Hi! Welcome to our blog for intellectual property law and practice in Latin America
Hola, bienvenido a nuestro blog de Derecho y práctica de la propiedad intelectual en Latinoamérica
Olá! Boa vinda a nosso blog para a lei da propriedade intelectual e a prática na América Latina

Legalizing Graffiti: Chilean Chamber of Deputies says YES!

From Chile, we received the news that the Chamber of Deputies approved a project that regulates urban graphic art.

Establishing a legal framework ‘that allows the creation of urban graphic art, as expressions of the urban visual arts, both in national public goods and in private goods, always with the prior consent of its owner’ is the aim of the project.

According to the Bulletin, the graphic creations that the law covers are ‘all those artistic works that consist of images or texts expressed freely in walls, undergrounds, bridges, tunnels, or other public goods’. In this case, the artists would need a permit granted by the municipality, competent authority or owner.’ The said permit would be free of charge and granted within 30 days from the date of the request.

Yet, Bulletin 11810 notes that the law will be considered if it follows these principles:
‘a) Advancement, respect, promotion and harmonious relationship between the right to freedom of expression and the right to live in a pollution-free environment, enshrined in the Constitution and International Treaties ratified by Chile and in force.
b) Promotion of an active and binding participation of civil society in decision-making regarding the spaces to be intervened for the development of urban graphic art.
c) Active collaboration among the various agencies responsible for encouraging the development of urban graphic art.
d) Consideration of urban graphic art as a tool for social inclusion, neighbourhood, and community identity.’
An exception to the urban art, which will not be tolerated, is the one that provokes hatred due to race, ethnicity or social group, sex, sexual orientation, gender identity, religion or belief, nationality, political or sports affiliation; the illness or disability suffered by a person or group of people, or promotes the use of weapons or violence.

Municipalities must ensure compliance with the provisions of this law. The Culture Committee will now consider the project.

Apart from graffiti been permitted in these circumstances, what else can we learn from this project?
There has been plenty of debate and thoughts from different parties on what is the state of affairs of graffiti towards the copyright system. Is graffiti art? Art written in trains and walls bring matters to discussion in copyright law, for example: originality comes to mind, authorship, joint authorship, tangibility; reproduction; ownership and intellectual common, to name a few. Besides these, we need to think about moral rights. Indeed, by the project recognizing graffiti as an artistic work, we cannot challenge it, because as any other type of work, it is open to protection under copyright.
The courts in Latina America are willing to protect outside the box [giving me more confidence that graffiti will be actually protected under copyright]. For example in Argentina the CAMARA CIVIL - SALA J (Civil Chamber) granted protection to a make-up sanctioning the defendant to payment for infringement of economic and moral rights (here). In the European courts, specifically in the UK fixation for this type of work either the graffiti or the make-up will be problematic. There is a lack of clarity regarding the requirement of permanence for artistic works. This is noticeable in cases such as Creation Records and Metix v Maughan as well as Merchandising Corporation of America v Harpbond (known as the Adam Ant case).
This debate of ‘fixation’ has also received some debates when the work is a tattoo and no doubt it will received some interesting discussion in the case of graffiti.

Latin America keeps speeding...

Continuing with yesterdays report and PPHs in Latin America, here comes another one…INAPI (IPO in Chile) and the USPTO (the United States Patent and Trademark Office) had signed a memorandum of understanding for the implementation of the accelerated patent procedure called Patent Prosecution Highway (PPH). The pilot will come into effect from November 01, 2018.

Speeding the process...
As noticed in yesterday news, the program allows national patent applications, which have a favourable resolution issued by the national IPO, to expedite the processing of their corresponding applications, filed with the USPTO – and vice versa.

In Latin America, several bilateral agreements have been signed between national patent offices to promote this project and thus, enabling applications to request, if they wish, the accelerated process PPH. The process is faster because the national offices will share the ‘search’ and ‘examination’ results. Yet, the final decision, that is, the granting will be left to the corresponding IPO.

Source INAPI.
More info on PPH here.

Peru: User Satistaction Survey (USS) tool

Back in September 2018, the Peruvian National Institute for the Defence of Free Competition and Protection of Intellectual Property (INDECOPI) implemented the User Satisfaction Survey (USS) tool. This tool allows IPOs, which have a single, common approach to carry out surveys among participating IP offices. Used by the EU IPOs, this tool is now extended to non-EU IP offices. At the moment, there are seven non-EU IPOs that are using this tool: Bosnia and Herzegovina, Macedonia, India, Albania, Georgia, Serbia and Peru.

Source EUIPO.

Agreements among Intellectual Property Offices: do they work?

Reading the news from the national IPO in Peru (INDECOPI)  countless times this blog has reported on agreements between IPOs. Specifically, I usually report on the accelerated patent procedure - Patent Prosecution Highway (PPH) [and posting a photo of ‘speedy Gonzalez’ next to the news]. This process accelerates the granting of a patent in a particular country, if the application for the ‘same patent’ has been made first in another IPO (the other party on the agreement) and has a favourable patentability examination.

Peru has signed PPH with Spain, Japan; ‘the countries that make up the Pacific Alliance (Colombia, Mexico and Chile) and the PROSUR countries (Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay, Uruguay and Costa Rica, eight of the 13 that recognize the PPH).’

Because of the agreements and the simplification of a PPH, the National Institute of Industrial Property of Chile (INAPI) became the first office that grants a patent to a Peruvian inventor.
The invention in question ‘allows preserving for a longer time the life of vegetables, such as fresh and precooked vegetables; as well as whole fruits and pulp.’ In 2017 Zucchetti Espinoza, the inventor, obtained a patent for his invention in Peru.

Good to see matters in practice.

More info on PPH here.

Intellectual Property and the Protection of Intangible Cultural Heritage: Emerging Themes and Challenges in Transboundary and Diaspora Contexts

As you may recall, we were organizing a session at the Association of Critical Heritage Studies which took place in China. This was held in early September, 2018 and I have now took the time to write a report on this.

The aim of the session was to examine the relationship between IP and ICH and to look at the intersection of IP and ICH policies. The five speakers had a background in IP with an interest in ICH. Papers were brilliantly presented: covering from copyright to GIs, and from patents to sui generis rights. Moreover, the papers covered different regions and or countries, which was indeed a bonus.

  1. Starting the session I talked about ‘ICH Safeguarding and IP Protection: Are they sufficient to knit a future for the Aymara’s weavers’. The aim was to examine the five-year project (presented by the Aymara’s people to protect and safeguard their TK) that was supported by UNESCO. Putting aside the debate that continues to exist of whether IP or sui generis right is the best way to protect, the purpose was to look at how IP can be of use in the protection and safeguarding of Aymara’s handicraft. The case studied was selected as the Aymara’s people has managed to work very well together, considering that they are situated in Bolivia, Chile and Peru. How IP will work in a transboundary situation was discussed by examining Pisco, a GI in dispute between Chile and Peru, and how they individually negotiate this GI with other countries when signing trade agreements.
  2. Prof Gyooho Lee title was ‘How to make creative transmissions possible under the intangible cultural heritage law in Republic of Korea’. Starting with a few examples of some national ICH he focused on the Pasnori (Epic Chant) which is one of the Korean ICH inscribed on the UNESCO list. Then he went on to examine the Korean Cultural Property Protection Act noting that ‘the preservation and promotion of ICH’, according to the Act, should be stipulated by separate Acts. An interesting fact was to learn that in Korea, ‘transmission’ of archetypes are to be regarded as the key factor for the government to approve cultural heritage as intangible cultural property.The differences between Intangible Cultural Property (Domestically) and Intangible Cultural Heritage (Implementing UNESCO Convention) were covered, remarking the debate on owners vs holders (individual or collective). To finish up he put forward the legal challenges such as the transparency of processes; the scope of terms; and finding the right balance between ICH and IP; to name a few.
  3. Prof Pamela Andanda spoke about ‘Protecting transboundary traditional medical knowledge in southern Africa through community codes and protocols’. This paper not only covered the definitions and procedures but also covered the current IP gap in protecting & safeguarding TMK. She based her talk on case studies such as ‘the Biocultural Protocol of the Traditional Health Practitioners of Bushbuckridge’ and the ‘San Code of Research Ethics’, raising the importance of valuing prior informed consent, pointing out to ‘always to enter through the door rather than the windows’. The five values reflected in the Code of Ethics: respect; honesty; justice and fairness; care; and process, should work for every case and likewise, shall be considered in any project. At the end, as she clearly stated, we are working on cultural heritage ‘with’ a community rather than ‘on’ the community.
  4. Dr Peter Harrison made powerful statements and facts about the pharmaceutical industry (which Prof Andanda was eager to discuss and exchange ideas). His presentation was on ‘Tangled Webs, Blurred Lines and Distal Horizons. Investigating the Justifiable Downstream Limits to the Positive Protection of Traditional Knowledge Associated with Genetic Resources (TKAGR): The Impact of Treating TKAGR as Intangible Cultural Heritage?’ The flowchart on the pathway of knowledge through drug discovery was very helpful as one became aware of the complexity of downstream and how this may be underestimated during negotiations. The research looks at to establish if a discovery linked to TK (no matter how distal it is) by a chain of causation is sufficient to merit a veto over its use.
  5. On closing, Prof Christoph Anton talked about ‘Intellectual Property and the Business of Intangible Cultural Heritage in Asia: Cross-Border Disputes and Community Concerns’. His attention was on the economic opportunities that has flourished with ICH and how this had recovered the debates on ownership, benefits’ sharing and ‘appropriateness’. He covered the potential of IP for some ICH but also looked at the other side of the coin, that is, the limitations of IP. An interesting point put forward was that, the local plant varieties on Indonesia are owned by the community but controlled by the State. With this in mind, we all think about benefit sharing especially if this policy works in countries where there is high corruption.
If you are interested in any of this papers and debates, please contact the corresponding author:
Dr Patricia Covarrubia, The University of Buckingham, UK
Prof Gyooho Lee, Chung-Ang University School of Law, Seoul, Republic of Korea
cion2004@hanmail.net; ghlee@cau.ac.kr
Prof Pamela Andanda, University of the Witwatersrand, Johannesburg, South Africa
Dr Peter Harrison, University of York, UK
Prof Christoph Antons, The University of Newcastle, Australia
 wish you would have been there. Hangzhou, Sep 2018

Patentability of polymorphs: the interpretation of novelty and inventive step in Brazil

The title corresponds to a recent article published in the Journal of Intellectual Property Law and Practice (Oxford University Press) available here. This piece came as a collaboration between myself and Fernando Seixas, a Pharmacist and Patent Specialist based in Rio de Janeiro, Brazil.

The article reviews a couple of decisions by the Brazilian National Institute of Industrial Property (INPI) concerning patent applications of polymorphs and their counterparts in the EU and the US. The aim was to note inconsistencies in regards to the mere interpretation of concepts and therefore, to make aware applicants in how these terms are used in practice on the requirements of ‘novelty’ and ‘inventive step’.

Fernando has also written on this blog and we are always happy to receive and hear about your projects, and your interest. We more than welcome collaborations, and are indeed happy to facilitate networking in IP in Latin America.

Peru: A red card for Roja Directa

In Peru, the Copyright Commission, which is branch of the National Institute for the Defense of Competition and the Protection of Intellectual Property (INDECOPI), announces that it has issued two precautionary measures Resolutions No. 444-2018 / CDA-INDECOPI and No. 445-2018 / CDA-INDECOPI ) against a webpage.

The Commission has ordered the blocking of the website named ‘Roja Directa’, which facilitates illicit access to the transmission of various sporting events, in particular, football matches. For example,a bit of a search would indicate that they are the 'world's biggest index of sport streams'. The Resolutions were imparted to Telefónica del Perú S.A.A. and América Móvil Perú S.A.C., both Internet service providers. They shall proceed to block the website called 'Roja Directa' which contains several e-addresses. [Back in 2015 we may remember that in Spain a court also requested 'Roja Directa' to immediately cease its dissemination activity which was through the provision of links, of the football matches of the Spanish League and the Copa del Rey].

Roja Direct was infringing copyright and secondary rights as it contained a list of links that were transmitting simultaneously a sport event without having neither a license nor authorization by the company Fox Latin American Channel LLC (the right holders).The Decision No. 486 establishes the Common Industrial Property Regime of the Andean Community (Bolivia, Colombia, Ecuador and Peru are all members) and, the Decreto Legislativo N° 822 de 23 de abril de 1996 regulates Copyright. In the latter, it is noted that the economic rights, derived from the property of a copyrighted work, grants the author (owner) the right to prevent third parties from: communicating to the public, reproducing, distributing and transforming the work. It is strongly advised to register copyright in Peru, although it is not compulsory.

The precautionary measure was requested by Fox Latin American Channel LLC in order to protect its rights. Currently there are collecting societies in Peru such as: APDAYC for the authors and composers of musical works; UNIMPRO for phonogram producers; EGEDA PERÚ for audio-visual producers and; APSAV for visual artists. They are non-profit organizations.