Author: LA Tong PROTECTING TRADITIONAL KNOWLEDGE – DOES SECRECY OFFER A SOLUTION? ISSN 1727-3781 2010 VOLUME 13 No 4 LA TONG PER / PELJ 2010(13)4 PROTECTING TRADITIONAL KNOWLEDGE – DOES SECRECY OFFER A SOLUTION? L-A Tong* 1 General The search for new information that will lead to advances in science and technology, combined with the economic imperative to acquire exclusive rights over commercially profitable knowledge has threatened the supply and conservation of natural resources, and impacted on the cultural lives of many traditional communities which hold valuable traditional knowledge.1 This ongoing quest in the name of progress places traditional communities under increasing pressure to respond to the threat that the irresponsible harvesting of natural resources poses to their livelihood. To be added to this this is the misappropriation of traditional knowledge by persons outside of the traditional community through the use of the intellectual property system with its focus on the privatisation of knowledge.2 The intellectual property * Lee-Ann Tong. LLM (London) LLM (Turin). Lecturer, Department of Private Law, University of Cape Town. [email protected] 1 Note on terminology: the search for a definition of "traditional knowledge" (TK) is well documented and will not be dealt with in this paper. The approach adopted by the World Intellectual Property Organisation (WIPO) is useful and relevant in this context. The WIPO uses the term "traditional knowledge" as a working term to refer to "tradition-based literary, artistic or scientific works; performances; inventions; scientific discoveries; designs; marks, names and symbols; undisclosed information; and all other tradition-based innovations and creations resulting from intellectual activity in the industrial, scientific, literary or artistic fields. 'Tradition- based' refers to knowledge systems, creations, innovations and cultural expressions which: have generally been transmitted from generation to generation; are generally regarded as pertaining to a particular people or its territory; and, are constantly evolving in response to a changing environment … . Excluded from this description of TK would be items not resulting from intellectual activity in the industrial, scientific, literary or artistic fields, such as human remains, languages in general, and other similar elements of 'heritage' in the broad sense (WIPO Intellectual Property Needs 25)". In addition, in this paper it is understood that indigenous knowledge would be "the traditional knowledge of indigenous peoples" and that [i]ndigenous knowledge is therefore part of the traditional knowledge category, but traditional knowledge is not necessarily indigenous. That is to say, indigenous knowledge is traditional knowledge, but not all traditional knowledge is indigenous." WIPO Intellectual Property Needs 23. Furthermore, the references to the "holder(s)" of traditional knowledge also follow the WIPO approach and refer to "all persons who create, originate, develop and practice traditional knowledge in a traditional setting and context (WIPO Intellectual Property Needs 26)". Communities are included in this understanding of "holder". 2 Traditional knowledge may take many forms, from extraction methods, knowledge of plant material properties, agricultural methods, and healing techniques, to rituals, folklore, dance, and 159 / 180 LA TONG PER / PELJ 2010(13)4 system has allowed for intellectual property rights to be obtained over inventions and creations based on existing traditional knowledge. Patents have been based on the wound-healing powers of turmeric3 and the appetite-suppressant properties of the Hoodia plant,4 and sacred chants and traditional music have been used by western artists to create musical works for which they claim copyright5 Although intellectual property rights over intellectual creations derived from traditional knowledge may be acquired legally, the failure to recognise the contributions of the traditional knowledge holders and to share the benefits the economic gains derived from intellectual property rights have made the relationship between traditional knowledge and the intellectual property system a strained one.6 These and other concerns have led to traditional knowledge receiving increasing attention in international forums such as the World Intellectual Property Organisation (WIPO) and the World Trade Organisation (WTO). One issue among the many debated in connection with the recognition and protection of traditional knowledge is whether or not it is possible for traditional knowledge holders to use the existing intellectual property system to their advantage.7 In this regard, while much has been written about the shortcomings in the traditional knowledge context of intellectual property rights like copyright and patents, little attention is usually paid to the use of trade secrecy,8 even though it is recognised as a form of protection for industrial property and is widely used in western economies to ensure that confidential technical and commercial information is not disclosed to trade rivals.9 music, all of which may provide the basis for intellectual property rights under the intellectual property system. 3 Dutfield "Protecting and Revitalising Traditional Ecological Knowledge" 103-122. 4 Wynberg 2004 JWIP 851-876. 5 Gervais 2001 www.cra-adc.ca; Mcleod Owning Culture 46-50. 6 Gervais 2001 www.cra-adc.ca 3. 7 Gervais 2001 www.cra-adc.ca 6-7. 8 In this paper the term "secret information" will be used to refer to information that the holder wishes should remain undisclosed. The term is broad enough to include other terms like "trade secrets," "confidential information" and "undisclosed information," all of which may have particular characteristics that make them less inclusive than "secret information". This is important because there are different types of information that a traditional knowledge holder may want to keep secret, some of which, for example sacred knowledge, would not fit into the general understanding, for example, of trade secrets as business information of economic value in trade and industry. The WIPO Model Provisions on Protection Against Unfair Competition (Model Provisions 1996) also suggests the use of the term "secret information (A 6 and para 6.16)." 9 Even outside of the traditional knowledge context, trade secrecy attracts little real discussion compared with other forms of intellectual property protection. See Landes and Posner Economic Structure 354. 160 / 180 LA TONG PER / PELJ 2010(13)4 There is little doubt that the use of secrecy to protect traditional knowledge is an attractive option.10 Conceptually, secrecy provides a form of protection that may either already be part of an existing custom, for example where certain sacred rites or practices are known only to certain members of the community; or it may be an external protective mechanism in response to the threat of misappropriation by non- members. In the latter case secrecy may be used to stop the unauthorised flow of information from the traditional knowledge holders to outsiders either because the traditional knowledge holders wish to retain a measure of control over the way in which the secret information is used or commercialised, perhaps in anticipation of being able to negotiate with third parties, or simply to prevent others accessing it. An advantage in using secrecy is that it can, at least in theory, be used to protect any type of traditional knowledge, from products like chemical compounds or formulae, to ways of doing things, like therapeutic techniques or processes for creating medicinal compounds.11 The information need not meet criteria as to type and there are no substantive hurdles like the requirement of originality or novelty, which are required for copyright and patent protection respectively.12 The lack of a registration procedure with its associated legal complexities and costs also contributes to making secrecy an attractive option for traditional knowledge holders, and unlike most intellectual property rights which are of limited duration, traditional knowledge protected by secrecy will remain protected for as long as it is not disclosed. Thus, at first blush, secrecy provides traditional knowledge holders with a cost- effective, formality-free way of preventing the misappropriation of traditional knowledge. All that is required is that no-one finds out. However, as easy as it may be to decide to use secrecy, so too is it easy to lose secrecy. Once there has been disclosure, the value of the information is lost and cannot be regained, regardless of whether this has been through the unauthorised disclosure of the information, or 10 See for example Dutfield "Protecting Traditional Knowledge" 81-82; Dutfield 2001 Case W Res J Int'l L 258; UNCTAD-ICTSD Resource Book on TRIPS 538. 11 However, secrecy lends itself more readily to the concealment of certain types of information. Not all traditional knowledge can be kept secret, and for some, doing so may render the knowledge inert, for example, textile patterns and other knowledge the use of which entails disclosure. Arguably, secrets that relate to methods are better suited to secrecy because the information will enter the public domain much quicker if it is in product form. Once the knowledge has been integrated into product form, it may be more susceptible to reverse engineering. 12 Van Overwalle "Protection of Traditional Knowledge" 264. 161 / 180 LA TONG PER / PELJ 2010(13)4 through independent development such as reverse engineering. Where secrecy has been compromised or threatened, the legal recourse that the holder of secret traditional knowledge may rely on will depend on the nature of the information as well as the circumstances in which the remedy is sought. Relief for the loss of secrecy will usually be restricted to claims for compensation or damages, or for an interdict to prevent disclosure. While actions based on the disclosure of secret information are usually grounded in unlawful competition, contract, fiduciary duties, statute, criminal sanctions, breach of confidence actions, or privacy; depending on the particular jurisdiction, not all of these may be relevant to traditional knowledge. This article will consider only two forms of legal recourse to protect secret traditional knowledge, namely unlawful competition and contract. 2 Preliminary issues The determination of whether or not secrecy can in law provide the basis for the protection of traditional knowledge, can be made only within the context of the other issues associated with the protection of traditional knowledge. These issues underlie any attempt to reconcile intellectual property rights with traditional knowledge, and include defining or delineating the ambit of what constitutes traditional knowledge and identifying who the rightful holders of such traditional knowledge are. For the purpose of this paper, which is to review the extent to which unlawful competition and contract law potentially provide legal remedies to protect traditional knowledge, it must be remembered that all traditional knowledge can clearly not be said to be secret. Whether or not the knowledge that is sought to be "protected" as a trade secret 13 is in fact, secret, and is not part of the public domain, is a question of fact, to be determined in relation to the particular subject matter sought to be protected.14 Thus secrecy as a legal option for traditional knowledge holders will be limited to only those instances where the specific knowledge meets the legal requirements for the proposed remedy. 13 Traditional knowledge "secrets" could, for example, be formulae for medicines, recipes, know- how, and the like. 14 Elvin-Lewis 2007 Afr J Trad CAM 443-468. 162 / 180 LA TONG PER / PELJ 2010(13)4 A second issue that underlies all of the legal remedies is the determination of who has the locus standi to bring the action. Once an individual or a traditional community makes a legal claim to traditional knowledge or to stop the use of traditional knowledge, then the issue of ownership arises. It is obviously not easy to identify a single creator or source of traditional knowledge. The approach to identifying the legal holder of the traditional knowledge, whether that is an individual or a community, will depend on the measures, if any, that the particular jurisdiction has put in place. 3 Protection of secret traditional knowledge under the Agreement on Trade-Related Aspects of Intellectual Property Rights Although the misappropriation of trade secrets or confidential information has for a long time been actionable in many domestic jurisdictions,15 the Agreement on Trade Related Aspects of Intellectual Property Rights16 (the TRIPS Agreement) is the first international intellectual property instrument to specifically recognise secret information or "undisclosed information" as being protectable intellectual property.17 This is done through Article 39 of the TRIPS Agreement, which makes provision for the protection of undisclosed information under the ambit of unfair competition. 18 Article 39 of the TRIPS Agreement provides that: 1 In the course of ensuring effective protection against unfair competition as provided in Article 10bis of the Paris Convention 15 Legal action to protect against trade secret misappropriation has taken many forms, for example through statutes such as the United States of America's Uniform Trade Secrets Act 1985, and common law, such as the delict of unlawful competition in South Africa. 16 Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 constitutes Annex 1C of the Marrakesh Agreement Establishing the World Trade Organisation and entered into force on 1 January 1995. 17 A 1.2 of the TRIPS Agreement provides that "the term 'Intellectual Property' refers to all categories of intellectual property that are the subject of Sections 1 through 7 of Part II". S 7 deals with the protection of "undisclosed information". The TRIPS Agreement does not use the terms "trade secrets" or "confidential information" although these terms are commonly used in legal discourse on the protection of secret information. A reason for this may be that there is no agreement as to what would constitute a "trade secret" or "confidential information" and that the term "undisclosed information" is more neutral. See UNCTAD-ICTSD Resource Book on TRIPS 520-521. 18 Although the Paris Convention for the Protection of Industrial Property (1967) provides for protection against unfair competition in A 10bis thereof, it does not refer to secret or undisclosed information specifically. 163 / 180 LA TONG PER / PELJ 2010(13)4 (1967), Members shall protect undisclosed information in accordance with paragraph 2 and data submitted to governments or governmental agencies in accordance with paragraph 3. 2 Natural and legal persons shall have the possibility of preventing information lawfully within their control from being disclosed to, acquired by, or used by others without their consent in a manner contrary to honest commercial practices so long as such information: (a) is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question; (b) has commercial value because it is secret; and (c) has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret. The TRIPS Agreement requires that Members of the WTO incorporate minimum levels of intellectual property protection into their domestic laws. However, Members may choose to impose more stringent measures and may do this through whatever means they prefer.19 It follows that the provisions relating to unfair competition in Article 39 may be expanded upon and interpreted in ways that provide broader protection to the holders of undisclosed information. As will be seen from the ensuing discussion, the use of unfair competition rules to protect undisclosed information may not offer much benefit to traditional knowledge holders unless domestic unfair competition models provide for the specific challenges that accompany a minimum application of Article 39. Unfair competition rules generally do not provide the holder of secret information with an exclusive right in the information itself but make it possible to prevent acts of disclosure, acquisition and use without consent and contrary to honest business practice within a competition environment.20 How one determines if the actions have been less than honest will depend on the particular jurisdiction's approach, although it will usually be relative to the community at the time as to what will constitute a 19 A 1.1 provides that "[m]embers shall give effect to the provisions of this Agreement. Members may, but shall not be obliged to, implement in their law more extensive protection than is required by this Agreement, provided that such protection does not contravene the provisions of this Agreement. Members shall be free to determine the appropriate method of implementing the provision of this Agreement within their own legal system and practice." 20 See further UNCTAD-ICTSD Resource Book on TRIPS 527. 164 / 180 LA TONG PER / PELJ 2010(13)4 condemnable practice. 21 Consequently, a key limitation in the application of Article 39 of the TRIPS Agreement to traditional secret information is that it presupposes a competitive environment, and thus also a commercial context. If this is interpreted strictly it may result in the reduced relevance of unfair competition for traditional knowledge holders who do not use their secret information in a commercial context and who would in most cases not be direct trade rivals of the person responsible for the misappropriation. An example of this would be where a multinational pharmaceutical company acquires undisclosed traditional knowledge about the appetite-suppressant properties of a particular plant and uses the information in the development and marketing of a lifestyle drug to curb obesity. This would not be a relationship of trade rivalry, in the usual sense of the words, between the traditional knowledge holder and the company. The relevance of Article 39 would be increased by an implementation into domestic law that tended toward the WIPO Model Provisions 1996 which suggest that an act of direct competition is not necessary because even where: an act is not directed against a competitor of the person who has committed the act, it may nevertheless influence competition in the market by increasing the competitiveness of that person in relation to his competitors.22 This approach is borne out also by the WIPO definition of unfair competition as: any act that a competitor or another market participant undertakes with the intention of directly exploiting another person's industry or commercial achievement for his own business purposes without substantially departing from the original of his achievement.23 21 Footnote 10 of the TRIPS Agreement clarifies A 39.2. with the note that that for the purpose of the provision "'a manner contrary to honest commercial practices' shall mean at least practices such as breach of contract, breach of confidence and inducement to breach, and includes the acquisition of undisclosed information by third parties who knew, or were grossly negligent in failing to know, that such practices were involved in the acquisition". In South Africa this would be found in the unlawfulness or wrongfulness component of a delict and would be tested against the boni mores of society. See also UNCTAD-ICTSD Resource Book on TRIPS 528-529. 22 Model Provisions 1996 para 1.06. 23 UNCTAD-ICTSD Resource Book on TRIPS 521, see footnote 1013 therein. 165 / 180 LA TONG PER / PELJ 2010(13)4 Not all undisclosed information would be protectable under unfair competition rules. Article 39.2 is limited to information that meets three requirements. The first requirement is that the information must be: secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question.24 The provision does not make absolute secrecy a requirement. Instead the standard is found in the less strict obligation that the information is "generally not known" or "readily accessible" to "persons within the circles that normally deal with the kind of information in question". More than one person may be privy to the information without compromising secrecy. This approach is favourable for the protection of secret traditional knowledge, especially where the knowledge is held by a community. However, inherent in this formulation is that information that is generally known among or readily accessible to persons within circles that deal with such information will not meet the secrecy requirement. This raises the issue of the identification of such persons with access to the information, particularly where the traditional knowledge is known to the whole community, to specific groups within the community, or to persons outside of the community.25 It may be that information must be kept not only from non-members who are in a competitive relationship with the traditional knowledge holder, but also from other members of the community who are not allowed access to the information. For example within a traditional community, a secret healing method may be handed down from generation to generation of traditional healers and kept secret from other members of the community. 24 A 39.2(a) TRIPS Agreement. 25 For example, would a researcher conducting research on the healing properties of medicinal plants used by the traditional community, be considered as part of the circle? Furthermore, the question that one may then ask is whether or not there are any limits on the number of persons who are privy to the secret by considering, for example the size of the community or if it is restricted to a particular geographical area. It is arguable that the larger the community and the fewer people proportionately who have access to the information, the more likely it is that the information may be secret. 166 / 180 LA TONG PER / PELJ 2010(13)4 The second requirement is that the information must have commercial value because of its secrecy.26 The value of undisclosed information is derived from the fact that those who are privy to the secret have lead time in the market over competitors who have yet to discover the information. If everyone who is in competition has access to the information then there is no commercial value to the holder. However, if the information has commercial value because of its secrecy, then arguably such commercial value must be to the holders. While traditional knowledge that is sought by outsiders in commercial enterprises inevitably has commercial value, the question that arises is whether or not a traditional community that is not using the information commercially can make this claim. The TRIPS Agreement also seems to provide that the information must have actual value. However, because Member states may provide stronger protection, it is possible to protect information that has potential commercial value. Thus, a traditional community, even if not using traditional knowledge commercially, will be able to meet this criterion by claiming that the information could be used commercially. However, if the information has value only to the holders because of its spiritual or religious aspects it may be difficult to meet this requirement. The third requirement is that the person under who has lawful control of the information, must have taken steps to maintain the secret.27 The wording of the section seems to require positive action on the part of the holder. While proof of encryption, security guards, and access control may be evidence of such measures in western industrialised economies, it is more difficult to provide proof of such steps in a traditional community. It is therefore less clear what would suffice as protection of the secrecy oftraditional knowledge that may be held communally, particularly where there may be little proof other than an obligation to maintain secrecy. Even if we adopted the WIPO Model Provisions 1996 on the equivalent of this section, none of the suggested factors speak to the concerns of traditional knowledge holders. Article 6(3)(iii) of the WIPO Model provides that: [i]n determining whether reasonable steps have been taken to keep the information secret, account should be taken of the amount of effort and money spent by the rightful holder on developing the secret 26 A 39.2(b) TRIPS Agreement. See UNCTAD-ICTSD Resource Book on TRIPS 529. 27 A 39.2(c) TRIPS Agreement. 167 / 180