin, and a substantial part of which was derived from indigenous cultural expressions or knowledge irrespective of whether such derivative indigenous term or expression was derived before or after the commencement of the IPLAA.
In addition to the requirement that the mark must be capable of distinguishing, specifically in order to register a mark incorporating a derivative indigenous term or expression, the applicant must obtain prior informed consent from the relevant authority or indigenous community; a disclosure of the indigenous cultural expression or knowledge must be made to the CIPC; and a benefit sharing agreement must be concluded between the applicant and the relevant authority or indigenous community.
The provisions of IPLAA aims to protect a category of traditional works which are divided into indigenous works and derivative indigenous works. Indigenous works means a literary, artistic or musical work with an indigenous or traditional origin, including indigenous cultural expressions or knowledge, which was created by persons who are, or were members, currently or historically, of an indigenous community and which literary, artistic or musical work is regarded as part of the heritage of the relevant community.
The term derivative indigenous work means any work applied to any form of indigenous work recognised by an indigenous community as having an indigenous or traditional origin, and a substantial part of which was derived from indigenous cultural expressions or knowledge, irrespective of whether such derivative indigenous work was derived before or after the commencement of the IPLAA.
In terms of the amendments, resulting from IPLAA, the normal provisions of the Copyright Act will apply to traditional works insofar as they can be applied. The former is an example of one of the amendments brought by the IPLAA which merits criticism to its interpretation as it has the effect of implying that originality is not a requirement for the subsistence of copyright in a traditional work.
As copyright is by convention a non-registrable form of intellectual property rights, the IPLAA introduces a feature called community protocols in the provisions of the Act which mimics the requirement to obtain consent from the relevant authority or indigenous community for registration and to facilitate a benefit sharing agreement. Community protocols means a protocol developed by an indigenous community that describes the structure of the indigenous community and its claims to indigenous cultural expressions or knowledge and indigenous works, and provides procedures for prospective users of such indigenous cultural expressions or knowledge or indigenous works, to seek the community’s prior informed consent, negotiate mutually agreed terms and benefit sharing agreements.
In addition to offering protection for aesthetic and functional designs, the IPLAA aims to protect traditional designs which are divided into 2 sub-species of indigenous designs and derivative indigenous designs.
An indigenous design means an aesthetic or functional design with an indigenous or traditional origin and a traditional character and includes indigenous cultural expressions or knowledge which was created by persons who are, or were members, currently or historically, of an indigenous community and which design is regarded as part of the heritage of the relevant community.
It is important to note that there is no requirement for indigenous designs to be new, original or not commonplace in the art in question. On the other hand, derivative indigenous designs have to be new, in addition to incorporating features which are based on or derived from an indigenous design of an indigenous community. To this point, only an indigenous community may apply for the registration of an indigenous design whereas the author of a derivative indigenous design may apply for the registration of a derivative indigenous design.
With regards to a derivative indigenous design, in order to be eligible for registration, prior informed consent must be obtained from the relevant authority or indigenous community; use of the indigenous cultural expressions or knowledge must be disclosed to the Commission; and a benefit sharing agreement between the applicant and the relevant authority or indigenous community must be concluded. No design right will vest in a a derivative indigenous design if the above provisions have not been complied with. Furthermore, the owner of a derivative indigenous design must furthermore also pay a royalty, benefit, or both to the owner of the indigenous design from which the derivative indigenous design was derived.
Given that the IPLAA has not yet been implemented, Castore, from a South African perspective at least, most likely did not have to take into consideration the legal consequences of using a “striking geometric pattern” that may, or may not, resemble a traditional cultural expression of one of South Africa’s indigenous communities. Whilst we are unsure of whether the IPLAA will ever be in force in South Africa, the legislature or the governing authorities might as well in the meantime consider a suitable alternative to recognise and protect traditional knowledge. India offers an example for a great alternative, which is compiling a database of traditional knowledge originating from Indian indigenous communities which are shared internationally with IP offices to assist these offices in detecting prior art from a design and patent perspective at least.
Authors: Rogan Bruce and Marthinus Prinsloo