Now that the deadline for submitting comments on the draft IP policy has
come and gone, its time to make sense of them all. AfroLeo's recent post
entitled Counterfeit drugs illustrates need for
tough enforcement referred to a joint submissions made
by academics from, or affiliated to UCT and UKZN (with his comments in red). The authors of the
joint submission wish to respond to some of Afro-Leo's remarks. We are aware
that it is up to the DTI to consider the submissions and craft an appropriate
policy, but are of the view that there may have been some misunderstanding of
our submission and wish to clarify some points. For ease of reference, the
entire post will be reproduced here, with our replies in blue.
Counterfeit drugs illustrates need for tough enforcement
"Counterfeit drug syndicates are flooding the Zimbabwe market with consignments of fake anti-retroviral drugs (ARVs), expired medicines and sex enhancers, putting the lives of thousands of people at risk" the Zimbabwe Independent reveals throughAllAfrica on 25 October. Some of these drugs are being supplied from South Africa.
 |
| The Economist - Poison Pills |
The news is horrific but nothing unusual to this blog (see here for example) which regards counterfeiting as Africa's single largest IP problem. The Economist recently highlighted the global problem citing how difficult it is for "poor countries" to take advantage of technologies that help identify and track fake drugs (see article beneath pic alongside).
Against that backdrop, Afro Leo was dismayed to read some of the comments over the weekend in the "Academics" submissions on RSA's draft IP policy regarding IP enforcement.
"Special care should be taken to
avoid customs/border enforcement of patents and civil
trademark violations, especially with respect to medicines." (ed: patent enforcement
is of course not part of our anti-counterfeit legislation While enforcement of patents is not currently part of anti-counterfeit legislation
the submission was aimed at the policy which is somewhat ambivalent on whether
state resources should be devoted to enforce patents. On page 42 the draft
policy states: "South Africa should also foster the enforcement of IP
in its entirety. As for now, only trademarks and copyright are enforcement is
emphasised." but fake (and even generic drugs) frequently
infringe registered trade marks which, as illustrated by article require
effective customs enforcement) Here our key concern
is that the distinction between generic and counterfeit drugs be maintained and
that border control of IPRs is not used to block the transit of generics in
circumstances where this is not justified - See an article on this aspect
by Caroline Ncube entitled 'Enforcing patent rights against goods in transit : a new
threat to transborder trade in generic medicines' in the SA Merc
LJ (here). Additionally, the public
interest is properly served by removing substandard and harmful substances from
the market, an objective best achieved through capacitating the medicines
regulator to ensure that only medicines that are safe, efficacious and of
assured quality are sold to the public. We also wish to point out that substandard
medicines are at least partly a function of access failure - desperate patients are exploited by
charlatans because they have no other way to access affordable medicines.
A subsequent, yet related question is: who should enforce (as in human
and financial resources) private IPRs? We caution that
customs enforcement is problematic, particularly in instances where customs is
not adequately trained in dealing with IPRs. We note that it is in order to
rectify such deficiencies that firms like Adams & Adams are
intensively engaged in training customs across Africa. We are not alone in
questioning whether customs officials have the capacity to distinguish whether
a particular product infringes a trademark. According to the Afro-IP report of
a paper given by Judge Harms (here)
the judge intimated that " there is no clarity about the justification for
customs action in relation to goods in transit or transshipment" and
" in SA at least, the laws are contradictory and do not take into account
the ordinary principles of criminal procedure" and "customs are not
really equipped to deal with the problems".
"Improving IP enforcement
through, for example, reducing the availability of certain enforcement
mechanisms such as interdicts, which may actually benefit the general
populace, (ed
- certainly not when it comes to counterfeit drugs) Great care must be
taken to distinguish between fake medicines i.e. those with no active
ingredients or possibly harmful ingredients and generic medicines which are
bio-equivalent to brand name medicines. A medicine may be sub-standard without
any trademark implications, and whether it should be distributed in South Africa is
the province of the Medicines Control Council, whereas whether a medicine
infringes a trademark is best decided by a court. The category of counterfeit
drugs only confuses these issues and is unhelpful. As reported previously on
Afro-IP (here)
an anti-counterfeiting law that failed to distinguish between counterfeit and generic medicines was struck down
because it was over-broad by the Kenyan High Court.
whereas
strengthening enforcement will almost always work to the advantage of
rights holders, often at considerable cost to the public purse. (ed, we are all rights
holders. We
agree, we are all rights holders, but we are also all re-users, re-creators and reverse engineers. We used the term 'rights holder' at that point in our submission to
identify those who identify themselves as 'rights holders' for rhetorical
purposes, thus emphasising their rights while disavowing their reliance on the
works of others.
The cost of enforcement
can be expensive (often borne by the enforcer because damages are so difficult
to prove or recover, and cost awards inadequate) but without it, the potential
benefits of IP protection (fostering innovation, wealth and job creation etc)
become useless. It may be interesting to note that the cost of enforcement in
RSA is significantly cheaper than in other parts of the world) The role of IP in
fostering innovation, creativity and development in a country is at best
uncertain: it can be an incentive but at the same time - through creating far
reaching monopolies - it can also be a considerable stumbling block for
innovative activity. A new book (coming out in December 2013) aims to shed more
light on the complex relationship between IP protection on the one hand and
innovation and development on the other (De Beer et al., Innovation and
Intellectual Property: Collaborative dynamics in Africa UCT Press
(2013) see an overview of the research on which this book is based here).
"In our view, the issue of
enforcement – while being important – is a subsequent issue to creating topical
and progressive IP regimes in our country." (ed - this cannot be. A
topical and progressive IP regime is ineffective without proper
enforcement - the two are at least equally important. The article illustrates
this as much as a death caused by a motorist with fake brake pads.) We are in agreement -
our point is that you start with a properly nuanced (read topical and
progressive) IP regime then you set up proper enforcement mechanisms. We take
issue with the enforcement of an inappropriately balanced IP system, not with
enforcement (by right-holders at their own expense) in general.
"once copyright enforcement begins in earnest, then, without
well-developed mechanisms in place to secure non-infringing channels of
access to knowledge, many learners will be in a
precarious situation." (ed the reality is that copying is endemic
to our society and copyright enforcement inadequate. We refer readers to the
book Access to Knowledge in Africa: The
Role of Copyright UCT Press (2010) (free full text download) an output
of the African Copyright and Access to Knowledge Project which found that due
to inadequate provision for exceptions and limitations for educational
purposes, “access to learning materials in the study countries is obtained
mainly through copyright infringement.” The shortcomings of current South African
copyright laws are detailed in this
chapter as are recommendations for reform.
One
in every three businesses uses infringing or pirated software or is under
licensed because they are using "learner"
licenses, specifically available by software providers
to facilitate access to knowledge. We are not aware of
any rigorous research that supports the narrative of widespread software
infringement, but we do know that several years ago the Business Software Alliance
admitted to estimating the number alleged infringements in South Africa without
doing any survey work in South Africa ( see report here). As scholars we prefer empirically verified research so would be delighted if anyone
could point us to any on this subject. We wish to refer Afro-IP readers to
research that questions conventional wisdom about piracy and enforcement -
the Social Science Research Council's Media Piracy in Emerging Economies Report
which was the outcome of an independent, large-scale study of music,
film and software piracy in emerging economies, with a focus on Brazil, India,
Russia, South Africa, Mexico and Bolivia.
