Address for
Correspondence:
Unit 156
South Kensington
SW7 3SS
Email: murrayeiland@netscape.net
Patenting traditional knowledge (TK) without
the consent of right-holders is a contentious issue. There are a number of proposals that seek to
defeat Western patents of TK by using a database to defeat novelty. Legal protection of these databases,
particularly in the
Many countries that are rich in genetic
resources and traditional knowledge (TK) are concerned that their resources are
being patented without their consent.
This paper will address this concern in
particular. But before moving on, some attention should be paid to the problems
the database was designed to overcome.
The same is not true of patent practice in
the
In late 2005 the EPO was due to sign an
agreement with the National Institute of Science Communication and Information
Resources (NISCIR) in
At first glance the database appears difficult to put into practice. Given that a range of different specialties would have to be represented, it is no easy task. It would also have to be regularly funded in order to be up to date. Perhaps even more ominous, some have suggested that the database could be used to further piracy. The Traditional Knowledge Digital Library Task Force found that of the 4,896 references on 90 medicinal plants in the United States Patent and Trademark Office database, 80 per cent of the references pertained to just seven medicinal plants of Indian origin. In other words, nearly 4,000 patents or patent applications are based on the medicinal properties of plants that were already known. The Task Force studied the patents and found that 360 of the 762 patents on medicinal plants that were granted by the USPTO could easily be categorized as traditional.6 In an age where the reproduction and dissemination of electronic material is so simple, the database would be a very tempting target for misuse.
There have been calls to stop the project,
as many authors did not want to participate in a venture that could be damaging
to their communities.7
There is also a general reticence of some to commit an oral
tradition to writing, as local communities worry that they lose control of
their sacred or cultural property. Clearly a major issue in the debate is the
level of protection of the proposed database. A printed source is not easy to
update, and it is very difficult to control access. A digital database can be updated as needed
and access can be restricted. However,
no method of technological protection can ever be assumed to be secure. Assuming the database was “hacked” and used
to look for patentable material, the resulting patent application could be
drafted so that the original inspiration could be obscured. It is also clear
that a major focus of the database is for the
Of particular importance here is the
nature of the TK database. At first the
compilers will put materials on the database that have already been printed,
although perhaps originally in a number of non-European languages. Later original materials will be collected
from a number of sources. As is the case
with much TK, it may be controlled by members of the community who in turn may
change the TK over time. There can thus be older static elements as well as
newer elements attributable to an individual. A member of a “traditional”
community could enjoy copyright as an author on these new additions according
to western standards, although under traditional law it may be the community as
a whole that retains these rights. As has been noted before, Western concepts
of intellectual property rights do not easily accommodate collective forms of
ownership. According the
Article 2(5) of the Berne Convention deals
specifically with collections of literary and artistic works such as
encyclopedias and anthologies: ... “which, by reason
of the selection and arrangements of their contents, constitute intellectual
creations that shall be protected as such, without prejudice in each of the
works forming part of such collections.” In the case of the TK database all
authors of the work, including translator and final arranger, should fall under
copyright protection. The definition of
“work” in the convention is clear in that it must have a degree of originality.
The TRIPS Agreement, which came into force on
Besides the subject matter itself,
international agreements also provide for the effective use of technological
measures of protection. Article 11 of
the WIPO Copyright Treaty states that contracting parties must: “...provide
adequate legal protection and effective legal remedies against the
circumvention of effective technological measures that are used by authors...”
If a technological measure were employed to protect a work, then a signatory
country must prohibit any facilitation of circumvention measures as well as
restrict the production, distribution, and making available of protected
material. As somewhat of an aside both
The first issue to address is if the TK
database, even if written by a non-American, would be covered by American law.
According to the US Copyright Act of 1976, section 104, unpublished works are
subject of protection regardless of nationality, and published works are
protected if they were first published in a country that is a “treaty party”.
In any case if the work is published in a non treaty country and published 30
days after in the
If a work is not creative, it is not protected. The best example are phone books which rely upon simple alphabetical arrangement of data. This kind of information does not fall under copyright, as was made clear in the case Feist v Rural Telephone Service Co., 111 S. Ct. 1282 (1991). Supreme Court Justice O’Connor stated that originality was not a stringent standard, and that facts did not have to be presented in a novel or surprising way. Yet a mechanical or routine method of arrangement does not satisfy the statute. There was no “sweat of the brow” test for protection, but one based on a low hurdle of originality. The court noted in the Feist case that the vast majority of compilations would pass the originality test. It is almost certain that a proposed TK database would not be mechanical but would reflect the creativity of the authors.
The next question to address is what kind
of protection can be offered to a database.
The European Union has passed legislation to protect the information
contained in a database. Called the
Database Directive, it came into force on
According to
Fair use has been further restricted by recent legislation that allows authors to use methods of Digital Rights Management (DRM) to control how their works are used. The WIPO Copyright Treaty guaranteed rights that were, according to some, not well protected by American law. The Digital Millennium Copyright Act (DMCA) amended title 17 of the United States Code. The DMCA provides stiff penalties for the production and distribution of technology that can circumvent measures taken to protect copyright. According to 17 USC § 1201 there is a distinction between those technological measures that control access and those that protect other rights, including fair use. In order for a user to exercise “other rights,” such as fair use, one must first gain access. The law makes the circumvention of technological measures a criminal offence and does not consider the motives for doing so. It would appear that, although fair use doctrine is well established in statute and case law, the DMCA makes this exception difficult to exploit in practice.8 The DMCA is purposefully inflexible in order to strengthen technical controls using legal means. It also shifts the enforcement of right holder’s interests from penalties for unauthorized infringement to sanctions for unauthorized use. “Given that DRM is only able to channel user conduct into dependably secure behaviors when its architecture is predictable and deterministic, the legal imperatives that guard the technical controls must be equally predictable and deterministic. Just as technical regulation under DRM cannot accommodate the fact-dependant, ex ante flexibility of legal standards, so the accompanying legal regulation of circumvention resists such situation flexibility.”9
The law in effect allows the copyright holder to write his own law in computer code, and it is no surprise that public access under the fair use doctrine is often not considered. In the case of monopolistic enterprises, where the interoperability of components is an issue, this could be appreciated as anti-competitive. In protecting a TK database, it is unlikely that such public policy issues would be raised. Instead, with strict protection of DRM systems, it makes it more likely that the proposed TK database would receive the support of many communities. However, a question to address at this juncture is whether this is the best way forward. The proposed TK database would cover a vast subject area. Considering increasing amounts of information, some of it perhaps appearing for the first time in written form, it would be of interest to academics such as anthropologists. Aside from a rather altruistic conception of sharing knowledge, specialist academic attention could perform useful functions, such as identifying gaps in the information or even correcting faulty data. The danger remains that if the database were simply produced by a small group of people and used by another select group it would be a self-pollinating system.
One option would be to “code for fair use” by allowing some users - academics for example - to view material for a certain period of time, perform a certain number of searches on the database, or to extract a certain amount of material. The main problem is simple. The program restricting access would by necessity be complicated. It almost certainly would not anticipate the range of needs encountered by “fair use” research. The other option is to appoint a controlling body that would act as a gatekeeper for the database. The unique circumstances of every case could be carefully accessed, and bona fide fair use research could be used to improve subsequent versions of the database. Representatives of the authors could be involved in controlling access by distributing electronic “keys” that would access encrypted work.10 It would be important to keep a record of the keys, perhaps having them expire after a certain interval of time, and perhaps also recording what kinds of research were conducted with the database. While there would be a lack of anonymity, and casual use would be hindered, such a system would still allow access of a limited sort. This would likely satisfy most contributors to the database.
Electronic Theft
There are also legal provisions to protect copyright even if there is no commercial element involved. In 1994 the court suggested that the current state of the law allowed David LeMacchia, a student at MIT, to facilitate large scale copyright infringement because there was no commercial motive. Reacting to the newly created “LaMacchia loophole”, in 1997 the No Electronic Theft Act (NET Act) was passed that established criminal sanctions for copyright infringement. It was specifically aimed at software but applies to other copyrighted work as well. Not surprisingly, it was supported by the software and entertainment industries, and opposed by groups representing scientists and academics. Before the NET Act, it was possible to sue infringers only in a civil action to recover damages. The NET Act establishes that the exchange of copies of copyrighted work is an offence even where the infringer expected to obtain nothing of value. Sentences up to five years in prison are now established, as well as $250,000 in fines. However, copying a work with a total retail value over $1000 and under $2,500 is a misdemeanor (above that limit it is a felony) and the maximum sentence is one year and a fine of $100,000.11 It may be difficult in practice to place a value on any infringement of the TK database, but the law is clearly in place to discourage offending behavior.
Various nations and groups have fears that their TK is being used by foreign companies in order to secure patent rights. Not only is this knowledge used without permission, it can be used as the basis for non-novel patents. A TK database can demonstrate that a particular use of a substance is not new. It is at the same time a powerful tool for a patent office, and an effective research tool for unauthorized users. For the communities (the authors of the TK) who will provide the information, there is understandably concern that the project could do more harm than good if there were no effective remedies against infringers. In fact, with the calls to stop the project all together, it appears that the effectiveness of laws to protect author’s rights is the core concern.
While there could be fears that various
national governments would not invest the required amount in legal fees to
pursue infringers, the Neem case demonstrates that
this might be a false assumption. The DMCA and to a lesser extent the NET Act are
in some ways a reversal of the “usual” trend where less developed countries are
encouraged to implement stricter intellectual property laws to encourage
outside investment. In this case recent
changes in
1 For
a general discussion see Emily Marden, The Neem Tree
Patent: International Conflict over the Commodification
of Life, 22
2 U.S.
Patent No. 5,281,618 (issued
3 T.V.
Padma, Digital
Library to protect indigenous knowledge,
The scope of the database according to this report is “traditional medicine, foodstuffs, architecture and culture.” It appears that the main focus of the database is traditional medicine, so it is quite logical that it would contain information about foodstuffs as well.
4 “Prior art” is a legal term that refers to all previous inventions in a particular field for which a patent is sought. It is used by patent offices to determine if an invention is unique and non-intuitive enough to qualify for a patent.
5 Mary Ann Liebert, EPO Takes Step Toward Blocking Patents on Traditional Medicines, 24 Biotechnology Law Report. 445 (2005).
6 Devinder Sharma, Digital
Library Another Tool for Biopiracy,
http://www.thehindubusinessline.com/2002/06/12/stories/2002061200120900.htm
7
Traditional Knowledge Digital Library Seeks to Prevent Biopiracy <http://sippi.aaas.org/ipissues/updates/?res_id=618>
Source: J. Lancaster, India digitizes age-old wisdom, The Washington Post,
8
Nicola Lucchi, Intellectual Property Rights in Digital Media: A Comparative Analysis
of Legal Protection, Technological Measures, and New Business Models under EU
and
9 Dan L. Burk, Legal and Technical Standards in Digital Rights Management Technologies 74 Fordham Law Review 537 (2005) 23-58
10 Dan L. Burk and Julie E. Cohen, Fair Use Infrastructure for Copyright Management Systems, Georgetown University Law Center 2000 Working Paper Series <http://papers.ssrn.com/paper.taf?abstract_id=239731>
11 A summary of the changes can be found at <http://www.cybercrime.gov/netsum.htm>