In this piece I am working on I make a proposal for how to implement the recognition of customary law as a means of providing protection for Traditional Knowledge[1] (TK) and Traditional Cultural expressions (TCEs). In a previous paper I argued through the presentation of a case study on Solomon Linda that a useful first step in thinking about how to provide protection for TK and TCE’s is to reframe it not as a question of ‘outsiders’ coming into a community and misappropriating but primarily as one of insiders, either purposefully or mistakenly, providing or giving access to the material. This is true even where the insider is victimized by the contractual uses or intellectual property claims made by the outsider. Focusing on insiders in this way allows us to revisit the argument about the appropriateness of using customary law to protect TK and TCEs. Where the problem was previously how to get access and jurisdiction over the outsider, we can now focus on the insider over whom there WOULD be jurisdiction. This is not to say that such insiders are bad actors, but that the responsibility for taking action to prevent misappropriation is directed at the person with the most capability and awareness to act to prevent it. Articulating a customary law for protection of TK and TCEs which is recognized by the metropolitan state in which the customary community/political unit (CPU) arises and outlining the property rights of its members can then provide a hook for establishing if, when and how they could lawfully transfer such rights or provide such access to an outsider. It may even be that the outsider would be accessible by virtue of having no legally valid transfer having taken place under the customary and metropolitan law of the country and thus have their contractual and other intellectual property claims invalidated in the metropolitan state. There may even be the possibility of reaching to the outsider through the international system for recognition of judgments. The impetus from this paper does not ignore the fact that customary law and the municipal law of the metropolitan state have always been able to claim and effect jurisdiction over outsiders if those outsiders’ misappropriation took place on the territory of the customary community/political unit. In fact, within the copyright law context, the South African courts were able to get jurisdiction over Disney in the Solomon Linda case because Disney’s actions in selling and distributing the Lion King took place in South Africa and were causing harm to Solomon Linda’s estate in South Africa. The plaintiffs were able to haul Disney into court as a defendant because their primae facie case allowed them to threaten to entail Disney’s trademarks in South Africa, without which they would likely not have been able to get Disney to appear in a South African Court.[2]
This existence of this article owes much to Paul Kuruk’s 2007 article “The Role of Customary Law under SUI Generis Frameworks of Intellectual Property Rights in Traditional and Indigenous Knowledge”[3] in which he most cogently makes the argument that recognition of customary law is the best way to protect traditional knowledge, even within sui generis regimes at the national and international level. While he did not completely win this argument at the international level, as seen by the erosion of customary law’s role in the discussions at the WIPO IGC, the initial survey that he carried out looking at the evidence for inclusion of customary law in regional, and national legislation provided a starting point for a whole body of literature on this issue. Many scholars have written in support of Kuruk’s argument.
In this post I revisit and characterize the debate that followed, noting that I adopt Kuruk’s thesis as the best approach. I take on his exhortation that the best approach is not to ignore customary law but to recognize it formally and then improve the mechanisms for its interaction with the metropolitan state and international law. It is in that spirit that I am pursuing this project. However, I also point to gaps in the arguments made by proponents of recognition of customary law that is also evident in Kuruk’s piece i.e. a tendency to avoid grounding the argument in the claims to sovereignty and human rights of customary law makers. I also take some issue with the basic argument that recognition of customary law cannot reach beyond the community or the national border because I believe it fails to recognize the idea that recognition will have to occur not just through legislation but also through rules on personal and subject matter jurisdiction and on applicable law and mutual recognition of judgments. It is through that lens that I’m approaching this project. Africa is a perfect candidate for a more in-depth examination of what the implementation of that recognition would look like at the level of jurisdiction and applicable law because it is the region that most extensively recognizes customary law both as having a separate venue, i.e. customary courts, and a separate applicable law. There is also sufficient similarity in the diversity of African customary law to characterize it in general.[4]
As Kuruk points out, the major objection to a top down sui generis regime at the national or international level is the process of harmonizing amongst an astoundingly large diversity of types and claims of traditional knowledge and traditional cultural expressions. This diversity is in tension with the harmonizing approach of general intellectual property policy and the inability of traditional intellectual property systems to provide full protection to TK and TCEs. This is done against the backdrop of a diversity of relationships between customary political units, from collaboration and overlap in may place in Africa, for example Kenya with the Luo, Kalenjin and others, to the essentially hostile relationship between the Australian settler-colonial state and the Aboriginal peoples. Trying to find a single definition of what constitutes traditional knowledge, who are the beneficiaries et al. present possibly insuperable barriers without first some convergence at the ground level on practices and legislation. Kuruk convincingly revisits his work in his 2020 book and makes a strong argument for a Customary Law approach, even as he acknowledges the utility of concurrent and complementary approaches such as disclosure requirements, and reciprocity and mutual recognition agreements.[5]
Some earlier work primarily focuses on the recognition of and application of customary law in what is described as ‘statutory’ courts but does not delve much into further processes. I am arguing that ensuring jurisdiction and applicability of customary law over insiders, combined with mutual recognition and enforcement of judgments, likely addresses significant elements of the misappropriation of TK and TCEs. One early example of this relationship between insider and outsider is the Bulun Bulun[6] case in Australia. A key aspect of the case was that the artist in that case claiming copyright violations (infringement and misappropriation of aboriginal art for use in commercial fabrics) had duties to their aboriginal nation that they could not escape and that those duties required them to act to protect the art over which they were a custodian and to prevent it from being misused. The court recognized that this fiduciary duty would enable the community to take action against the artist if they failed to do so and allow the community to take action on their own behalf. This is not quite a recognition of customary law but does point out that jurisdiction over insiders is a powerful tool to engage in compliance.
There does remain a significant question of how then do we still address the issue of outsiders, but that is an issue which I believe has largely been fully addressed in many other areas by proposals to provide international systems of TCE protection. That said, I plan to address the issue of cross-border recognition of judgments in a second article on recognition of TK Judgments in the broader context of recognition of IP Judgments. I argue that exit rules for insiders remain unaddressed and are likely to remain a significant leakage issue.
The lesson from the Linda story also suggests that, as in most cultures, there are systems for regulating knowledge creation, sharing and adaptation. As such, I am working from the idea that music, for example, and the function it serves is primarily no different in most customary law systems from that of the broader metropolitan states in which the traditional community resides and that there are incentives for forms of commercialization (exchanges of credit, status, money) within traditional community groups as there are elsewhere. This is therefore a difference in degree rather than kind. Thus copyright as envisioned by the Berne Convention serves primarily as a tool to regulate those aspects of commercialization and distribution necessary to provide incomes for artists in modern industrializing nations. That does not preclude the existence of other parallel or alternative systems of providing income, status, or credit to individuals or groups within communities. Here, Madhavi Sunder’s insight is key: property, acting through its absence, its existence or as a medium in between, is a social tool and it regulates social phenomena such as cultural expression and creation. An intellectual property system that focuses on individual creativity and incentives is simply one way of ordering social relations in a state. Thus, any system of ordering and allocating rights or property over intangibles does several things: it allocates and distributes rights in shared resources; it balances sometimes conflicting claims and values underlying a society; it mediates relations between the individual and the community. Not only is customary law simply different in degree it is also, like traditional knowledge, dynamic and evolving, rather than a long standing body of practice whose origins are lost in the mists of time. It is as ‘modern’ and ‘applicable’ as the members of the indigenous or traditional community wish it to be. I don’t find any need to engage in a debate of whether there is a property rights or utilitarian justification for the protection of traditional knowledge at the level of each customary political unit or the nation state. However, it is clear that some commonalities will need to be found in addressing cross-border issues of national treatment, minimum standards and harmonization between countries. This is especially true within treaty negotiations. Others have done a much more thorough job of explicating that debate and suggesting solutions, but I will note here that an international approach that acknowledges customary law as real and an equal source of law and protection for intangibles will have to expand to accommodate these alternative modes of managing property. It may be overcoming that resistance where the real progress will be achieved in international negotiations for the protection of TK and TCEs.
[1] A useful definition of Traditional Knowledge and Traditional Cultural Expression is provided by Ruth Okediji, describing 5 key attributes: “(1) an inter-generational system of institutions, norms, and processes that govern knowledge production; (2) the knowledge is held collectively; (3) the knowledge is expressed in tangible and intangible forms, including specific manifestations in technical know-how, skills, works of authorship, and inventions; (4) the knowledge is governed by economic, spiritual, and cultural values; and (5) the knowledge is associated with a specific indigenous group.” Ruth L. Okediji, A Tiered Approach to Rights in Traditional Knowledge The Foulston Siefkin Lecture, 58 Washburn L.J. 271 (2019). at 273.
[2] Dr Owen Dean, Awakening the Lion in the Jungle, Spoor & Fisher (2019), https://spoor.com/awakening-the-lion-in-the-jungle-the-story-of-the-lion-sleeps-tonight-case/ (last visited Sep 12, 2024). See also
[3] Paul Kuruk, The Role of Customary Law under SUI Generis Frameworks of Intellectual Property Rights in Traditional and Indigenous Knowledge, 17 Ind. Int’l & Comp. L. Rev. 67 (2007).
[4] Ayoyemi Lawal Arowolo, African Traditional Intellectual Property Rights, Customary Law, and Legal Pluralism, 11 Afr. J. Legal Stud. 299 (2018–2019). at 302.
[5] Paul Kuruk, Traditional Knowledge, Genetic Resources, Customary Law and Intellectual Property: A Global Primer (2020), https://www.elgaronline.com/view/9781785368479/9781785368479.xml.
[6] Bulun Bulun v R & T Textiles Pty Ltd (1998) 86 FCR 244 (FCA).
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