TRIPS Waiver Compromise on COVID-19 Vaccines and Treatments Announcement Coming Soon?

The AIPLA and other IP organizations have issued a joint statement on a tentative TRIPS waiver compromise. On March 15, 2022, Adam Hodge, USTR spokesperson stated, in part:

Since last May, USTR has worked hard to facilitate an outcome on intellectual property that can achieve consensus across the 164 Members of the World Trade Organization to help end the pandemic. USTR joined informal discussions led by the WTO Secretariat with South Africa, India, and the European Union (EU) to try to break the deadlock.

The difficult and protracted process has resulted in a compromise outcome that offers the most promising path toward achieving a concrete and meaningful outcome. While no agreement on text has been reached and we are in the process of consulting on the outcome, the U.S. will continue to engage with WTO Members as part of the Biden-Harris Administration’s comprehensive effort to get as many safe and effective vaccines to as many people as fast as possible.

I wonder how Russia's invasion of Ukraine impacted the consensus building.  The Joint Statement provides:

JOINT STATEMENT ON TENTATIVE TRIPS WAIVER COMPROMISE

Written March 28, 2022

On March 24, AIPLA, along with the Intellectual Property Owners Association (IPO), Licensing Executives Society International (LESI), Licensing Executives Society USA & Canada, and the New York Intellectual Property Law Association (NYIPLA) issued a joint statement on the tentative TRIPs Waiver Compromise.  Our organizations are concerned by reports that the European Union, India, South Africa, and the United States have reached a tentative compromise on a proposed TRIPS waiver of intellectual property (IP) rights. We strongly support equitable, widespread and successful distribution of vaccines necessary to meet the challenges of COVID-19. However, the proposal currently being reported incorrectly portrays IP as a barrier to production and supply of COVID-19 vaccines. Our organizations know of no evidence to support that IP is such a barrier. In fact, the World Health Organization has stated: “[w]ith global vaccine production now at nearly 1.5 billion doses per month, there is enough supply to achieve our targets, provided they are distributed equitably. This is not a supply problem; it’s an allocation problem.”1 Solving the allocation problem is best accomplished by focusing on improvements to supply chain and distribution issues, rather than by concentrating on the red herring of intellectual property as an alleged barrier. Intellectual property has been critical to the development of technology that has enabled a global COVID-19 response and it continues to fuel efforts to more effectively distribute vaccines and advance other needed technology. We should not undermine our ability to respond to this and future pandemics.

Footnote 1:  See https://www.who.int/campaigns/vaccine-equity (accessed on 18 March 2022).

South Africa's ASA on the precipice

Unless South Africa's Advertising Standards Authority receive $680 000 in funding before the end of the month, an application will be launched to liquidate the non-profit which will likely see the collapse of the self regulated body, and concern then that advertising and packaging disputes will be left to the state and the courts. The ASA and its business rescue partners are launching a fund raiser tomorrow for the bail-out.

Here is what you need to know about how the ASA got to this position, what they need to get out of it and how they propose restructuring the business going forward to ensure it remains solvent and relevant:

• The ASA is a non profit body that has been in existence for 50 years, set up to assist self regulate advertising disputes. When working effectively it has allowed for speedy and relatively inexpensive dispute resolution for both competitors and consumers.
• On 21 October 2016, the Advertising Standards Authority (ASA) went into Business Rescue (an intervention that attempts to prevent a company from its financial distress to prevent its liquidation).
• The reasons why the ASA is in distress are:
• lack of funding
• lack of membership participation
• high operational costs
• costly litigation (the Herbex (pending) appeal and a damages claim of +-$1.3 million, set down for 6 March 2018)
• decreasing use of its services (including competitor claims)
• On 25 April 2017 is the ASA's second meeting of creditors and a special AGM has been called by the business recue practitioners to table a number of resolutions based on their research:
• a new management team and board
• a leaner organisation structure (from 20 to 13)
• a long term funding model
• a streamlined adjudication process
• By 30 April 2017 the ASA needs to secure at least $384k to cover its historical debt. Within a short time thereafter, a further $296k is required to fund its operating capital in the immediate future. As a result a fund raising initiative is being launched at the special AGM.
• The special AGM is taking place at the SAB World of Beer 15 President Street Newtown at 10am on the 25th.
• The proposal for ongoing short term funding requires a commitment of $100k per month from its members in proportion to their ad-spend.
• A failure to secure short term funding will result in an application to liquidate the ASA which will be to the detriment of creditors, up to 20 people will lose their jobs and the ASA services will be lost and/or left to the courts (with cost and other disadvantages) and/or government (which will mean the advertising industry will be regulated by the state).
• In the longer term the ASA intends to cover its costs through a hybrid model which includes an advertising levy (66%) and a contractually negotiated rates from media (34%).
• The ASA has applied to become an industry ombudsman under the Consumer Protection Act. This could alleviate its litigation challenges (over jurisdiction) and over time resolve some funding issues.
• The ASA are attempting to also deal with potential jurisdictional challenges through stronger member contracts requiring media, marketers and advertisers to agree to be bound by their Codes (which incidentally include the Sponsorship Code).
• Their are various risks to accepting the Business Rescue Plan - the retrenchment process will be costly, there is an unquantified risk of a damages claim which could bankrupt the ASA, the ongoing jurisdiction battles over non members is subject to an appeal which could severely hamper the ASA if the appeal by them is not successful.

Posted by Darren Olivier 24 April 2017 with some help from Afro-IP

 

Philanthropy’s Purple Rain – Brand Building for Non Profits

The front page headline in the Wall Street Journal a few years ago stated boldly “Charity Brawl: Nonprofits Aren’t So Generous When a Name’s at Stake” referring to the stinging criticism received by a celebrated charity for enforcing their rights over part of their name.

The palaver prompted a retort from Dan Pallotta, renown philanthropist who is evangelical about the need to change the mind-set about how we see charity and for charities to change their perception of themselves (see his post in Harvard Business Review entitled “Is it Wrong To Sue a Charity?” and his fabulous Ted Talk here). His post was followed by an insightful article published in Boston College Law Review by Lauren Behr entitled Trademarks for the Cure: Why Nonprofits Need Their Own Set of Trademark Rules.

In short, the WSJ and its commentary illustrate the difficulties of protecting a brand name built up through sheer hard word in the philanthropic space, both from a legal and PR point of view. Without the brand, the philanthropic’s ability to communicate, mobilise and ultimately do good, can be severely compromised. Yet protecting it could ultimately threaten the integrity of the philanthropic altogether.

“To say that public reaction was vitriolic would be an understatement. To give you a flavour one anonymous critic wrote to me that I was evil, adding, “No wonder your partner killed himself.” (My partner had committed suicide a year and half earlier.)”

Dan Pallotta (left) in his post in HBR, referring to reaction when his business decided to take legal action against another charity.

It’s not just an issue in the States, last year the UK IP court adjudicated on who had rights in the name OPEN COLLEGE NETWORK and OCN between two educational charities. Prof Jeremy Phillips on IPkat emotively describes the spat as

“..the most perfect example of a disgraceful waste of utter stupidity in branding and squandering of charitable funds for no constructive purpose this Kat has yet to see it.   While this Kat is a keen supporter of charities in general and educational charities in particular, he would be most reluctant to see so much as a penny's worth of his hard-earned cash go to any charity that adopted a logo as confusingly similar to that of another charity, whatever its alleged reason or justification”

The lethargic but acrimonious fight between the WWF (wrestlers and the wildlife fund) over the last decade (and more) has been well documented and in Romania recently an international charity offering guidance and assistance in the areas of religion and relationships had to step in and protect its ALPHA trade mark against ALPHA CLINICS. In Israel, a recent decision not to recognise the goodwill in a charity because it was not “in business” illustrates some of thinking that Dan Pallota is guarding against and closer to my own home the position is no different.

Not long ago, it was not possible to register a trade mark in South Africa for a charity because trade marks had to be capable of being used in trade, and a charity was not considered a trade. This has changed but there still exists a responsibility for the charity to police and protect the trade mark. The National Lottery Board’s failures to manage the use of their trade mark by others lead to a Supreme Court of Appeal decision in 2009, invalidating their LOTTO trade mark for becoming generic (see Afro-IP here). The repercussion of this decision may well be that someone gaming with a different lotto on the assumption that some of their funds are going to a charity.

This is why Behr in her article advocates for greater protection for trade marks in the non-profit sector “because the work of these organisations affects the greater public as well as both potential donors and recipients”. I would agree with that.

So how exactly does one protect a brand in the philanthropic space?

Well, traditional forms of IP protection should be considered not only in protecting the brand but also the creativity and innovation within the non profit. Care should be taken in deciding where to house the IP because of the possible tax and structural challenges and advantages in using a non profit or trust. Vigilance and deftness should be key in communicating, licensing and enforcing IP both from a legal and PR point of view. One needs to remember that the philanthropic may be in the business of giving but that does not mean it’s for others to take.

It’s time for the non profit brands especially in the philanthropic space to step out from the purple rain.

This blogger sits on the CEO SleepOut Trust in South Africa. Africa’s Pallotta – Ali Gregg - launched her 2016 event recently following the record breaking 2015 drive.

IP, exchange control and 'capital' in South Africa

Note: this post has also been posted on the Afro-IP weblog but, because of its subject-matter and given that very few IP Finance readers also follow Afro-IP, it seemed appropriate to repost it here.

Back in February 2010 a South African High Court ruled that a trade mark assignment entered into without prior exchange control approval from the South African Treasury did not contravene the South African Exchange Control Regulations. The South African Reserve Bank had previously required treasury approval from any South African entity wishing to transfer intellectual property offshore.Without approval the transfer of rights was null and void.

In Oilwell (Pty) Ltd v Protech International Limited (noted by Afro-IP here) the Supreme Court of Appeal (SCA) confirmed that foreign exchange approval was no longer required for an assignment of trade marks. The court based its decision on an interpretation of the term 'capital' in the Exchange Control Regulations, which provide that any transaction whereby capital is exported from the republic requires exchange control approval. The SCA held that a trade mark does not constitute 'capital' as envisaged in Regulation 10(1)(c) and that, accordingly, foreign exchange approval was not required to transfer trade marks offshore.

In response to this, the exchange control authorities have now amended the regulations specifically to state that 'capital' does include an IP right, whether registered or not, and that “exported from the republic” includes the transfer of an IP right to a person who is not resident in the Republic of South Africa. This means that it is again necessary for exchange control approval to be obtained when any intellectual property is assigned to an offshore entity.

Source: "Exchange Control Regulations amended in response to Oilwell decision" by Megan Reimers (Spoor & Fisher, Pretoria), Trademark Law Review, 30 July 2012

RSA Govt has turned down the music - Excon Approval

 Protecting the pot at end

The South African government has reacted to last year's Oilwell decision which had the effective of declaring that IP transfers did not require exchange control approval. In that case an attempt to void a trade mark assignment for lack of exchange control went all the way to the Supreme Court of Appeal - this blog carries the news here together with comment that celebration, for those who advocate a less restrictive environment, ought to have been nervous. And correct that turned out to be.

The government, without any consultative process, has unilaterally amended the exchange control regulations to include "intellectual property" within the definition of "capital" which has the effect of requiring all IP transfers to seek exchange control approval from the government. See Afro-IP report here.

The difficulty is that IP has not been defined and drafted to specifically include both registered and unregistered IP. This widens the scope of the regulations to possibly include amoebic concepts such as reputation, know-how and personality rights. This could mean, for instance, that a local talented footballer would need exchange control to move to join Manchester United because image rights are being "exported". There is also the question of whether IP can in fact be transferred in the sense of being moved from one country to another in the same way that other "capital" envisaged by the regulations ie money, can. The Oilwell judgement considered this at length.

The upshot is that this latest move is unlikely to be the end of the tussle. For those doing deals or creating IP in RSA, if you need to get IP out of the country, this requires the extra step of getting excon approval which, by the way, will be granted if the government is satisfied that value for value has been exchanged ie the price is fair.

RSA's TIA - the resurrector of innovation

South Africa's new Technology Innovation Agency (TIA), which has been formed to support the commercialisation of local research and development, was formally launched at the end of October with a budget of R410million (approx GPB 43mill) according to this report in Creamer Media's Engineering News. The news is hot off the heels of the enactment of RSA's legislation designed to commercialise innovation from public funding.

TIA chairperson Dr Mamphela Ramphele said that the agency would strive to turn "the valley of death" between research and product commercialisation into one of "resurrection"

The legislation and TIA have high ideals but borrowing from Tennyson's account of the famous doomed charge does sound ominous:

 Half a league, half a league,

  Half a league onward,

All in the valley of Death

  Rode the six hundred.

'Forward, the Light Brigade!

Charge for the guns' he said:

Into the valley of Death

  Rode the six hundred....

South Africa: content war continues with hunger strike

Readers may recall a story that broke a few months back describing how the content industry in South Africa formed a coalition to protest against the national broadcaster's IP and payment policies. The coalition staged an uprising which played a big part in forcing SABC board resignations and them begging for a government bail out. The story continues with a hunger strike.

"Accusations, counter-accusations, hunger strike, protests, name-calling, defiance, denialism, late payments, delayed procurement, deferrals and axing. These are just some of the fundamental characteristics of the local content ‘battle for survival' currently being fought between the SABC and the TV Industry Emergency Coalition (TVIEC). And it is turning nastier day after day." (Issa Sikiti da Silva).

People have learnt how to fight for what they think is right in RSA. Whether a hunger strike is appropriate in this situation seems inappropriate to question.

South Africa: Content industry marches

Following on from an earlier post "Content Industry v SABC", the protest march took place earlier today with ScreenAfrica providing this report: Huge turnout for anti-SABC march

"During the march protestors wielded dozens of banners with slogans that read: “Pay up – it’s the right thing to do”, “Stop actors being cheated”, “Rest in Peace South African programmes”, “SABC squanders while film workers suffer”, “The shows must go on”, “No show with no dough”, “Programmes not perks”, “Lights, camera , no action”, “Stop pulling our strings”, “Where is South Africa’s best content?” “Our industry can’t survive on air” and “Bored with the Board”.


A banner representing the Independent Producers Organisation (IPO) read: “IPO fighting for sustainability and fair trade, quality local content, ownership of IP, and respectful relationships”.

A representative from the South African Scriptwriters Union (SASWU) talked about the issue of residuals to actors and musicians. She also said that intellectual property (IP) should reside with the creator. “We want a standard contract to protect writers. I’m standing here as someone wanting to make a living in this industry.”

South Africa is of course a country where mass action has, historically, been very effective in producing results. SABC's response is therefore eagerly awaited.

Content Industry v SABC

South of the equator almost an entire content industry is taking on a national television channel by staging a mass protest on 4 June 2009 over alleged unpaid fees and unfair business practices and terms, some relating to IP ownership. The South African Broadcasting Corporation (SABC) finds itself portrayed as a dysfunctional non paying bully by the Television Industry Emergency Coalition (TVIEC) a coalition of content providers who have banded together to address a problem they say threatens their very existence. Depending on which news source you read (egs here, here and here) the total amount allegedly unpaid ranges from $5 million to $7 million. The TVIEC and SABC have asked the government to intervene. Afro-IP's comments on the IP aspects of the TVIEC's open letter to government may be found here.  Since then news of the mass protest has surfaced. It seems that government has little choice but to intervene because a defunct SABC (SA's equivalent of the BBC) has significant implications for the South African public. One hopes that a bail out does not come at the expense of an independence the SABC has done well to achieve to date.   

Needletime rights introduced to South Africa

Needletime refers to a performer’s right to receive a royalty for the broadcast, to the public, of a sound recording embodying a performer’s performance. With the introduction of the Performer’s Protection Act, the amendment of the Copyright Act and the promulgation of the Regulations on the Establishment of Collecting Societies in the Music Industry, performers are now entitled to a royalty for their performance embodied in a sound recording. These royalties may be collected by the performer and/or copyright owner or, alternatively, on behalf of the copyright owner and performer(s) by a “collection society” who administers their rights. The latest development in this law is the recent accreditation of SAMRO (South African Music Rights Organisation) as a collection society for needletime rights royalties. Collecting societies collect royalties from broadcasters and distribute the monies to the performers and copyright owners as per an agreement between the parties. Previously, the SA Copyright Act protected only copyright owners (usually the recording company) and royalties claimed were paid to the copyright owner of the sound recording and not the performer.

Does anyone know what the applicable royalty rates are for needletime rights? Is it possible to benchmark?

For a short history of needletime rights click here.

Some tatoo artists have been arguing that their customers also deserve needle time compensation...

South Africa: Anne Pratt - latest decision on exchange control

The initial Anne Pratt case (Anne Pratt v First Rand Bank Limited [2004] 4 All SA 306 (T)) caused quite a stir amongst IP professionals in RSA dealing with the transfer and licensing of RSA IP assets with foreign based companies. The decision appeared to support an earlier decision in Couve (Couve and Another v Reddot International (Pty) Ltd and others 2004 (6) SA 425 (W)) that the transfer of assets (including IP assets - albeit that the subject matter of the Anne Pratt case was not IP) to a non-resident without the approval by the Exchange Control Department of the Reserve Bank was void. The Couve decision appeared to conflict with a 1981 decision (Barclays National Bank v Brownlee 1981 (3) SA 579 (D)) which concluded that a contravention would not result in a nullity. In the initial Anne Pratt case though the court held that exchange control had been granted. Anne appealed and, on 12 September, failed.

The decision goes into some depth on exchange control rulings and the practices relating to them in respect of the sale of securities. Of relevance to this blog appears to be the observation on "onus" which the court felt rests on the plaintiff ie to adduce and prove that exchange control approval was not obtained. Proving a negative is never easy and this may provide some comfort to those involved in IP transactions (perhaps even a simple trade mark assignment) where exchange control was not been obtained and who may fear the transaction void. Nonetheless, there now seems to be a SCA (Supreme Court of Appeal) decision in RSA which does not disapprove of the earlier Pratt cases (endorsing Couve) even though the SCA was not specifically asked, it appears, to adjudicate on the ramification of a failure to obtain exchange control approval.