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Promulgating Traditional Knowledge Sensitive IPR Legislation In Papua New Guinea And Related Developments In Pacific Island Countries: A Reflection On The Past Three Years Volume 27 Article [2000] MLJ 6; [2000] 27 MLJ 100 (1 January 2000)

Promulgating Traditional Knowledge Sensitive IPR legislation in Papua New Guinea and Related Developments in Pacific Island Countries: A Reflection on the Past Three Years

Lawrence Kalinoe^[1]

Abstract

This paper describes the process and the dovetailing of various interests in the promulgation of traditional knowledge sensitive IPR legislation in Papua New Guinea leading up to the Copyright and Neighbouring Rights Act 2000 and the Patents and Industrial Designs Act 2000. A brief commentary on the relevant provisions of these legislation, particularly concerning traditional knowledge is also made.
In the other part of the paper, I discuss the efforts of the Pacific Island countries (PICs) in attempting to put together a model law on traditional knowledge, mainly to ensure uniformity and reciprocity, and furthermore to address regionally based matters of traditional knowledge of common concern amongst PICs.

Introduction

Papua New Guinea became a member of the World Intellectual Property Organisation, (WIPO) in 1997 (soon after it acceded to TRIP). WIPO has therefore had a considerable influence in the shaping of Copyright and Neighbouring Rights Act 2000 and the Patents and Industrial Designs Act 2000 legislation in Papua New Guinea. For example, in June 26, 1998, WIPO sent its first fact finding mission and it was at this meeting that Papua New Guinea requested “WIPO’s assistance in drafting appropriate legislation concerning traditional knowledge and access to genetic resources, as part of the country’s ... legislative program to implement the TRIPS Agreement”.^[2] This was then followed by a WIPO sponsored conference on intellectual property, including traditional knowledge and expressions of culture. This conference was held in Port Moresby in November 1998 and it considered, amongst other things, approaches to regulating the access of expressions of culture (then referred to as expressions of folklore). In this connexion, the Model Provisions for National Laws on the Protection of Expressions of Folklore Against Illicit Exploitation And Other Prejudicial Actions 1985 was considered as an option to incorporate into any copyright legislation that the country was contemplating. This point is pursued later on when I discuss the Copyright and Neighbouring Rights Act 2000. It appears that at the regional level, the Model Provisions were not aggressively pursued whereas several PICs such as Samoa and Fiji did actually take the same path that PNG was preparing itself to walk down.

This paper is divided into two main parts: Part I looks at the path that Papua New Guinea took to arrive at its current copyright, patent and industrial design legislation and Part II looks at the path that PICs are preparing to walk together, in developing a model law on expressions of culture and traditional knowledge.

Part 1

Let me begin this part by setting out the background. Prior to the promulgation of the current copyrights, patents and industrial designs in 2000, Papua New Guinea had one functioning intellectual property legislation: the Trade Marks Act Chapter 385. The Copyright Act of 1978 was not operational. The Investment Promotion Authority of the Department of Trade and Industry administered the legislation through the office of the Registrar of Trade Marks. When PNG became a member of WIPO and was beginning the process towards the promulgation of the new copyright and patents and industrial designs legislation, through the Office of the Registrar of Trade Marks, the National Intellectual Property Rights Committee (NIPRC) was then established for the task of bringing together all the various stakeholders in all aspects/areas of intellectual property. The NIPRC was intended to play a pivitol role in the promulgation of the new intellectual property legislation. What made the NIPRC interesting was its composition and the diverse interests represented on it: ranging from governmental to non-governmental; and within the governmental sector, from government departments and statutory organizations such as those responsible for foreign affairs, trade, culture and the Attorney-General. Conservation Melanesia, an NGO working in the area of conservation of bio diversity, was a strong voice for the NGOs in the NIPRC. The National Cultural Commission through its Executive Director Dr Jacob Simet, had and continue to have a visible presence, in the NIPRC particularly in the area of copyrights and neighbouring rights.

In hindsight, and particularly speaking as an independent member of the NIPRC, it is fair to say that the NIPRC did not have a meaningful opportunity to comment on the draft legislation which were eventually enacted. If there was meaning opportunity, for example the NGO lobby in the conservation and bio diversity sector would have wanted to see in both of the new 2000 legislation clauses on access and benefit sharing arrangements. If there was meaning consultation, perhaps the National Cultural Commission would have liked to see a specific and increased role in the area of protection of expressions of culture. Personally, if there was meaning consultation, I would have proposed certain variations which I deal with later on in the paper.

As of November 2001, the IPO PNG (Intellectual Property Office (PNG)) has been physically established and it now exists as an office on its own, with Mr Gai Araga, the former Registrar of Trademarks, as the Registrar of trademarks and patents and industrial designs. As of November 29, 2001 the NIPRC has been told that IPO PNG does not have the capacity to administer the Copyrights and Neighbouring Rights Act 2000 and was therefore looking to off load that to another government institution to administer that legislation. The Department of Attorney-General and the National Cultural Commission have been mentioned as the possible institutions to administer the copyrights legislation.

The future of the NIPRC is now in the balance. There is some thinking that since the necessary IPR legislation have been delivered, the NIPRC does not have any continuing role. Others hold the view that the NIPRC should be worked into the operational structure of the IPO PNG to act as an overarching policy formulation and co-ordination body. It is however clear that there is no statutory basis for the NIPRC to continue to exist – in the current set of IP legislation.

Commentary on the legislation

I wish to briefly comment on the two new legislation enacted in 2002, particularly to consider their implications for expressions of culture and traditional knowledge. I begin with the Copyrights and Neighbouring Rights Act 2000.

Copyrights and Neighbouring Rights Act 2000

There are five parts to this legislation. Part I deals with preliminary matters, mainly definitions of terms and phrases for purposes of the Act. Part II deals with copyrights whilst performers rights are dealt with under Part III as neighbouring rights. Various enforcement measures both civil and criminal are set out under Part IV of the Act. Part V provides a protection mechanism for “expressions of folklore”. Part VI is headed “miscellaneous” and it deals with matters such as the scope of application of international treaties.

In the remaining time, I take up two matters only: protection of expression of folklore and application of international treaties.

Protection of Expressions of Folklore

Rather then using the more current language and phrase such as traditional knowledge or expressions of culture, the Act use the rather old phrase “expression of folklore”.

The phrase, “expression of folklore” is defined for purposes of the Act, under Section 2 to mean and comprise:

“... a group-oriented and tradition based creations of groups or individuals reflecting the expectations of the community as an adequate expression of its cultural and social identity, its standards and values as transmitted orally, by imitation or by other means, including –

(a) folktales, folk poetry and folk riddles; and
(b) folk songs and instrumental folk music; and
(c) folk dances and folk plays; and
(d) production of folk arts in particular drawings, paintings, carvings, sculptures, pottery, terra lotta, mosaic, woodwork, metal ware, jewellery, handicrafts, costumes and indigenous textiles.”

Whilst this definition is certainly comprehensive and that is to be welcomed, there is however no distinction made between secret/sacred material/expressions of folklore and those which are not. This is a cause for concern for general protection purpose and for allowing access, including the current forms of transaction and transmission of various and different classes of expressions of folklore either between generations or between neighbouring communities. A distinction must be made between secret/sacred expressions of folklore and those which are not so in order that appropriate levels of protection can be instituted: perhaps absolute protection for those secret/sacred material and a lesser level of protection for those which do not fall under that category. As it is, Section 30 of the Act provides the same level of general protection. The need to have differing levels of protection becomes more pressing when we consider “derivative work” later. Section 30 of the Copyright and Neighbouring Rights Act 2000 thus stipulates:

“(1) Expressions of folklore are protected against –

(a) reproduction; and
(b) communication to the public by performance, broadcasting, distribution by cable or by other means; and
(c) adaptation, translation and other transformation when such uses are made either for commercial purposes or outside their traditional or customary context.

(2) Subsection (1) shall not apply where acts referred to therein related to –

(a) the use by a person exclusively for his own personal purposes; and
(b) using short excerpts for reporting current events to the extent justified by the purpose of providing current information; and
(c) the use solely for the purposes of face-to-face teaching or for scientific research”.

Section 30(4) of the Act proposes to establish a “competent authority” for purposes of giving “authorization” and imposing “terms and conditions of such authorization”. For any person who wish to reproduce, perform, broadcast, distribute, adapt, translate or transform expressions of folklore as protected under Section 30(1) authorization will have to be obtained from that competent authority. Section 30(5) of the Act implies that fees will be imposed for issuing authorization and that monies collected “shall be used for purposes of cultural development or as determined by the competent authority and as approved by the relevant Minister responsible for the administration of the Act.”

There is some concern, albeit legitimate, that, ordinary indigenous Papua New Guineans whose expressions of folklore are “authorized” to be used, may not take kindly to the current arrangement under Section 30(5) of the Act. This is apparent from the current attitude of indigenous Papua New Guineans in matters relating to compensation and royalties for natural resources exploitation. In view of this, a new distribution mechanism for any monies collected by the “competent authority” has to be worked out by immediately amending Section 30(5) of the Act. Such a distribution mechanism must involve indigenous communities whose traditional knowledge or expressions of culture are being exploited.

Derivative Works

For purposes of the Act, “derivative works” are defined under Section 2 and Section 4(1)(b) of the Act. Section 4(1)(b) in particular identifies “derivative works” to include:

“(i) translations, adaptations, arrangements and other transformations or modifications of works; and

(ii) collections of works and databases, whether in machines, readable or other forms; and
(iii) collections of expressions of folklore provided that such collections are original by reason of the selection or arrangement of their contents.”

Clearly Section 4(1)(b)(iv) must be a cause for concern for many reasons including the following. First that this clause represents the greatest danger for the wholesome protection and preservation of traditional culture. Second, that this clause allows for expressions of folklore to be mutilated and debased. Third, this clause, allows just about anyone to use with impunity another cultural groups expressions of folklore just by mere selection or arrangement of their contents. And fourth, it severely restricts/curtails the protection clauses of Section 30 of the Act.

A solution to this problem is for the Act to distinguish between “secret/sacred” expressions of folklore/traditional knowledge and those which are not and then give absolute protection to the former, including the non-applicability of Section 4(1)(b)(iv) of the Act to that class of expressions of folklore/traditional knowledge. This is necessary to protect the integrity of that body of material so that it can continue to play its role in our indigenous communities.

Infringement of Folklore

Section 31 of the Act addresses this by making it an offence for a person to obtain, without consent, “expression of folklore”, not of the indigenous peoples who collectively own the expressions of folklore, but the “competent authority” earlier referred to. Interestingly enough, there is no criminal penalty for this offence. Instead, the guilty person is “liable to the competent authority for damages, injunctions and any other remedies as the Court may deem fit.”

There is concern that this existing provision (s. 31) does not offer much deterrence to would be offenders. Deterrence should form the primary enforcement bases because damages paid in money (to the competent authority !) may not sufficiently compensate for the damage done (mutilation and debasement) to the expression of folklore/traditional knowledge.

Section 31 should be amended to include a provision imposing a heavy fine (up to K500,000.00).

The provisions reviewed thus far above, have very strong resemblence to those found in the Model Provisions for National Laws on the Protection of Expressions of Folklore Against Illicit Exploitation And Other Prejudicial Action 1985. As I foreshadowed, this reflects the level of influence that WIPO has had in the events leading up to the enactment of the legislation in 2000.

Application of International Treaties

Section 32 of the Act addresses this. It says:

“The provisions of any international treaty in respect of copyright and related rights to which Papua New Guinea is a party shall apply to matters dealt with under this Act and, in case of any conflict with a provision of this, the treaty shall prevail to the extent to any inconsistently.”

This provision undoubtedly subjects the Act to PNG’s international law obligations, such as TRIPS and WIPO, and I submit the CBD, particularly in areas in which the Act purports to deal with traditional knowledge systems. This then poses an interesting question: in the event of conflict between TRIPS and WIPO on the one hand, and CBD on the other, who should decide as to which prevails over the other? In my view, this should really be a matter for PNG or individual nation states to decide.

Whilst Papua New Guinea has to date, taken steps to implement its international law obligations under the WTO and TRIPS, it has not taken any steps to do likewise for its international law obligations under the CBD. The CBD has of course come into force. By the operation of Article 8(j) of the CBD, Papua New Guinea as a contracting state, has an obligation to “respect, preserve and maintain knowledge ... and practices of indigenous and local communities ... for conservation and sustainable use of biological diversity ...”.

Patents and Industrial Designs Act 2000

The general aim of this legislation, as set out in the preamble to the Act is to “make provision for the protection of industrial property rights, namely patents, industrial designs and geographical indications and for related purposes.” There are six parts to the Act: Part I deals with preliminary matters; Part II sets out the administrative arrangements, mainly by establishing the Office of the Registrar and vesting certain powers and functions on him/her; Part III deals with patents; Part IV deals with industrial designs; Part V takes up miscellaneous matters and Part VI makes provision for the subsequent promulgation of Regulations to the Act and for fees. As it is, there is no clause in the Act that deals with geographical indications although it is mentioned in the preamble to be one of the purposes of the Act.

Are there any provisions in the Act that deal with traditional knowledge, setting out access arrangements and protection to that body of material? No. There aren’t. The only provision of some interest from this standpoint, is Section 13 of the Act particularly where it says that an invention would not pass the test of “novelty” where it can be shown that such an invention is anticipated by “prior art”. Sub-section (2) of Section 13 then goes onto explain “prior art” thus:

“For purposes of this section, prior art shall consist of everything disclosed to the public, anywhere in the world, by –

(a) tangible form; or
(b) oral disclosure; or
(c) use; or
(d) any other way,

prior to the filing, or, where appropriate, the priority date of the application claiming the invention”.

This provision offers some protection to traditional knowledge in the sense that an invention based on the use of traditional knowledge may not be new but does exist as prior art and therefore cannot be patented.

At this juncture, it may be useful to note the approach that Vanuatu is taking in their draft Patents and Designs legislation. In their draft legislation, their National Cultural Council and their National Council of Chiefs are given roles to play, essentially as clearing/vetting agencies, concerning application based on or derived from traditional knowledge. Either of these agencies are authorised to institute civil proceedings on behalf of indigenous people whose traditional knowledge have been illegally exploited.

Under the Vanuatu draft legislation, patent applications involving traditional knowledge must also include an agreement between the applicant and the traditional/customary owners, setting out, inter alia, benefit sharing arrangements. It is my respectful submission that such a clause is necessary and therefore must be instituted into the Papua New Guinea Patents and Industrial Designs Act 2000. I further venture outside context to suggest that perhaps a benefit sharing agreement must also be considered for copyright arising out of expressions of culture/folklore under Papua New Guinea’s Copyrights and Neighbouring Rights Act 2000.

PART II: THE MODEL LAW: MODEL LAW FOR THE PROTECTION OF TRADITIONAL KNOWLEDGE AND EXPRESSIONS OF CULTURE OF THE PACIFIC.

The Secretariat of the Pacific Community (SPC), Forum Secretariat and UNESCO, organised, the Symposium on the Protection of Traditional Knowledge and Expressions of Culture in Pacific Islands at the SPC Secretariat in Noumea, New Caledonia from 15 – 19 February 1999. Amongst other things, the 1999 Symposium resolved for measures to be taken or assistance to be given to all Pacific Island Countries (PIC) to promulgate national laws for the uniform protection of traditional knowledge and the expressions of culture. In other words, the rationale was for the PICs to take a regional approach to address the concerns in the region, particularly concerns over exploitation of traditional knowledge and expressions of culture for commercial gains by others without authorization or for nothing: free of charge.

Consequently, Professor Kamal Puri and Mr Clark Peturu were engaged by the South Pacific Community as consultants to draw up draft model law for the regulation and protection of traditional knowledge and expressions of culture. The Secretariat of the Pacific Community then convened a workshop for Legal Experts on the Protection of Traditional Knowledge and Expressions of Culture, from 26 – 28 February, 2001. The workshop was ably chaired by Dr Ian Heath, Director General of IP Australia. It was at this workshop that the consultants presented, for discussion, and perhaps endorsement, the draft Model Laws For the Protection of Traditional Knowledge and Expressions of Culture of the Pacific. The draft Model Laws began by declaring that it represented an attempt to provide a “sui generis” system to protect traditional knowledge and expressions of culture of Pacific Islanders.” It had, 13 parts, as follows:

• Part I, being the general part, addressing matters such as commencement, application and definitions;
• Part II – is what I refer to as the conceptual part, where it under the heading "Rights of Traditional Owners", addresses matters such as concepts of collective ownership and declares at clause 7 that, these rights were additional to copyrights and sets out types of uses which may give rise to an actionable claim. The process of identification of traditional owners is also address it here at Clause 9.
• Part III – proposes to set up an administrative structure at a regional level with a Pacific Intellectual & Cultural Property Organisation (PICPO) as the central agency to oversee intellectual and cultural property issues at the regional level;
• Part IV proposes to establish a central registry;
• Part V proposes to establish a clearing house at the regional level;
• Part VI proposes to set up an alternative dispute resolution mechanism through a Dispute Resolution Tribunal;
• Part VII – deals with the conceptual issue of moral rights of traditional owners;
• Part VIII – sets out instances of contravention of traditional owners rights;
• Part IX deals with remedies for contravention of traditional owners rights;
• Part X sets out offences;
• Part XI sets out defences;
• Part XII proposes mechanisms for amendments to national legislation so that they come in conformity with the draft model law, and finally
• Part XIII deals with miscellaneous matters such as questions of jurisdiction, reporting responsibilities, savings of other rights and remedies and international protection.

Papua New Guinea’s view was that the Model Laws should be proposed as Model Laws only, proposed for individual nation states to adopt/adapt with the aim of achieving uniformity in approach and where possible, for reciprocal arrangements between nation states of the Pacific islands.

After two days of working through the workability and the various practical application scenarios of the Model Law, the workshop resolved as follows:

1. that the draft regional guidelines and draft model law provided a good basis for the protection of traditional knowledge and cultural expressions for the Pacific islands;
2. that further work incorporating suggested amendments to the draft regional guidelines and model law agreed to during the workshop be incorporated into the draft guidelines and model law for finalisation;
3. that the final draft regional guidelines and model law be circulated to all members for comments which be submitted to SPC by 31 April 2001. The final draft regional guidelines and model law will be submitted to the June 2001 Forum Trade Ministers and Economic Ministers Meeting with a recommendation that they be adopted and enacted as soon as possible. The regional guidelines and model will be also submitted to the 2001 SPC Conference for endorsement.
4. that there is a role for an existing regional body to promote the model, provide assistance to countries in the region to adapt the model law, assist the countries in the region to further develop their intellectual property laws consistent with the model law and other international norms, provide assistance with training, education, and awareness raising on the protection of traditional knowledge and expressions of culture. It was recommended that SPC take on this role with the assistance of the Forum Secretariat and UNESCO as appropriate.

The following are two main areas which Papua New Guinea was pushing for:

(a) for the Model Law to make a distinction between “secret-sacred” material on the one hand, and “non-secret/sacred” on the other and then offer differing levels of protection: absolute protection for “secret/sacred” material and limited protection to “non-secret/sacred” material; and
(b) following form (a), that derivative works must not be permitted from “secret/sacred material” but can be permitted/allowed from “non-secret/sacred” material.

Nevertheless, the workshop concluded with the following general outcome:

1. The model law is for each Pacific Island country to adapt and enact as domestic law.
2. The model should not create a regional body with powers to regulate or adjudicate on any rights or disputes under the model law.

100. The model law should include a clause that provides for reciprocal recognition of the rights granted in other Pacific Island jurisdictions under the provisions of the model law.

4. The model law must recognise cultural sensitivities and differences between Pacific Island countries and accommodate these sensitivities and differences in the way it is worded.
5. There are circumstances when an individual can be the sole custodian of a communal or collective right, and the model law must reflect this principle.
6. The model law should spell out clearly that traditional knowledge and expressions of culture are inalienable.

Intellectual Property, Genetic Resources and Traditional Knowledge

The Model Law as discussed above has a focus on traditional knowledge associated with the expressions of culture rather than traditional knowledge associated with plants, animals and microbial genetic resources as understood within the terms and usage of the Convention on Biological Diversity (CBD). Papua New Guinea in particular, as a party to the CBD has an obligation, under Article 8(j) to ensure the preservation of its indigenous people traditional biological traditional knowledge bases or systems. The same applies to those nation states who are parties to the CBD, including those Pacific Island countries. The above concerns have now resulted in subsequent work to be done in the area of genetic resources and traditional knowledge ownership systems, mainly to regulate bio prospecting. Clark Peteru, a Samoan lawyer, has been engaged by the Pacific Forum to draw up a draft model law on intellectual property and genetic resources, to inter alia, regulate bio prospecting as required by Article 15 of the CBD. In a WIPO organized Sub-regional Workshop on Intellectual Property, Genetic Resources and Traditional Knowledge, in Brisbane from June 25-27, 2001, Peteru outlined the primary focus of the draft model laws he was working on to include the establishment of a workable structure and process, that will determine access and benefit sharing mechanisms, to:

1. regulate the utilization of genetic resources and associated traditional knowledge;
2. ensure that the benefits derived from utilizing genetic resources and associated traditional knowledge are equitability shared, particularly in instances where communities are involved;

100. develop domestic research capacity/capability;

4. achieve economic and social development; and at the same time,
5. conserve genetic diversity.

It was foreshadowed that this draft model law will also have provisions to facilitate regional co-operation, especially in area of common genetic resource material, such as the kava which occur in a number of PICs and for the establishment of a regional database to ensure efficiency and perhaps counter the possible occurance of “island-shopping” by bio prospectors.

Conclusion

Undoubtedly Papua New Guinea has made significant progress in promulgating comprehensive IPR legislation as required of it under its WTO and TRIPS obligations. These legislation, as we have seen have provisions which provide for the regulation of traditional knowledge or expressions of traditional culture, as in the case of Papua New Guinea and Vanuatu. If we are going to give strong protection to our expression of traditional culture, particularly those which fall under the secret/sacred category, then we must make a distinction between this category, and those which fall outside this category, and then give different level of protection.

The model laws which are now being proposed for the PICs to adopt, both in the area of expression of culture and biological traditional knowledge, in fact take a more informed and current approach, particularly in the areas of negotiating access arrangement with indigenous communities, and in benefit sharing. These should now be worked into the various PIC’s intellectual property legislation. In the case of Papua New Guinea, the relevant and necessary amendments as proposed in this paper should be worked into our Copyrights and Neighbouring Rights Act 2000 and the Patents and Industrial Designs Act 2000.

^[1] School of Law, University of Papua New Guinea, PO Box 317, University Post Office, National Capital District, Papua New Guinea, Ph. 675 3267 481, Fax. 675 3267 676, Email. lawrence.kalinoe@upng.ac.pg, law.school@upng.ac.pg. This paper was not given at the November 2000 Conference but was prepared for and read at another Property Transactions and Creations (PTC) Conference at Corpus Christi College, Cambridge, December 2001. The editors have taken a decision to include this paper in this volume since it rounds up the developments in this subject area of concern, both in Papua New Guinea and in the Pacific Island Countries.

^[2] WIPO 2001 Intellectual Property Needs and Expectations of Traditional Knowledge Holders (WIPO Report on Fact-finding Missions on Intellectual Property and Traditional Knowledge 1998-1999) Geneva: WIPO p. 256.