1 Intellectual Property Laws Amendment Bill – Parliamentary Legal Adviser’s Opinion Presentation to the Portfolio Committee on Trade and Industry – 1 June 2011 Adv Charmaine van der Merwe Constitutional and Legal Services Office, Parliament

2 Index 1. Constitutional Comments 2. Parliamentary oversight 3. General Comments * National Trust Fund * Model * Delegated Legislation (Collecting Societies) 4. Issues for clarity 5. Drafting comments

3 Constitutional Comments The Bill affects existing rights – Not retrospective, but Existing rights are now subject to a royalty / license fee We can assume the holder of the existing right can no longer, without the intervention of the entity to whom royalties / license fees are paid: hold full ownership of the existing right; sell, franchise, cede etc the right The Bill is of general application etc (S25 of the Constitution), however no provision is made for compensation.

4 Constitutional Comments (2) Amended S26(1A) : Regulations on collecting societies. “Collecting societies” : defined with reference to the Copyright Act which specifically provides for regulations on collecting societies. Regulations under the Copyright Act have already been issued. Duplication of an already delegated power.

5 Parliamentary oversight The national trust fund must use the moneys received for the benefit of the indigeous communities “in the prescribed manner”. A few possibilities: - A pool of funds: Equal shares or Dividends; - A pool of funds: Used solely to promote the traditional IP; - Funds managed separately in respect of each community’s traditional IP; - Each type of IP managed separately in terms of the three options above. If Parliament wish to provide guidance, it must be provided for in the Bill in respect of each Act that is being amended

6 General Comments: National Trust Fund Legal Status – Not a legal persona? It receives all royalties earned in terms of this amendment and as such will have to: Administer the funds; Monitor use of traditional IP; Commercialise and exploit traditional IP; Recover royalties if unpaid Administer the royalties received and use the moneys for the benefit of the indigeous communities.

7 General Comments: Model 1. Standardised system to deal with all traditional IP, but differs iro types of traditional IP: Copyright (applies automatically) vests in the Fund; Trade marks and designs, vest in the indigineous communities. 2. In respect of all types, royalties are paid to the fund, even by communities who are owners. 3. In respect of performer’s protection, the Council “functions as” a collecting society, but not on any of the other types of traditional IP. 4.In respect of copyright the registrar is approached to record copyright on the database. For trade marks and designs, this request is made to the Council (who will then have to relay the request to the registrar, who holds the database). 5. The Bill does not provide for dispute resolution between communities or institutions.

8 General Comments: Delegated Legislation Each Act as amended will indicate that “payments made in respect of traditional performances shall be paid into the fund and used for the benefit of the indigenous communities in the prescribed manner” Could result in four different sets of regulations / notices / guidelines - could cause conflict or disparity. Suggestion: “prescribed by regulations issued in terms of the Copyright Act” and provide for such regulations in the Copyright Act.

9 Issues of clarity Explanatory Memorandum 1.Funding for the National Council created by S40A and the Fund created by S40D are not addressed; Performers’ Protection Act, Amended S13A(1): the Council “shall function as a collecting society”. Is the Council subject to the Regulations on Collecting Societies?

10 Issues of clarity (2) Copyright Act, Amended S40A(10): The Council may be dissolved for being ineffective / inefficient / mismanaged. Subsection (9): a member of the Council to be removed for non performance, serious misconduct or conduct that undermines the integrity / objective of the Council. Does subsection (9) not provide the remedy for the complaint in (10)? 4. Should the Council not be a legal persona? Would the database and fund not fit better under the Council, especially if it is a legal persona? 5. Amended S40D: Management of funds not clear (What income – how flow back to communities. 6. Amended S40D: Should the fund not be allowed to invest moneys received?

11 Issues of clarity (3) Trade Marks Act, S16(4A)(b) : if geographical indications are registered, only the DG of Agriculture needs to be notified and not the Council. Is this the intention? 8.S43B(3) – The request to record a term or expression in the database is submitted to the Council. The registrar however holds the database. Why this extra step? Designs Act, S38B(3) - persons may approach the Council to record designs in the database. The database is held by the registrar. Why the extra step? 10.S38B(3) - when a person approached the Council to record a design in the database, does this then follow a registration process? The Act is unclear.

12 Drafting comments: Performers’ Protection Act, 1967: S6(3)(c)(i): Subsection (c) = dispute resolution. Subsection (c)(i) = agreement & S6(3)(c)(i) would fit better in S6(3)(b) Example of sub-sections 9A(b) and 9A(c) of the Copyright Act.

13 Drafting comments: Copyright Act, 1978: 1. S1(j) : “author” of a traditional work = “the work which orignated...” 2. S3(1A) uses “50” -> the Copyrigt Act uses “fifty” 3. S9A(b) subsections (ii) to (vi) “...and the author of the copyright” -> “owner of the copyright” 4. S9A(b)(vi) - “programme” // S9A(b)(viii) - “programs” (Throughout the Copyright Act – “programme” for programme-carrying signals, but “program” for computer program) 5. S11C subsections (a) to (g) - “work”, in stead of “traditional work” 6. S11C(d) – “..or a literary work in the form of a dramatic work...”? (“...or a traditional literary work in the form of a dramatic work...”?) 7. SS19C(4)(c) and 23(5)(b) and (c) - example of sub-sections 9A(b) and (c) of the Copyright Act. 8. S23(5)(a) and (b) are exception clauses - S23 of the Copyright Act deals with infringements. The current S19 deals with exceptions: Amended S23(5)(a) is also a repetition of amended S19C(2). 9. S40(6) - functions of the registrar in respect of the Council and its sub committees: S40 deals solely with an advisory committee

14 Drafting comments: Trade Marks Act, 1993: 1. S1: Style differs from the current style 2. S1: There is no S43C 3. S2: “indigenous community”: “the community” - definition in Copyright Act “any community”. Should it not rather read “a”? 4. S34(2B)(c) - Example of sub-sections 9A(b) and 9A(c) of the Copyright Act 5. S43(2): “Geographical indications”, given its definition, duplicates the “indications of geographical origin” 6. S43B(2) – Only traditional terms and conditions of which the registrar was uncertain, shall be captured in the database – Is this intended? (It excludes registrations under sections 9(3), 42 and 43)

15 Drafting comments: Designs Act, 1993: 1. S15(1D): No provision for traditional designs to be recorded in the database. 2. S22(1A): the sections referred to here could cause an anomaly: Suggestion - wording in subsection (a) “commencement of the Intellectual Property laws Amendment Act” be amended to read “registration” or the subsections referred to be amended to “14(2A)(b)(i)” 14(2A)(b)(ii)” respectively AND provide duration for applications where registration precedes the release date 3. SS22(1A) and 35 : “10” and “15” -> the Designs Act writes numbers in full. 4. S35(14) - Example of sub-sections 9A(b) and 9A(c) of the Copyright Act.

16 Thank you