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Case Studies on Intellectual Property and Traditional Cultural Expressions

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Case Studies on Intellectual Property and Traditional Cultural Expressions MINDING CULTURE CASE STUDIES ON INTELLECTUAL PROPERTY AND TRADITIONAL CULTURAL EXPRESSIONS prepared by For more information contact the: Ms. Terri Janke World Intellectual Property Organization for the World Intellectual Property Organization Address: 34, chemin des Colombettes P.O. Box 18 CH-1211 Geneva 20 Switzerland Telephone: 41 22 338 91 11 Fax: 41 22 740 18 12 e-mail: [email protected] or its New York Coordination Office at: Address: 2, United Nations Plaza Suite 2525 New York, N.Y. 10017 º United States of America Study n 1 Telephone: This is one of a series of Studies dealing with intellectual property 1 212 963 6813 and genetic resources, traditional knowledge and traditional Fax: cultural expressions/folklore 1 212 963 4801 e-mail: [email protected] Visit the WIPO website at: http://www.wipo.int and order from the WIPO Electronic Bookshop at: http://www.wipo.int/ebookshop WIPO Publication No. 781(E) ISBN 92-805-1189-2 MINDING CULTURE CASE STUDIES ON INTELLECTUAL PROPERTY AND TRADITIONAL CULTURAL EXPRESSIONS prepared by Ms. Terri Janke for the World Intellectual Property Organization Geneva, 2003 WORLD INTELLECTUAL PROPERTY ORGANIZATION FOREWORD The relationship between intellectual property protection and the rights and interests of Indigenous and local communities in expressions of their traditional cultures (or ‘folklore’) has been the subject of international discussion for several decades. Discussion of policy and legal options for the improved protection of expressions of tradi- tional cultures should be guided as far as possible by the real needs articulated by Indigenous and local communities and, most importantly, their actual experiences with the intellectual property system. This was one of the key findings of extensive fact-finding and consultations conducted by the World Intellectual Property Organization (WIPO) since 1998. More recently, the WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore is making significant progress in identifying and clarifying the relevant issues and in developing policy and practical responses to them. The Committee, comprising States and non-governmental organizations and representatives of Indigenous and local communities, has also expressed the need for practical and empirical information on the usefulness of the intellectual property system in this area as a basis for its policy and practical work. This publication, ‘Minding Culture: Case Studies on Intellectual Property and Traditional Cultural Expressions’, written for WIPO by Ms. Terri Janke of Australia, responds directly to this need. The Case Studies provide factual and practical information, based on specific cases, on actual and attempted use of the existing intellectual property system by Indigenous Australians and legal and practical lessons learned therefrom. They contain examples of how designs, copyright and trade marks have been used by Indigenous communities to protect and promote their arts, cultures and identities, as well as, where so desired, their economic interests. They also indicate, in a practical context, in which respects existing systems were not seen by communities as meeting their interests, and that non-intellectual property measures also have a role to play in securing comprehensive and effective protection. These Studies will be a useful resource for policy makers at the international, regional and national levels, private legal practitioners, Indigenous and local communities and other stakeholders. I wish to thank Ms. Janke and all the communities, individuals and organizations whom she consulted, as well as the artists and communities who consented to the use of their art- works, designs and other creations in the publication, for this most valuable contribution to the development of practical and policy responses to the challenges posed by the protection of expressions of traditional cultures and folklore. Kamil Idris, Director General, WIPO CONTENTS Page(s) Introduction by the Author 5 CASE STUDY 1 The Carpets Case: M*, Payunka, Marika & Others v Indofurn 8 CASE STUDY 2 Use of Trade Marks to Protect Traditional Cultural Expressions 28 CASE STUDY 3 Bulun Bulun & Anor v R & T Textiles Pty Ltd 50 CASE STUDY 4 Industrial Designs and their Application to Indigenous Cultural Material 70 CASE STUDY 5 Protection of Indigenous Dance Performances 86 CASE STUDY 6 Unauthorized Reproduction of Indigenous Rock Art 100 CASE STUDY 7 Marketing and Merchandising of Art: Desart Trade Mark and Copyright Licensing 118 CASE STUDY 8 Indigenous Arts Certification Mark 134 Author’s Report on Consultation 159 Terms of Reference 167 Biography of Author 170 CASE STUDY 8 INTRODUCTION BY THE AUTHOR This publication, Minding Culture: Case Studies on Intellectual Property and Traditional Cultural Expressions, presents specific and actual examples where Indigenous Australians have explored and used intellectual property laws to protect their arts and cultural expres- sions. The following case studies report on the use of copyright, trademarks and designs: 1. The Carpets Case: M*, Payunka, Marika & Others v Indofurn (copyright) 2. Use of Trade Marks to Protect Traditional Cultural Expressions (trade marks) 3. Bulun Bulun & Anor v R & T Textiles Pty Ltd (copyright) 4. Industrial Designs and their Application to Indigenous Cultural Material (industrial designs) 5. Protection of Indigenous Dance Performances (copyright) 6. Unauthorized Reproduction of Indigenous Rock Art (copyright) 7. Marketing and Merchandising of Art: Desart Trade Mark and Copyright Licensing (copyright, trade marks) 8. Indigenous Arts Certification Marks (trade marks) In many instances, they show how Indigenous Australians have been able to do so through acquiring, exercising, enforcing and managing intellectual property rights. However there are shortfalls in the intellectual property system, as the studies indicate. For example, stories that are orally transmitted are often not protected under copyright, at least not in common law systems. Works that are very old, where the original creator passed away more than fifty years ago, are not protected. Economic remedies are the focus of copyright and trademark actions, not cultural rights. The costs of and procedures for designs and trademarks registration often hinder Indigenous people’s access to and use of the intellectual property system. I also wish to emphasize that intellectual property law is just one avenue Indigenous Australians have explored for protecting traditional knowledge and cultural expressions. Other strategies are being employed as Indigenous people assert their rights to own and control their traditional knowledge and arts. These include: – the use of contracts; – the establishment of collective management systems; – the drafting of cultural protocols; – the use of knowledge management systems; and – the strengthening of Indigenous customary laws. Indigenous Australians continue to call for sui generis legislation to protect Aboriginal and Torres Strait Islander traditional knowledge and cultural expressions. They ask for recognition of their cultural rights within the Australian legal and policy framework. “This means not only recognizing the uniqueness of Indigenous culture but also respecting it and understanding that Indigenous knowledge and Western knowledge are two parallel 6 systems of innovation. Furthermore, it must be recognized that Indigenous customary laws and the existing Australian legal system are two parallel systems of law, both of which need to be given proper weight and recognition.” (Terri Janke, Our Culture: Our Future – Report on Australian Indigenous Cultural and Intellectual Property Rights, Michael Frankel and Company, Sydney, 1999, p. 112) CASE STUDY 8 These case studies were originally researched and written in 2000. Only case studies 7 and 8 were updated in 2003. The Terms of References for the studies can be found at the end of the publication. Unless otherwise indicated, references to legislation are to the applicable legislation in Australia. Thank You. Terri Janke 7 CASE STUDY 1 GEORGE M*, PAYUNKA, MARIKA & OTHERS V INDOFURN Pages INTRODUCTION 9 SUMMARY OF THE FACTS 9 THE TRADITIONAL KNOWLEDGE 10 Communal Ownership 11 Commercialisation of Traditional Knowledge 13 Impact of Infringement on Artist and Culture 15 CUSTOMARY LAWS AND REGIMES 14 DECISION-MAKING AND CONSENT 14 Knowledge of Copyright 15 Unauthorised Reproduction under Customary Law 15 INTELLECTUAL PROPERTY PROTECTION 15 Copyright in Artworks 15 The Artists’ Rights 16 Importation of Artworks 16 Infringement 17 REMEDIES UNDER INTELLECTUAL PROPERTY LAW 18 Delivery Up of Unsold Carpets 18 Damages 18 Flagrancy Damages 19 Damages for Culturally-Based Harm 19 Non-Executive Directors 19 THE APPEAL CASE 19 POST-CASE INFRINGEMENTS 20 TRADE PRACTICES 20 FINANCIAL QUESTIONS 20 MORAL RIGHTS 20 CONCLUSION 21 BIBLIOGRAPHY 25 CASE STUDY 1 INTRODUCTION In 1993, imported carpets reproducing copyright works of Indigenous artists were found to be infringements of each Indigenous artist’s works. The artistic works embodied pre-existing cultural clan images that were, in some instances, altered by the carpet manufacturer, thereby distorting the cultural message of the works. The artists instituted a copyright action against the company which had imported the carpets, Indofurn Pty Ltd (“Indofurn”), successfully winning their case. This case resulted in the landmark Federal Court decision M*(deceased) v Indofurn,1 representing an accommodation of copyright
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