1. 1 Intellectual Property Laws Amendment Bill, Redraft 1.3 Presentation to the Task Team on 21 July 2011 Adv Charmaine van der Merwe - Parliamentary Legal Adviser Adv Johan Strydom – the dti Legal Adviser Adv Mongameli Kweta – State Law Adviser

2. 2 Index 1. The inputs / changes going into draft 1.2. 2. The inputs / changes going into draft 1.3. 3. Format of each set of amendments 4. Minor issues – Resolved (4 slides) 5. Minor issues – Still unresolved (1 slide) 6. Major issues – Resolved (3 slides) 7. Major issues – Still unresolved (4 slides)

3. The inputs / changes going into draft 1.2. (as handed out on 29 June 2011) 3 The IP Laws amendment Bill B8-2010 as introduced by dti Proposed amendments presented by dti 8 June 2011 dti amendments based on the dti response document of 8 June 2011 Parliamentary Legal Adviser’s presentation of 31 May 2011 Added headings to demarcate each principal act Grouped amendments to each principal act under 1 set of sections or under 1 Chapter Consequential amendments

4. The inputs / changes going into draft 1.3. (as emailed to Task Team members on 15 July 2011) 4 Draft 1.2 Submissions received Academic and Non-fiction Authors’ Association of SA (ANFASA) African Centre for Biosafety – representing the Masakhane Community Dramatic, Artistic and Literary Rights Organisation (DALRO) Free Market Foundation of Southern Africa (FMF) Inhlangano Yababhali Usiba Writers’ Guild Law Society of South Africa (LSSA) Legal Resources Centre (LRC) Licensing Executive Society of SA (LESSA) MNET National House of Traditional Leaders National Economic Development and Labour Council (NEDLAC) Publishers Association of SA (PASA) Sesotho Writers Association in SA (MoabaSesotho) SA Federation Against Copyright Theft (SAFACT) SA Institute for Intellectual Property Law (SAIIPL) SA Music Performance Rights Association (SAMPRA) SA Screen Federation (SASFED) Standing Advisory Committee on Intellectual Property (SACIP) Southern African Music Rights Organisation (SAMRO) Xitsonga Writers Association (XWA) Individuals Dr O. Dean (Spoor and Fisher) Mr. G. Gilfillan Prof J. Kirsten, (UP) Dr D.Trotskie

5. Format of each set of amendments SectionPerformance Protection CopyrightTrade marks Designs Definitions1121 Application of the Act8A28A43A53A What is eligible8B28B43B+C53B National Database8C28C43D53C Objection process i.r.o. database8C(1)28C(7)43D(1)53C(1) Ownership8D28D43EDef + 53D Objection process i.r.o. registerN/A 43E(3)53D(3) Nature of protection8E28ENONE53E Protection term8F28F43F53F Exceptions8G28G43G53G Royalties8G28H43G53G National Trust and Fund8H28I43H53H Licenses & Transfer of rights8I28J43I53I Disputes8J28K43J53J National Council8K28L+M43K53K International agreements8L28N43L53L Regulations8M396954 5 Sections 1-2 Sections 3-5 Sections 6-9 Sections 10-12 Sections in the Amendment Bill:

6. Minor issues - Resolved 6 IssueCommentSections in the Acts Preamble - Nedlac requested a preamble. An amendment bill in practice does not have a preamble. Used a preamble proposed in one of the submissions: Could not include it in the long title. Agreed to make an exception due to the unusual type of amendment bill we are dealing with Preamble Derivative / Original TIP The “traditional” nature of TIP sometimes requires different treatment Created “hereditary” and “derivative” TIP and distinguished between these All the principal Acts (See sections below) Performers Protection CopyrightTrade marks Designs Definitions1111 Eligibility8B(4)28B43B(7)53B(4) Ownership8D28D43E(1)definitions Protection term8F28F43F53F(1) Royalties8G(7)28H(5)43G(4)53G(4) Transfer8I28J43I53I

7. Minor issues - Resolved 7 IssueCommentSections in the Acts Usage of Indigenous v Traditional Kept “indigenous” only i.r.o. - indigenous expression of culture or knowledge - indigenous community - indigenous origin All principal acts Alternative dispute resolution -The definition refers to a process in the bill. -The definition was not used in the bill - Provide for regulations to set out the process. -Removed the definition Performers Protection: 8J Copyright: 28K Trade marks: 43J Designs: 53J Communication to the public - Related to TIP not always being written down Bill provides for “capable of substantiation from the collective memory of the relevant indigenous community” Copyright: 28B(2) Nature of copyright & exceptions to be expanded Included the exact wording proposed in the submissions, as well as the wording in other sections in the Copyright Act that were excluded initially Copyright: S28E, 28G Need guidelinesProvided for the Minister to issue guidelines on any aspect affected by the amendments Performers’ Protection: S8M Copyright: S 39A TM: S69(6) Designs: S54A

8. Minor issues - Resolved 8 IssueCommentSections in the Acts Live performances: Each live performance is new and subject to the requirements of registration etc. Bill provides that a repeat performance is not new, but is protected as if it is the original performance Performers Protection: 8B(5) & 8C(4) “cinematograph film” Need to align the terminology of the Performers Protection Act with the Copyright Act: Included “cinematograph” before all the words “film” Performers Protection only Linguistic commentChanged “constitute and function as the (Council /database/fund) of ….” to: “constitute and function in respect of (traditional performances /works/terms/designs) for purposes of this Act” Performers Protection: S8C(1); 8H(1) Copyright: None TM: 43D(1); 43H(1) Designs: 53C(1); 53H(1) Only recent works to be protected “Hereditary TIP” now differentiated – work passed down from generations ago also protected Definitions and Performers Protection: S8B(4) Copyright: 28B TM: 43B(7) Designs: 53B(4) Period of protection insufficient for TIP Created “hereditary” and “derivative” TIP and distinguished between these Performers Protection: S8F Copyright: 28F TM: 43F Designs: 53F

9. Minor issues - Resolved 9 IssueCommentSections in the Acts Hybrid TIP not provided for -Sharing ownership -Licensing the work in part The normal rules for IP will apply as the acts are made applicable to TIP, thus this will not be problematic Performers Protection: S8A Copyright: 28A TM: 43A Designs: 53A Academic etc exclusions not provided for Included academic exceptions, reviews, legal proceedings etc Performers Protection: S8G(8) Copyright: 28G(5) TM: 43G(5) Designs: 53G(5) Business enterprises that communities may set up The Company’s Act is already a source in this regard. Also provided for regulations and guidelines to be issued in this regard Performers Protection: S8GM Copyright: 39 TM: 69 Designs: 54 Council and the Registrar to provide support to indigenous communities This role has been allocated to the Trust and the Fund, which resorts under the Registrar Copyright: 28I What discretion does the Registrar have to question the National Council’s advice? The registrar has the final say – this was clear in the bill from the start TM: 43E(4)(c) Designs: 53D(6) Recourse i.r.o. TIP incorrectly recorded on the database Made provision for a process to object to a database entry Performers protection: 8C(5) Copyright: 28C(11) and (12) TM: 43D(6) Designs: 53C(6)

10. Minor issues - Resolved 10 IssueCommentSections in the Acts No provision to object to registration of a mark Inserted a section which makes the registration process for all TM (including objections) applicable to TIP TM 43E(3) Geographical indications (‘GI’) Provision is only made for the registration of a traditional term Geographical indications can be registered as collective / certification TM TM: 43B(4) & (5) “indigenous terms or expressions” to constitute a certification mark, a collective mark or a GI Changed “and” to “or” TM: 43B(2) With GI only the Department of Agriculture is to be informed. Is a GI thus not registered in the register / database? Included “GI” to be registered. The registrar now accepts all applications, thus GI will be properly registered. TM 43E(2) How will anybody know it is a GI and not another certification or a collective mark? Added a proviso that the registrar must indicate in the register that the mark is a GI TM 43B(4) & (5)

11. Minor issues - Resolved 11 IssueCommentSections in the Acts Unnecessary repeat of TIP being revoked Two sections stated the same - removed S53A(3) S53A & 53F The requirement that a “traditional design” registration will have to have a “traditional character” introduces a concept of uncertain meaning Deleted “traditional character” requirement as the definition for “traditional design’” already provides for the requirement of traditional character S53B(1) A “traditional design” can not be “traditional” and at the same time “not form part of the state of the art” at the “date of application thereof.” Hereditary TIP qualifies without having to “not form part of the state of the art”. Derivative TIP will however have to comply with this as any other design. 53B No order of precedence i.r.o. the alternatives as to how a reasonable royalty “shall” be determined The order is now set out more clearly with agreement being first and dispute resolution second. S53G(2)(c)

12. Minor issues – Still unresolved 12 IssueCommentSections in the Acts Alternative dispute resolution ADR to include customary dispute mechanism Performers Protection: 8J Copyright: 28K Trade marks: 43J Designs: 53J Add a section on Infringement - Request to add an offence relating to offering or making copyright work available to members of the public by way of trade, including giving the public distance access. - Cannot add this amendment - In a redraft the committee can not amend any aspects of the principal acts which do not logically relate to the introduced bill. - This section can only be added by dti Copyright: S27J (not in the bill) Does the Department of Agriculture have to develop, maintain and manage a separate register? The Dept of Agriculture must be notified if a GI is registered : dti to confirm S43E(7)(b)

13. Major Issues - Resolved IssueCommentSections in the Acts Constitutionality Expropriating ownershipNot if viewed as “present owners are currently infringing unprotected rights” Long Title and Explanatory memo Performers Protection: 8G Copyright: 28H & G Trade marks: 43G Designs: 53b(2)(b)(i) read with 53G Taking rights away from indigenous communities Allocation of ownership has been amended Performers Protection: 8D Copyright: 28D TM: 43E Designs: Definition of “proprietor” Money Bill Does asking royalties amount to a tax / levy / duty or surcharge? - s77 of the Constitution -Not paid into National Revenue Fund; - - Not imposing = by agreement; - For benefit of specific communities only, not for public benefit Performers Protection: 8G Copyright: 28H & G Trade marks: 43G Designs: 53b(2)(b)(i) read with 53G Breaching International agreements National TreatmentIncluded a section to deal with this Performers protection act: 8L Copyright: 28N TM: 43L Designs: 53L 13

14. Major Issues - Resolved IssueCommentSections in the Acts Traditional IP cannot qualify under the current system Requirements such as “New”; “Not part of state of the art” Distinguished between “hereditary” TIP and “derivative TIP: I.r.o hereditary: -Exception made i.r.o. “normal” requirements Performer’s Protection 8B(4) Copyright 28B Trade Marks 43B(7) Designs 53B(4) Ownership of TIP and the extent thereof -Self governance of communities affected by fund being owner -a custodian role for the Trust is more appropriate -Hereditary TIP owned by the community (per a representative) -Derivative TIP by the author / creator -If author / creator unknown, owned by the Trust Performers Protection: 8D Copyright: 28D TM: 43E Designs: Definition of “proprietor” -State intervention in transactions involving traditional knowledge should be clarified in the Bill -Only hereditary TIP cannot be transferred -Agreements for Royalties to be registered with the Council, who may require re-negotiation Performer’s Protection 8I, 8G(6) Copyright 28J, 28H(4) Trade Marks 43I, 43G(3) Designs 53I, 53G(3) 14

15. Major Issues - Resolved 15 IssueCommentSections in the Acts Challenges to Sector Survival Collecting AgenciesAdverse affect on producers’ business models, if music industry collection model is applied to film and video. - Each act provides for its own collection agencies Copyright Act only Definitions “author”Challenge i.r.o the community owning the TIP – Provided for a representative to own TIP All principal Acts “Collecting Society”Inserted a definition and provided for regulations i.r.o each type of TIP All principal Acts “Commission”Long reference in each amendment. Defined the term and affected consequential amendments All principal Acts “Proprietor”Challenge i.r.o the community owning the TIP – Provided for a representative to own TIP All principal Acts “traditional intellectual property” Ownership conflicts - Resolved ownership conflicts Copyright only “Traditional term or expression” -Proposed definition inserted already by dti -May be deregistered if not used: S43E(8) excludes the application of the relevant section Trade marks only

16. Major issues – Still unresolved 16 IssueCommentSections in the Acts Retrospective Application -Should not be retrospective -Transitional arrangements -Administrative arrangements to be in place before the Bill is enacted -No retrospective application - dti to confirm transitional arrangements & administrative arrangements No sections affected, or providing for transition Database, Council & Fund - Are these cost effective? -Are these necessary at this early stage of TIP protection or can they be combined with current systems until the TIP sector has grown? -What are the roles of the Council, Trust and Database -How will these bodies be funded? -What are the roles of indigenous communities in relation to these bodies? Changes made to these bodies are discussed in areas where the changes are more applicable. In general, the structure and role remained unchanged from the introduced bill to draft 1.3. save for: - In draft 1.3. the Council is more clearly indicated as being a body that regularly meets and not a permanent institution (28L(6)) Database Performer’s Protection 8C Copyright 28C Trade Marks 43D Designs 53C Trust and Fund Performer’s Protection 8H Copyright 28I Trade Marks 43H Designs 53H Council Performer’s Protection 8K Copyright 28L + M Trade Marks 43K Designs 53K

17. Major issues – Still unresolved 17 IssueCommentSections in the Acts Royalties - Who should pay Royalties & to whom? -How, when and to whom will payments be made? - Administrative duties and responsibilities of the fund - Surplus money -Who funds the Fund? - What is the role of the Indigenous Community? -“Traditional” use by the indigenous community and normal bona fide use by a third party who has done so before this amendment allowed; -If commercial benefit is derived from the above activities, a royalty must be paid to the owner of the TIP -Royalty to be determined by agreement or dispute resolution process -All agreements for use of TIP to be submitted to the Council who may require renegotiation of any term not to the benefit of the relevant indigenous community -Owner of derivative TIP to pay a royalty to the owner of hereditary TIP -No royalties on normal exceptions e.g. academic use, review, legal proceedings etc -Regulations to be issues on management of the fund must include administrative and other fees, manner and regularity of distributions to communities, general administration of the fund Performer’s Protection 8G Copyright 28H Trade Marks 43G Designs 53G

18. Major issues – Still unresolved 18 IssueCommentSections in the Acts Challenges to Sector Survival Geographical indications Need a system to protect Karoo Lamb, Wine Industries and Rooibos amongst others Trade Marks Only RoyaltiesBroadcasters and any user of performances : the potential liability for royalties is limitless and presents a significant financial exposure Performers Protection / Copyright Enforcement Performances- A traditional performance can only be recognised after a performance making enforcement difficult. - What about performances not seen /heard of by the community (live performances not recorded)? Performers Protection / Copyright

19. Major issues – Still unresolved 19 IssueCommentActs Definitions “Communicate” / “first communicated” The definition of “communicate” is very broad and includes “convey in a non-verbal way” Copyright only “Expressions of culture or knowledge” “Challenges” (no specifics)All principal acts “Geographical Indication”-Not linked to Liquor Products Act definition There is no definition. S13A speaks about GI Trade Marks only “Indigenous community”A number of comments have been made on this definition. From the comments, all proposals have been joined in a document with proposed alternative wording that the committee can consider All principal acts “Indigenous expressions of culture or knowledge” “Challenges” (no specifics)All principal acts “Indigenous or traditional work” “Challenges” (no specifics)All principal acts “traditional design”- “recognised” introduces uncertainty - Straddles aesthetic and functional designs: broader than the protection currently granted to non-indigenous communities. Designs only “traditional performance”-“indigenous origin” / “traditional character” are vague terms -Subjective determination of what is a traditional performance creates uncertainty -“There is no such thing as a traditional performance” Performers Protection & Copyright Traditional work-Vague terminology (indigenous origin” / “traditional character”)with a subjective test -Could lead to disputes Copyright only

20. 20 Thank you