See discussions, stats, and author profiles for this publication at: https://www.researchgate.

net/publication/329417949

Cultural Heritage and Intellectual Property

Chapter · December 2018

CITATIONS READS

7 4,786

1 author:

Mira Burri
Universität Luzern
177 PUBLICATIONS 1,076 CITATIONS

SEE PROFILE

All content following this page was uploaded by Mira Burri on 05 December 2018.

The user has requested enhancement of the downloaded file.

Forthcoming in The Oxford Handbook of International Cultural Heritage Law, edited by
Francesco Francioni and Ana Vrdoljak (Oxford University Press, 2019)

CULTURAL HERITAGE AND INTELLECTUAL PROPERTY

Mira Burri*

I. INTRODUCTION
The protection of both cultural heritage and intellectual property is intrinsically
related to creativity – to sustaining and fostering it over the years, to making sure that
it flourishes for the benefit of not only the right-holders but the society as a whole. It
may thus appear intuitive to link cultural heritage and intellectual property and to
seek the application of common rules and institutions. This chapter will show
however that cultural heritage is not easily subsumed under existing intellectual
property rights and while both national and international legal frameworks have
evolved to address the protection of different types of cultural expressions, there is no
perfect match and indeed, we often encounter profound underlying tensions between
the protection of cultural heritage and contemporary models of intellectual property
rights’ protection. These tensions are reflected in the complex and fragmented
governance environment, characterized by multiple interacting institutions and
defined by the diverging interests of major actors.1
The chapter starts with a brief introduction to some of the key concepts and the key
legal institutions relevant for the protection of intellectual property and its interface
with cultural heritage and intangible cultural heritage in particular. It then proceeds
with exploring in how far discrete intellectual property rights, such as patent,
copyright or trademarks, can protect expressions of cultural heritage. The chapter
maps the mismatches and the gaps and asks whether these can be addressed in some
viable way – be it through adjusting the existing rules or through the creation of new
tailored models of protection. This analysis will not be descriptive only; it will also
include a deeper contemplation of whether such developments are desirable, who
benefits from them and who does not, and whether overall, we need to further pursue
the linkage between cultural heritage and the intellectual property regime.

*
Senior lecturer, University of Lucerne, Switzerland.
1
See e.g. Laurence R. Helfer, “Intellectual Property and Human Rights: Mapping an Evolving and
Contested Relationship”, in Rochelle Dreyfuss and Justine Pila (eds), The Oxford Handbook of
Intellectual Property Law (Oxford: Oxford University Press, 2017), 117-143.
2

II. INTANGIBLE CULTURAL HERITAGE IN THE INTELLECTUAL PROPERTY

DISCOURSE
The recognition of “intangible cultural heritage” and the need for its preservation
have been some of the key, although relatively recent, developments in international
heritage law.2 It is not the purpose of this chapter to map these developments3 but
rather to reveal the relationship between international cultural heritage and concepts
and institutions of intellectual property law. It suffices to say from the outset that this
relationship has been contentious and still remains so. This is on the one hand due to
the different approaches chosen to ensure the protection of cultural heritage – one that
can be framed as a human rights approach that is also institutionally linked to the
United Nations (UN) and the United Nations Educational Social and Cultural
Organization (UNESCO), and one that is based on intellectual property type of
protection and primarily linked to the World Intellectual Property Organization
(WIPO).4 This “division of labour” is not stringent and there have been attempts to
bridge the discussions. The relationship between cultural heritage and intellectual
property has been problematic, also because, as the chapter later shows, there are
certain mismatches between the legal rules for cultural and intellectual property
protection and the underlying rationales for both these sets of rules. Finally, it needs
to be mentioned that the contentious nature of the relationship between cultural
heritage and intellectual property rights protection has been over time only
exacerbated because the contexts in which this relationship has developed, have
become more complex. They have been redefined by the sweeping changes of
economic and cultural globalization and by entirely new and far-reaching
technological advances. To make matters even more complicated, these
transformations cannot be neatly checked into the boxes of “positive” or “negative”
for the protection of intangible cultural heritage or for the interests of indigenous and
local communities. Some of them can be seen as a threat to the existence and practice
of traditional culture, while new technologies may have at the same time also offered
unprecedented opportunities for both cultural preservation and cultural dissemination.
These different implications are clearly discernible in all discussions on whether and
how intangible cultural heritage can be protected with the toolbox of intellectual
property law.

A. Definitions
A good starting point for introducing the debates on the applicability of intellectual
property rights for intangible cultural property is clarifying the object of protection.

2
See e.g. Janet Blake, Preliminary Study into the Advisability of Developing a New Standard- setting
Instrument for the Safeguarding of Intangible Cultural Heritage (“Traditional Culture and Folklore”)
(Paris: UNESCO, 2001), at 2-5; Lucas Lixinski, Intangible Cultural Heritage in International Law
(Oxford: Oxford University Press, 2013), 1-25.
3
See chapter 16 of this Handbook.
4
See e.g. Blake, supra note 2.
Burri 3

The definition of intangible heritage has been one of the most contentious issues
during the negotiations of the UNESCO Convention on Intangible Cultural Heritage.5
The 2003 Convention ultimately subscribed to a broad definition and intangible
cultural heritage is said to encompass “the practices, representations, expressions,
knowledge, skills – as well as the instruments, objects, artefacts and cultural spaces
associated therewith – that communities, groups and, in some cases, individuals
recognize as part of their cultural heritage”.6 It can be manifested inter alia in the
following domains: (a) oral traditions and expressions, including language as a
vehicle of the intangible cultural heritage; (b) performing arts; (c) social practices,
rituals and festive events; (d) knowledge and practices concerning nature and the
universe; (e) traditional craftsmanship.7 In the negotiations and in previous drafts of
the 2003 Convention, it was common that traditional culture and folklore were also
mentioned as elements of intangible cultural heritage, following up on the 1982
Declaration on the Protection of Folklore,8 but these terms were often found prone to
misinterpretation and laden with negative connotations that do not truthfully reflect
the living nature of culture. The Special Rapporteur in the field of cultural rights has
noted in this regard that, although no uniform definition for cultural heritage exists,
several international instruments and a number of references relating to traditional
knowledge and traditional cultural expressions provide useful guidance for defining
what is usually understood as cultural heritage.9 She added further that cultural
heritage should be understood as resources enabling the cultural identification and
development processes of individuals and communities which they, implicitly or
explicitly, wish to transmit to future generations.10 In the context of indigenous
peoples’ rights, this link has only been reinforced. Article 31 of the Declaration on the
Rights of Indigenous Peoples has gone decisively a step further and states that:
“Indigenous peoples have the right to maintain, control, protect and develop their
cultural heritage, traditional knowledge and traditional cultural expressions, as well as
the manifestations of their sciences, technologies and cultures, including human and

5
See e.g. Francesco Francioni, “The Specificity of Intangible Heritage as an Object of International
Protection”, paper presented at the UNESCO International Round Table “Intangible Cultural Heritage
– Working Definitions”, Turin, 14-17 March 2001; UNESCO, Final Report, International Round Table
on “Intangible Cultural Heritage – Working Definitions”, Turin, 14-17 March 2001.
6
UNESCO, Convention for Safeguarding of the Intangible Cultural Heritage, 17 October 2003, in
force 20 April 2006, 2368 UNTS 1 (hereinafter Convention on Intangible Heritage or 2003
Convention), at Article 2(1).
7
Ibid., at Article 2(2).
8
UNESCO, Recommendation on the Safeguarding of Traditional Culture and Folklore, Paris, 16
November 1989.
9
United Nations General Assembly, Report of the Independent Expert in the Field of Cultural Rights,
Farida Shaheed, A/HRC/17/38, 21 March 2011, at para. 4.
10
Ibid., at para. 5. Similarly, the Council of Europe Framework Convention on the Value of Cultural
Heritage for Society (CETS No.199, Faro, 27 October 2005) defines cultural heritage in its Article 2 as
“a group of resources inherited from the past which people identify, independently of ownership, as a
reflection and expression of their constantly evolving values, beliefs, knowledge and traditions. It
includes all aspects of the environment resulting from the interaction between people and places
through time”.
4

genetic resources, seeds, medicines, knowledge of the properties of fauna and flora,
oral traditions, literatures, designs, sports and traditional games and visual and
performing arts. They also have the right to maintain, control, protect and develop
their intellectual property over such cultural heritage, traditional knowledge, and
traditional cultural expressions”.11 The message of the Declaration on the Rights of
Indigenous Peoples is strong, despite its non-binding legal character. 12 For the
purposes of this chapter’s analytical focus, it is critical to stress that the Declaration
makes a clear link to intellectual property protection, as well as uses the terminology
that WIPO has adopted in its work on drafting new instruments for the protection of
the traditional cultural expressions (TCE) and traditional knowledge (TK).13 These
are the two terms that we clarify in turn in the next section before trying to subsume
them under existing forms of intellectual property protection.

B. TCE and TK
Although a number of definitions of TCE exist in national and regional laws and in
international instruments, 14 there is presently no internationally settled common
definition. During the work of the WIPO Intergovernmental Committee on
Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore
(IGC), various options have been discussed.15 Pursuant to the provisional definition
agreed upon in the latest Draft Articles,16 “[t]raditional cultural expression means any
form of [artistic and literary], [other creative, and spiritual,] [creative and literary or
artistic] expression, tangible or intangible, or a combination thereof, such as actions,17
materials,18 music and sound,19 verbal20 and written [and their adaptations], regardless

11
United Nations, Declaration on the Rights of Indigenous Peoples, G.A. Res. 61/295, U.N. Doc.
A/RES/47/1 (2007) (emphases added).
12
See Peter-Tobias Stoll, “Intellectual Property and Technologies in Article 31”, in Jessie Hohmann
and Marc Weller (eds), The UN Declaration on the Rights of Indigenous Peoples: A Commentary
(Oxford: Oxford University Press, 2018); also Susy Frankel, “Using Intellectual Property Rules to
Support Self-determination Goals of Indigenous Peoples”, in Christophe Geiger (ed), Research
Handbook on Human Rights and Intellectual Property (Cheltenham: Edward Elgar, 2015), 627-658.
13
Frankel, ibid., at 628.
14
See e.g. WIPO, Traditional Knowledge: Operational Terms and Definitions, WIPO/GRTKF/IC/3/9,
20 May 2002; WIPO, The Protection of Traditional Cultural Expressions/Expressions of Folklore:
Updated Draft Outline of Policy Options and Legal Mechanisms, WIPO/GRTKF/IC/9/INF/4, 27
March 2006, as referred to by WIPO, The Protection of Traditional Cultural Expressions: Draft Gap
Analysis, WIPO/GRTKF/IC/13/4(b) Rev., 11 October 2008, at 3 (hereinafter TCE Gap Analysis).
15
WIPO, Glossary of Key Terms Related to Intellectual Property and Genetic Resources, Traditional
Knowledge and Traditional Cultural Expressions, WIPO/GRTKF/IC/20/INF/13, 7 December 2011.
16
WIPO, The Protection of Traditional Cultural Expressions: Draft Articles, WIPO/GRTKF/IC/34/8, 7
June 2017 (hereinafter the TCE Draft Articles).
17
[Such as dance, works of mas, plays, ceremonies, rituals, rituals in sacred places and peregrinations,
games and traditional sports/sports and traditional games, puppet performances, and other
performances, whether fixed or unfixed].
18
Such as material expressions of art, handicrafts, ceremonial masks or dress, handmade carpets,
architecture, and tangible spiritual forms, and sacred places].
19
[Such as songs, rhythms, and instrumental music, the songs which are the expression of rituals].
Burri 5

of the form in which it is embodied, expressed or illustrated [which may subsist in

written/codified, oral or other forms], that are [created]/[generated], expressed and
maintained, in a collective context, by indigenous [peoples] and local communities;
that are the unique product of and/or directly linked with and the cultural [and]/[or]
social identity and cultural heritage of indigenous [peoples] and local communities;
and that are transmitted from generation to generation, whether consecutively or
not”.21 It is also clarified that traditional cultural expressions may be “dynamic and
evolving”.22
This definition (and the many bracketed clarifications) already give a sense of the
staggeringly wide range of expressions that qualify as TCE, comprising both “pre-
existing materials dating from the distant past that were once developed by ‘authors
unknown’ through to the most recent and contemporary expressions of traditional
cultures, with an infinite number of incremental and evolutionary adaptations,
imitations, revitalizations, revivals and recreations in between”. 23 The essential
qualification that sets these expressions apart from any other cultural expression is the
“defining characteristic of ‘traditional’”,24 whereby all creations “identify a living
tradition and a community that still bears and practices it”.25
Despite the above guidelines on identifying TCE, it should be noted that the term
“TCE” may often be an ill-suited, somewhat artificially constructed shortcut to
depicting an extremely complex reality whose limits are indefinable and whose
elements may be in themselves complex notions, such as the concept of “dreaming”
of Australia’s indigenous peoples.26 TCE are also not a static but a highly dynamic,
living system, which is constantly in the process of renegotiation, innovation and
creation.27 Furthermore, and accounting for the indigenous perspective, it ought to be
acknowledged that indigenous communities may commonly “regard all products of
the human mind and heart as interrelated, and as flowing from the same source: the
relationships between the people and their land, their kinship with the other living
creatures that share the land, and with the spirit world”.28

20
[Such as stories, epics, legends, popular stories, poetry, riddles and other narratives; words, signs,
names and symbols].
21
Article 2 of the WIPO Draft TCE Articles (footnotes and brackets in the original). The Draft Articles
include also an alternative and shorter definition: “Traditional cultural expressions comprise the
various dynamic forms which are created, expressed, or manifested in traditional cultures and are
integral to the collective cultural and social identities of the indigenous local communities and other
beneficiaries”.
22
Ibid.
23
WIPO, TCE Gap Analysis, Annex 1, at 3.
24
WIPO, TCE Gap Analysis, Annex 1, at 4.
25
Ibid.
26
See Howard Morphy, Aboriginal Art (London: Phaidon, 1998), at 67-100.
27
Michael F. Brown, “Can Culture Be Copyrighted?”, Current Anthropology 39 (1998), 193-206, at
196.
28
Erica-Irene Daes, Discrimination against Indigenous Peoples: Study on the Protection of the Cultural
and Intellectual Property of Indigenous Peoples, E/CN.4/Sub.2/1993/28 (New York: United Nations
Economic and Social Council, Commission on Human Rights, 1993), at para. 21.
6

The indigenous peoples’ demands for protecting and promoting TCE are accordingly
heterogeneous. 29 In a narrow context that this chapter addresses, indigenous
communities have strived for intellectual property protection. They wish to
distinguish however this “IP protection” from “the ‘safeguarding’, ‘preservation’ and
‘promotion’ of cultural heritage, which refer generally to the identification,
documentation, transmission and revitalization of tangible and intangible cultural
heritage in order to ensure its maintenance or viability”.30 Indigenous peoples do also
acknowledge that many of their aspirations relating to TCE may be addressed by non-
IP measures targeted at preservation and promotion of cultural heritage, as well as by
other tools, such as those developed under communities’ customary laws.31
It appears ultimately that when we talk about “TCE protection” in the IP sense and
although repeatedly stressing the dynamic character of TCE, the “current disputes
center on items of TK as they now exist”.32 The concrete goals pursued through the IP
protection may however differ. On the one hand, some communities wish to claim
and exercise IP in their TCE to enable them to exploit them commercially as a
contribution to economic development. On the other hand, some communities wish to
exercise IP rights in order to prevent the use and commercialization of their TCE by
others, including culturally offensive or demeaning use, and use that inaccurately
represents their cultures. Finally, many communities are concerned with preventing
others from gaining or maintaining IP over their TCE. This would entail defensive
mechanisms to block third parties’ IP rights if these are considered prejudicial to the
community’s interests or IP rights obtained without the consent of the community -
the so-called “defensive protection”.33
The same complexity in defining concepts and in linking them to modes of protection
is valid for TK. Similarly to TCE, there is presently no accepted definition of TK at
the international level. TK as a broad description of the subject matter includes the
intellectual and intangible cultural heritage, practices and knowledge systems of
traditional communities, including indigenous and local communities. In other words,
traditional knowledge in a general sense embraces the content of knowledge itself, as
well as traditional cultural expressions, including distinctive signs and symbols
associated with traditional knowledge. In the international discourse, TK in the
narrow sense refers to knowledge as such, in particular the knowledge resulting from
intellectual activity in a traditional context, and includes know-how, practices, skills

29
Indigenous communities strive also for the achievement of a number of other objectives, such as
self-determination or restitution of property. See e.g. Rosemary J. Coombe, “The Properties of Culture
and the Possession of Identity: Postcolonial Struggle and the Legal Imagination”, in Bruce Ziff and
Pratima V. Rai (eds), Borrowed Power: Essays on Cultural Appropriation (New Brunswick: Rutgers
University Press, 1997), 74-96. See also UN Declaration on the Rights of Indigenous Peoples, supra
note 11.
30
WIPO, TCE Gap Analysis, Annex 1, at 7.
31
Ibid.
32
Stephen R. Munzer and Kal Raustiala, “The Uneasy Case for Intellectual Property Rights in
Traditional Knowledge”, Cardozo Arts and Entertainment Law Journal 27 (2009), 37-97, at 48.
33
WIPO TCE Gap Analysis, Annex 1, at 8.
Burri 7

and innovations. TK can be then found in a wide variety of contexts, including

agricultural, scientific, technical, ecological, biodiversity-related and medicinal
knowledge, including related medicines and remedies.34
The latest WIPO Draft Articles on TK specify that eligible for protection traditional
knowledge must be distinctively associated with the cultural heritage of indigenous
peoples and local communities, and be created, generated, developed, maintained,
and shared collectively, as well as transmitted from generation to generation for a
term as has been determined by each Member State, but not less than for 50 years or a
period of five generations.35 There is no uniform (nor uncontested) way of providing
this protection – it may vary according to the specificities of TK, depending on
whether it is secret, sacred, narrowly or widely diffused.36 Importantly, one of the
discussed policy objectives of the treaty dedicated to TK would be “to
[ensure][support] the [appropriate use] [protection] of traditional knowledge within
the intellectual property system, in accordance with national law, recognizing the
rights of [traditional knowledge holders][beneficiaries]”.37
Leaving the “quicksands of definitions”,38 in the following, we set out the explore
what the exiting opportunities for TK/TCE protection under the existing IP regime.
After a brief introduction into the existing IP framework, we move on to a more
concrete attempt to match different types of IP rights with demands for TK/TCE
protection by looking at patent, trademark and copyright in more detail.39

34
WIPO, Glossary of Key Terms, supra note 15, Annex, at 42, referring also to WIPO, Intellectual
Property Needs and Expectations of Traditional Knowledge, Report on Fact-finding Missions on
Intellectual Property and Traditional Knowledge (1998-1999), at 25.
35
WIPO, The Protection of Traditional Knowledge: Draft Articles Facilitators’ Review 2, 2 December
2016. The text list also an alternative definition, whereby different types of TK are also defined. These
include secret traditional knowledge, sacred traditional knowledge, narrowly diffused traditional
knowledge and widely diffused traditional knowledge. The UN Committee on Economic, Social and
Cultural Rights applies a broader notion of protection. In its General Comment No 17 (at para. 32), it
clarified with specific regard to indigenous peoples that, “States parties should adopt measures to
ensure the effective protection of the interests of indigenous peoples relating to their productions,
which are often expressions of their cultural heritage and traditional knowledge. […] Such protection
might include the adoption of measures to recognize, register and protect the individual or collective
authorship of indigenous peoples under national intellectual property rights regimes and should prevent
the unauthorized use of scientific, literary and artistic productions of indigenous peoples by third
parties”.
36
For definitions, WIPO, The Protection of Traditional Knowledge: Draft Articles Facilitators’ Review
2, at 7.
37
WIPO, The Protection of Traditional Knowledge: Draft Articles Facilitators’ Review 2, at Article 1
(emphasis added).
38
Peter Drahos and Susy Frankel, “Indigenous Peoples’ Innovation and Intellectual Property: The
Issues”, in Peter Drahos and Susy Frankel (eds), Indigenous Peoples’ Innovation: Intellectual Property
Pathways to Development (Canberra: Australian National University Press, 2012), at 9.
39
For a fully-fledged analysis, see e.g. Silke von Lewinski (ed), Indigenous Heritage and Intellectual
Property: Genetic Resources, Traditional Knowledge and Folklore, 2nd edn. (Alphen aan den Rijn:
Kluwer Law International, 2008); Matthew Rimmer (ed), Indigenous Intellectual Property: A
Handbook of Contemporary Research (Cheltenham: Edward Elgar, 2015).
8

III. INTERFACING CULTURAL HERITAGE AND INTELLECTUAL PROPERTY

PROTECTION

A. Intellectual Property Law

“Intellectual property” is a general term that refers to a variety of legal mechanisms
that protect intangible property rights.40 Unlike real property, which can be protected
by certain physical means, intellectual property is mainly protected by sets of
enforceable rights. Much of the justification of the legal institution of intellectual
property stems from the nature of public goods.41 It is argued that creative artefacts
resemble public goods and public goods possess the specific features of being non-
rivalrous and non-exclusive – in contrast to private goods, they can be consumed by
more than one person simultaneously and cannot be sequestered. For rational
consumers, there is then a tendency to free ride on public goods.42 As a consequence,
there may be no incentives to create these public goods and they may be
undersupplied in a society. The intellectual property right, in particular in the domain
of patent and copyright, is there to remedy this situation by giving its holder a
temporary and limited monopoly over her creations, so that she can reap the benefits
of this exclusive right and be so incentivized to create new works.43 In essence and as
the US Constitution rather beautifully frames it, the intellectual property protection
model was put in place “[t]o promote the Progress of Science and useful Arts, by
securing for limited Times to Authors and Inventors the exclusive Right to their
respective Writings and Discoveries”.44

40
Under IP as a general category, one understands the rights granted to creators and inventors to
control the use made of their productions. They are traditionally divided into two main branches: (i)
“copyright and related (or neighbouring) rights” for literary and artistic works and (ii) “industrial
property”, which encompasses trademarks, patents, industrial designs, geographical indications,
layout-designs of integrated circuits. For an introduction into intellectual property law, see e.g.
William Cornish, David Llewelyn and Tanya Aplin, Intellectual Property: Patents, Copyrights,
Trademarks and Allied Rights (London: Sweet and Maxwell, 2013); Frederick M. Abbott, Thomas
Cottier and Francis Gurry, International Intellectual Property in an Integrated World Economy, 3rd edn.
(New York: Wolters Kluwer, 2015); Tanya Aplin and Jennifer Davis, Intellectual Property Law: Text,
Cases, and Materials (Oxford: Oxford University Press, 2016).
41
The utilitarian theory is not the only one in intellectual property rights doctrine. There are many
others that relate for instance to author’s rights, the author’s labour, or the broader idea of social
welfare. See e.g. Peter Drahos, A Philosophy of Intellectual Property (Aldershot: Ashgate, 1996);
Rosemary Coombe, The Cultural Life of Intellectual Properties: Authorship, Appropriation and the
Law (Durham, NC: Duke University Press, 1998; James Boyle, The Public Domain: Enclosing the
Commons of the Mind (New Haven, CT: Yale University Press, 2008); Robert P. Merges, Justifying
Intellectual Property (Cambridge, MA: Harvard University Press, 2011).
42
Mark Lemley, “Property, Intellectual Property, and Free Riding”, Texas Law Review 83 (2005),
1031-1075.
43
For a great introduction to the law and economics of intellectual property, see Dan L. Burk, “Law
and Economics of Intellectual Property: In Search of First Principles”, The Annual Review of Law and
Social Science 8 (2012), 397-414, at 400.
44
US Constitution, at Article I, Section 8, para. 8.
Burri 9

Over the years, intellectual property law has developed a broad palette of increasingly
sophisticated tools.45 They can be used “to protect both traditional and new forms of
symbolic value produced in particular places as they circulate in global commodity
markets”.46 Still, intellectual property protection shows substantial deficiencies. Such
limitations are embedded in the nature and the mechanisms of intellectual property
rights and relate to the centrality of authorship, originality and mercantilism intrinsic
to the “Western” legal model. A large number of non-Western, collaborative or
folkloric modes of production are consequently left outside the scope of its protection,
as we show below. Beyond the specific context of traditional culture, the intellectual
property law domain is defined by complex relationships between the private and the
public, between creativity, innovation and the incentives given by intellectual
property rights to promote them. Intellectual property law must, at least in theory,
strike a balance between the private interests of authors and the public interest in
enjoying broad access to their productions.47 Attaining this balance has not been easy
and the system has had overall a bias towards rightsholders’ interests, often
undervaluing the importance of the public domain and to the detriment of the
intellectual and cultural commons from which future creative works will be
constructed.48
The entertainment industries and other actors that monetize on strong intellectual
property have continuously asserted that intellectual property rights are the guarantee
of innovation and creativity and thereby, the single most important prerequisite for a
vibrant culture. While intellectual property protection certainly fulfils essential
economic functions in cultural production and distribution, 49 a direct causality

45
See e.g. Laurence R. Helfer, “Regime Shifting: The TRIPs Agreement and New Dynamics of
International Intellectual Property Lawmaking”, The Yale Journal of International Law 29 (2001), 1-
83.
46
Rosemary J. Coombe, Steven Schnoor and Mohsen Ahmed, “Bearing Cultural Distinction:
Informational Capitalism and New Expectations for Intellectual Property”, UC Davis Law Review 40
(2007), 891-917, at 916.
47
See e.g. Committee on Economic, Social and Cultural Rights, General Comment No. 17: The Right
of Everyone to Benefit from the Protection of the Moral and Material Interests Resulting from Any
Scientific, Literary or Artistic Production of Which He Is the Author (Article 15(1)(c)), UN Doc.
E/C.12/2005, 21 November 2005, at para. 35. On General Comment No 17, see Laurence R. Helfer,
“Towards a Human Rights Framework for Intellectual Property”, UC Davis Law Review 40 (2007),
971-1020; Peter K. Yu, “Reconceptualizing Intellectual Property Interests in a Human Rights
Framework”, UC Davis Law Review 40 (2017), 1039-1149; Hans Morten Haugen, “General Comment
No 17 on ‘Authors’ Rights’”, The Journal of World Intellectual Property 10 (2007), 53-69.
48
See e.g. Bellagio Declaration, adopted at the Rockefeller Conference: Cultural Agency/Cultural
Authority: Politics and Poetics of Intellectual Property in the Post-Colonial Era, 11 March 1993,
Bellagio, Italy, reproduced in James Boyle, Shamans, Software, and Spleens: Law and the
Construction of the Information Society (Cambridge, MA: Harvard University Press, 1996), at 196-200.
See also Niva Elkin-Koren and Neil W. Netanel (eds), The Commodification of Information (The
Hague: Kluwer Law International, 2002), 107-132; David Lange, “Reimagining the Public Domain”
(2003) Law and Contemporary Problems 66 (2003), 463-483.
49
See e.g. Wendy J. Gordon, “Intellectual Property”, in Peter Can and Mark Tushnet (eds), Oxford
Handbook of Legal Studies (Oxford: Oxford University Press, 2003), 617-646; William M. Landes and
10

between intellectual property (or stronger intellectual property) protection and

creativity is equivocal, if not flawed.50
In terms of the establishment of agreed legal principles and institutions, the
international intellectual property system is one of the oldest – dating back to the
1883 Paris Convention on the Protection of Industrial Property51 and the 1886 Berne
Convention on Artistic and Literary Works.52 Over the years, the intellectual property
legal regime has expanded and developed a network of sophisticated institutions at all
levels of governance – national, regional and international, with comprehensive
substantive and procedural norms. 53 The global IP regime is not however
institutionally contained, nor is it neatly organized – either in terms of treaties or in
terms of actors. It involves multiple organizations – some of which have overlapping
and even conflicting spheres of competence – such as the World Trade Organization
(WTO), the WIPO, the World Health Organization (WHO), the Food and
Agricultural Organization of the United Nations (FAO), the United Nations
Conference on Trade and Development (UNCTAD) and UNESCO, to name but a few.
It is beyond the scope of this chapter to engage in an analysis of the international
intellectual property regime, the web of relevant treaties and institutions, their
architecture and impact. For the purposes of our discussion, we wish to stress that
contemporary intellectual property governance is defined by complex dynamics, by
“currents and cross-currents” that go in different directions.54 One trend that is clearly
discernible in this dynamic is the “ratcheting-up” of international IP law-making,
whereby there is heightening of standards of protection and strengthening of
enforcement mechanisms. 55 The first and decisive step in this process was the
integration of intellectual property norms into the trade system through the

Richard A. Posner, The Economic Structure of Intellectual Property Law (Cambridge, MA: Belknap
Press of Harvard University, 2003), at 11-123.
50
See e.g. Lawrence Lessig, Free Culture: How Big Media Uses Technology and the Law to Lock
Down Culture and Control Creativity (New York: Penguin, 2004); Siva Vaidhyanathan, Copyrights
and Copywrongs: The Rise of Intellectual Property and How It Threatens Creativity (New York: New
York University Press, 2003); Julie E. Cohen, “Creativity and Culture in Copyright Theory”, UC Davis
Law Review 40 (2007), 1151-1205.
51
Paris Convention on the Protection of Industrial Property, 20 March 1883, last revised at Stockholm
14 July 1967 and as amended 28 September 1979, 828 U.N.T.S. 305.
52
Berne Convention for the Protection of Literary and Artistic Works, 9 September 1886, revised at
Paris, 24 July 1971 and as amended 28 September 1979, 828 U.N.T.S. 221.
53
Thomas Cottier and Marina Foltea, “Global Governance in Intellectual Property Protection: Does the
Decision-making Forum Matter?”, The WIPO Journal 3 (2012), 139-165.
54
Peter K. Yu, “Currents and Crosscurrents in the International Intellectual Property Regime”, Loyola
of Los Angeles Law Review 38 (2004), 323-443.
55
See e.g. Susan K. Sell, Private Power, Public Law: The Globalization of Intellectual Property Rights
(Cambridge: Cambridge University Press, 2003); Neil W. Netanel, “Why Has Copyright Expanded?
Analysis and Critique”, in Fiona Macmillan (ed), New Directions in Copyright Law: Vol. 6
(Cheltenham: Edward Elgar, 2007), 3-34; Susan K. Sell, “The Global IP Upward Ratchet, Anti-
counterfeiting and Piracy Enforcement Efforts: The State of Play”, PIJIP Research Paper 15 (2010),
1-22.
Burri 11

Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS).56 The

TRIPS created a set of global minimal standards for key forms of intellectual property
and linked IP law to the WTO’s dispute settlement system, which provides a uniquely
effective way of resolving conflicts at the international level, as well as for enforcing
their outcomes. 57 Also importantly for the present and future battlefields in
international IP law and policy, TRIPS created new types of issue linkages. As Chon
observes, “[t]he pre-TRIPs classic intellectual property mandate has taken on the
character of an invasive species in the post-TRIPs world, to maximize not just
innovation but also to drive economic growth and consolidate wealth on the part of
intellectual-property-exporting nations. This has opened a proverbial Pandora’s box
of issues related to intellectual property as a consequence of its being ‘trade-related’
[…]. Once linked to trade, subsequent linkages of intellectual property to other legal
regimes such as environmental law with its attendant jurisprudence of sustainable
development, human rights, public health, and so on, have followed”.58 In the past
three decades, we have seen in this context the emergence of multiple fields of
contestation and despite the strong “race-to-top” strategies of industrialized countries
in a post-TRIPS world, non-dominant actors, supported by civil society and often
facilitated in their concerted efforts by digital technologies, have not only reacted to
and opposed the current state of affairs but have also successfully formulated
meaningful pathways for change.59
The Development Agenda, adopted by the WIPO General Assembly in 2007,60 is
particularly relevant in this context, since it rejected a purely IP-centric view and
stressed the benefits of a rich and accessible public domain, access to knowledge, the
UN development goals, as well as the need to balance the costs and benefits of

56
Agreement on Trade-Related Aspects of Intellectual Property Rights, 1869 U.N.T.S. 299; 33 I.L.M.
1197 (1994), entered into force 1 January 1995.
57
See e.g. Ruth L. Okediji, “The TRIPS Dispute Settlement and the Sources of (International)
Copyright Law”, Journal of the Copyright Society of the USA 49 (2002), 585–648; Antonina
Bakardjieva Engelbrekt, “The WTO Dispute Settlement System and the Evolution of International
Intellectual Property Law: An Institutional Perspective”, in Annette Kur and Marianne Levin (eds),
Intellectual Property Rights in a Fair World Trade System: proposals for Reform of TRIPS
(Cheltenham: Edward Elgar, 2011), 106-166.
58
Margaret Chon, “A Rough Guide to Global Intellectual Property Pluralism”, in Rochelle Dreyfuss,
Harry First and Diane L. Zimmerman (eds), Working within the Boundaries of Intellectual Property
(Oxford: Oxford University Press, 2010), 445-469.
59
See e.g. Laurence R. Helfer, “Mediating Interactions in an Expanding International Intellectual
Property Regime”, Case Western Reserve Journal of International Law 36 (2004), 123-136; Amy
Kapczynski, “The Access to Knowledge Mobilization and the New Politics of Intellectual Property”,
The Yale Law Journal 117 (2008), 804-885; Jerome H. Reichman and Keith Maskus (eds),
International Public Goods and Transfer of Technology under a Globalized Intellectual Property
Regime (Cambridge: Cambridge University Press, 2005); Neil W. Netanel (ed), The WIPO
Development Agenda: Global Intellectual Property and Developing Countries (Oxford: Oxford
University Press, 2009).
60
WIPO Doc. A/43/16, at Annex A.
12

intellectual property protection.61 WIPO’s search for new forms that accommodate (i)
the preservation and safeguarding of intangible cultural heritage; (ii) the promotion of
cultural diversity; and (iii) the promotion of creativity and innovation, including
tradition-based forms, can be seen within this mandate.62 So far these efforts have not
been successful and we have not seem the emergence of a regime that is tailored to
the specific issues, concerns and interests in the field of cultural heritage. In the
following, we look at the existing rules for discrete types of intellectual property and
ask whether they can adequately address the need to protect, both offensively and
defensively, expressions of cultural heritage in the forms of TK and TCE.
Each form of intellectual property has a specific subject matter of protection. The
requirements for the grant of protection, the conditions and the duration of protection,
as well as the nature of the rights granted do differ across the types of intellectual
protection. While the TRIPS provides for minimum standards with regard to patent,
trademark, copyright, designs, layout-design of integrated circuits, trade secrets and
geographical indications, it leaves room for flexibility for going beyond these
standards of protection or in some cases, for rules that reflect national preferences and
sensitivities. In this sense and because presently no international instrument
prescribes common standards for TK/TCE protection, there is, at least to some extent,
flexibility to implement protective rules at the national level. It is also evident that
there can be substantial differences across jurisdictions. In the following, when
discussing patents, trademarks and copyright and their interface with TK and TCE,
we refer to the rules stemming from the TRIPS and the most common models
adopted in the key jurisdictions.63 We refer also to some cases that have specifically
targeted TK/TCE protection.

B. TK and Patents
Patents protect inventions. An invention is a product or a process that provides an
innovative way of doing something or offers a new technical solution to a problem. In
order to incentivize continuous innovation, as noted earlier, the patent gives its holder
certain exclusive rights. She may prevent others from making, using, offering for sale,
selling or importing for those purposes the invention during the patent term. But there
is a trade-off: this term is limited and does not exceed 20 years in most jurisdictions.
Also, when applying for a patent, it is critical that detailed information about the
invention is disclosed, which would enable others to make the invention without

61
Neil W. Netanel, “The WIPO Development Agenda and Its Development Policy Context”, in Neil
W. Netanel (ed., The Development Agenda: Global Intellectual Property and Developing Countries
(Oxford: Oxford University Press, 2009), 1-32, at 2.
62
WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional
Knowledge and Folklore, Consolidated Analysis of the Legal Protection of Traditional Cultural
Expressions, WIPO/GRTKF/IC/5/3, 2 May 2003, Annex, para. 8.
63
See e.g. Dan L. Burk, “Patents and Related Rights: A Global Kaleidoscope”, in Rochelle Dreyfuss
and Justine Pila (eds), The Oxford Handbook of Intellectual Property Law (Oxford: Oxford University
Press, 2017), 461-486.
Burri 13

undue experimentation. While the criteria for patentability may vary from country to
country, there are a few common conditions required for the grant of a patent:
(1) novelty is the first element and means that the invention must be new, not
known in the body of existing knowledge in the relevant technical field;
(2) inventive step, also referred to as non-obviousness, is the second requirement,
which demands that the invention is not be evident or obvious to a person
skilled in the art; and
(3) the third requirement is that of industrial applicability, or utility, which means
that the invention must be capable of being produced or used in any kind of
“industry” in the broad sense, or it must be useful and provide some practical
benefit.
TK may have difficulties in satisfying these criteria. The patent grant may be denied
in particular because often TK is neither novel nor non-obvious. Novelty is assessed
against the prior art and prior art encompasses anything that was known or disclosed
before the date that the patent application’s filing. TK may be considered prior art if it
has already been published; publicly used or orally disclosed. Indeed, in many
situations TK is part of prior art that has been documented, so it will not qualify as an
invention. Only in few cases have there been patents granted to indigenous people or
local communities - the patents were however granted for inventions developed using
TK but not for the TK itself.64 The existing examples that have led to a patent are
often linked to a collaboration between TK holders and research institutions that
further develop the traditional know-how and innovate around or on top of it. For
instance, the Chuulangun Aboriginal Corporation, which united descendants of a
focal Kuuku I'yu Northern Kaanju ancestor, and the University of South Australia
conducted research based on bush medicine plants and through testing specific
pharmacological activities could identify compounds that can be used in the treatment
of inflammation.65 A patent was granted and is now jointly owned by the University
and the Chuulangun Aboriginal Corporation. This is an excellent example of an
equitable partnership between indigenous communities and Western researchers in
the investigation of traditional medicinal plant knowledge, as the partners can decide
on how the compounds they identified will be commercialized and share the
economic benefits.66 Such a project also reflects well the aims defined in WIPO IGC
discussion, which wished to provide for the beneficiaries “the exclusive and
collective right to maintain, control, use, develop, authorize or prevent access to and
use/utilization of their traditional knowledge; and receive a fair and equitable share of
benefits arising from its use”, as well as their “moral right of attribution and the right
to the use of their traditional knowledge in a manner that respects the integrity of such

64
WIPO, Protect and Promote Your Culture, A Practical Guide to Intellectual Property for Indigenous
Peoples and Local Communities (Geneva: WIPO, 2017), at 37.
65
Australia Patent 2010317657, issued 19 May 2011, available at:
http://pericles.ipaustralia.gov.au/ols/auspat/applicationDetails.do?applicationNo=2010317657
66
See http://www.kaanjungaachi.com.au/KaanjuOilsDis.htm
14

traditional knowledge”.67 Yet, and this is an important issue that we will discuss
below in the context of copyright in more detail, such a patent protection is clearly
limited in time – the 20-year patent term, even if extended, is bound to come to an
end. Neither can patent be held by a clan group with all ancestors as a whole.68
In a more general sense, the Kuuku I'yu Northern Kaanju example illustrates how the
value of TK as an input into innovation has increased – an increase that has also been
driven by some exogenous factors – such as those related to globalized media and
digitally enabled access to information, which have made both TK and their
violations and the sophisticated modes of “Western” IP protection. A second
important factor is to the development of various scientific techniques to identify
genes and sequence genomes, which have permitted novel ways of using TK-related
natural resources.69
Because TK as prior art is an obstacle for the grant of a patent, it can be a very
effective tool of defensive protection. One well-known example relates to the US
patent procedure on the use of turmeric to augment the healing process of chronic and
acute wounds. The patent was initially granted, as the claimed invention was
considered novel at the time of application on the basis of the information then
available to the examining authority. The patent was subsequently challenged and
found invalid, as further documentation was made available, including ancient
Sanskrit texts, which demonstrated that the claimed invention was indeed already
known traditional knowledge.70
The information about TK is however not always readily available and as patent
examination procedures may differ substantially across jurisdictions, there is no
guarantee that the TK will be duly taken into account as prior art. Presently, there is
no specific international requirement that patent applicants should disclose the source
or origin of TK used in the claimed invention, nor to disclose information on prior
informed consent and equitable benefit sharing.71 In 2001, and as a reaction to the

67
WIPO, The Protection of Traditional Knowledge: Draft Articles Facilitators’ Review 2, at Article 5.
68
Susy Frankel, “Traditional Knowledge, Indigenous Peoples, and Local Communities”, in Rochelle
Dreyfuss and Justine Pila (eds), The Oxford Handbook of Intellectual Property Law (Oxford: Oxford
University Press, 2017), 758-790, at 778-779, referring also to David J. Claudie, Susan J. Semple,
Nicholas M. Smith and Bradley J. Simpson, “Ancient but New: Developing Locally Driven Enterprises
Based on Traditional Medicines in Kuuku I’yu Northern Kaanju Homelands, Cape York, Queensland,
Australia”, in Peter Drahos and Susy Frankel (eds), Indigenous Peoples' Innovation: Intellectual
Property Pathways to Development (Canberra: Australian National University Press, 2012), 29-56.
69
Munzer and Raustiala, supra note 32, at 51-52; also Madhavi Sunder, “The Invention of Traditional
Knowledge”, Law and Contemporary Problems 70 (2007), 97-124, at 98
70
US Patent 5,401,504, issued 28 March 1995, available at:
https://patents.google.com/patent/US5401504A/en
71
A number of countries have established specific mechanisms relating to TK (as well as for genetic
resources, which we do not discuss here), in the form of additional disclosure requirements in their
patent laws. These require the patent applicant to disclose the source or origin of TK used in the
claimed invention, and in some cases also to provide evidence of prior informed consent and
conclusion of arrangements for equitable sharing of benefits. Such a requirement has not been
established under international law, although a proposal has been made and supported by a number of
Burri 15

turmeric case, India was one of the first countries that sought to address this problem
of unpublished TK through the Traditional Knowledge Digital Library (TKDL).72
The TKDL contains around thirty million pages of Indian ancient and traditional
knowledge translated into English, Japanese, French, German and Spanish. It enables
search 73 with the help of information technology tools and an innovative
classification system - the so-called Traditional Knowledge Resource Classification
(TKRC).74 On a global level, the principal tool for locating technical information for
patent purposes, the International Patent Classification, has also been expanded to
take better account of TK subject matter, in particular concerning medicinal products
based on plant extracts. 75 The Patent Cooperation Treaty (PCT), the treaty for
cooperation in the field of patents, which is administered by WIPO, also provides for
an international search and examination that takes into account TK-related
information resources, which increases the likelihood that relevant TK will be located
at an early stage in the life of a patent.76 The opportunities for effective defensive
protection through databases have been clearly recognized in the work of the WIPO
IGC. The latest Draft Articles sought in this sense to create an obligation for the
signatories to facilitate the development of national databases for the defensive
protection of traditional knowledge, and/or for transparency, certainty, conservation
purposes and/or transboundary cooperation. Requirements for common standards,
agencies’ cooperation, as well as requirements for proper safeguarding and use of the
data sensitive to local and indigenous communities were also noted.77
New technological developments, in particular digitization, may arguably allow not
only for a wider dissemination and facilitated access to information.78 but also for
more adequate ways of collecting and representing traditional knowledge. Some

countries to revise the TRIPS to introduce such a requirement, and several proposals for such a
requirement have also been made in WIPO.
72
TKDL website is at: http://www.tkdl.res.in/tkdl/langdefault/common/Home.asp?GL=Eng
73
Access to TKDL is presently available to 9 International Patent Offices (European Patent Office,
United State Patent and Trademark Office, Japan Patent Office, United Kingdom Patent Office,
Canadian Intellectual Property Office, German Patent Office, Intellectual Property Australia, Indian
Patent Office and Chile Patent Office under TKDL Access (Non-disclosure) Agreement. As per the
terms and conditions of the Access agreement, examiners of patent office can utilize TKDL for search
and examination purposes only and cannot reveal the contents of TKDL to any third party unless it is
necessary for the purpose of citation.
74
So far more than 200 patent applications of the pharmaceutical companies of United States, Great
Britain, Spain, Italy, China etc. have either been set aside, withdrawn, or amended, based on the prior
art evidences present in the TKDL database. See
http://www.tkdl.res.in/tkdl/langdefault/common/Abouttkdl.asp?GL=Eng
75
WIPO, Intellectual Property and Genetic Resources, Traditional Knowledge and Traditional Cultural
Expressions (Geneva: WIPO, 2015), at 36.
76
WIPO Intellectual Property and Genetic Resources, Traditional Knowledge and Traditional Cultural
Expressions (2015), at 36.
77
WIPO, The Protection of Traditional Knowledge: Draft Articles Facilitators’ Review 2, at Article
5bis.
78
See e.g. Yochai Benkler, The Wealth of Networks: How Social Production Transforms Markets and
Freedom (New Haven: Yale University Press, 2006).
16

technological tools, including digital rights management systems (DRM), may be, for
instance, applied so as to reflect better the very different and sometimes conflicting
demands of indigenous peoples - for openness and secrecy, or for different levels of
access according to privileges or skills of different community members. 79 By
overcoming the fears indigenous peoples have of maltreatment of sacred values and
symbols, which are core to their identity and the fears of embracing digital media, it
has been argued that such projects may also facilitate the process of registering and
compiling data on traditional knowledge that is subsequently easily searchable and
manageable for purely anthropological purposes, for communities’ own
representation and active participation, or for defensive IP protection. It is essential to
distinguish such participatory archives from the conventional ones, where
“[i]ndigenous voices have had little impact in shaping the information architectures
that underlie how cultural heritage is organized and disseminated online”.80 Kansa
refers to these “old” archives as “’top down’ models of cultural heritage
dissemination” 81 and notes that, “[t]he imposition of a culturally alien database
schema dissociates indigenous culture from its context, making it lose much, if not all,
of its meaning. Such attempts at cultural heritage documentation may have little
relevance to a local community; worse, it may be seen as an act of appropriation,
even if motivated by a desire to help”.82 The WIPO has created a helpful database83 of
existing codes, protocols and policies related to the safeguarding of, access to and
control over cultural heritage - many of them have made proper use of the
affordances of digital media.

C. TCE/TK and Trademarks

Depending on the specificities in national law, the scope of protection of a trademark,
may differ. But this scope tends to be broad and typically, a trademark may consist of
words, letters, numbers, drawings, symbols, the shape and packaging of goods or a
combination of two or more of these. Unlike patent and copyright, which are legal
rights that seek to foster creativity, the purpose of trademark as a distinctive sign is
different. On the one hand, since the sign is associated with certain products and
services, it can lower consumer search costs, as consumers make quicker and better
choices as to the products and services they wish to buy because of their quality or the

79
See e.g. Jane Hunter, Bevan Koopman and Jane Sledge, “Software Tools for Indigenous Knowledge
Management”, paper presented at GGF-11, Semantic Grid Applications Workshop, Honolulu,10 June
2004; also See Kimberly Christen, “Tracking Properness: Repackaging Culture in a Remote Australian
Town”, Cultural Anthropology 21 (2006), 416-446.
80
Eric Kansa, “Indigenous Heritage and the Digital Commons”, in Christoph Antons (ed), Traditional
Knowledge, Traditional Cultural Expressions and Intellectual Property Law in the Asia-Pacific Region
(Alphen aan den Rijn: Kluwer Law International, 2009), 219-244, at 223-224. For a critique of static
databases, see also Michael F. Brown, Who Owns Native Culture? (Cambridge, MA: Harvard
University Press, 2003), at pp. 206-210.
81
Kansa, ibid., at 223-225.
82
Kansa, supra note 80, at 22.
83
The database is available at: http://www.wipo.int/tk/en/databases/creative_heritage/
Burri 17

goodwill of the company that produces them. Through trademarks, companies can
build exclusive reputation and so create loyalty among consumers – they are also
incentivized to invest in product quality. On the other hand, marks can guard against
competitors making unauthorized use of a duplicate or similar mark for passing off
goods to unwitting consumers.84 Overall, trademarks have certainly become a major
vehicle for marketing and branding in the contemporary global economy and
companies continuously invest in their brands, so as to achieve certain competitive
advantage. The owner of a mark has the exclusive right to use it in the relevant
territory for the specified goods or services and can prevent others from using it, or
from using a confusingly similar mark in relation to identical or similar goods or
services. Certain conditions apply in order to gain trademark protection:
(1) the trademark must be distinctive or capable of distinguishing the goods
and/or services of one provider from those of others;
(2) it should not be contrary to morality or public order; and cannot be generic,
descriptive or deceptive;
(3) it should not be identical or confusingly similar to other marks that have
already been registered for identical or similar goods and/or services
(4) in most countries, registration is an essential element of the trademark
protection; this does not apply for well-known marks, which are protected
irrespective of registration.
There is one distinct feature of trademarks, which may be critical for TCE/TK and
that is, that although there is a requirement for the payment of renewal fees,
trademark protection can last indefinitely. Another flexibility that may be useful for
local and indigenous communities is that there is no requirement for trademarks to be
owned and used by just one person or organization; collective ownership is possible.
The interfaces between TCE/TK and trademark protection can be multiple. The first
one is with regard to defensive protection, and this is particularly important as the
misappropriation and commodification of indigenous words, signs and forms have
proliferated in the last two decades - with well-known examples, such as the Lego
Bionicles or the Sony Playstation cases, making use of Māori imagery.85
The registration of a trademark provides for a procedure for its examination - this can
be used as a well-timed check, before the products and services enter the commercial
streams, to ensure that certain symbols or other forms of creating a distinct trademark,
do not go against morality and public order, including indigenous communities’
considerations. Several jurisdictions have made use of this opportunity. New
Zealand’s trademark law, for instance, refuses to register any trademark which may

84
Burk, supra note 43, at 409; also Landes and Posner, supra note 49, at 166-208.
85
See e.g. See Rosemarie J. Coombe and Andrew Herman, “Rhetorical Values: Property, Speech, and
the Commons on the World Wide Web”, Anthropological Quarterly 77 (2004), 559-574; Susy Frankel,
“Third-Party Trade Marks as a Violation of Indigenous Cultural Property”, The Journal of World
Intellectual Property (2005), 83-98.
18

“offend a significant section of the community, including Māori”. 86 The

Commissioner of Trade Marks has appointed an advisory committee to advise
whether the proposed use or registration of a trademark is, or appears to be, derivative
of a Māori sign, including text or imagery, is, or is likely to be, offensive to Māori.87
In the United States, a trademark may be refused, if it consists of matter that may
disparage, or falsely suggest a connection with, persons, living or dead, beliefs, or
national symbols, or bring them into contempt or disrepute,88 which may include TCE
as well.
Trademark registration procedures may also prevent false or misleading claims as to
the authenticity or origin of TCE.89 The risk of deception must however be real, and
fanciful trademarks will be accepted even though they might be deceptive. 90
Databases can again be useful and the US Patent and Trademark Office (USPTO) has
created an insignia database for Native American tribes, which is applied by the
examiner on a case-by-case basis to reject any trademark registration that falsely
suggests a connection with a person or group.91
Indigenous and local communities may also proactively use trademark as a tool of
distinction and branding. With a smart marketing strategy, this can potentially
increase consumer recognition of TCE, as well as the commercial benefits for TCE
holders.92 Certification and collective marks can be a particularly suitable path to do

86
New Zealand Trade Marks Act 2002, section 17(1)(c). For a comprehensive analysis, see Frankel,
ibid.; see also New Zealand Intellectual Property Office, Protecting Intellectual Property with a Māori
Cultural Element: User Guide (Wellington: Ministry of Business, Innovation and Employment, 2016),
available at: https://www.iponz.govt.nz/assets/pdf/maori-ip/protecting-ip-with-a-maori-cultural-
element.pdf
87
There have been cases where an offensiveness objection could be overcome. In one case the
applicant was advised to seek consent from the relevant authority; in another case, the trade mark was
considered offensive because it contained a “tapu” word to be used on goods that could serve food
(“noa”). In this case the applicant amended their trademark specification to goods of a decorative
nature and not for use with food. See ibid., at 21.
88
Lanham Act 1946, 15 USC 1052(a).
89
See e.g. Martin A. Girsberger, “Legal Protection of Traditional Cultural Expressions: A Policy
perspective”, in Christoph Beat Graber and Mira Burri-Nenova (eds), Intellectual Property and
Traditional Cultural Expressions in a Digital Environment (Cheltenham: Edward Edgar, 2008), 123-
159; Susy Frankel, “Trademarks, Traditional Knowledge and Cultural Intellectual Property Rights”, in
Graeme B. Dinwoodie and Mark D. Janis (eds), Trademark Law and Theory: A Handbook of
Contemporary Research (Cheltenham: Edward Elgar, 2007, 433-463).
90
Daphne Zografos Johnsson, “The Branding of Traditional Cultural Expressions: To Whose
Benefit?”, in Peter Drahos and Susy Frankel (eds), Indigenous Peoples' Innovation: Intellectual
Property Pathways to Development (Canberra: Australian National University Press, 2012), 147-163,
at 148.
91
See Justin Hughes, “Traditional Knowledge, Cultural Expressions, and a Siren’s Call of Property”,
San Diego Law Review 49 (2013), 1251-1301, at 1270, referring to Establishment of a Database
Containing the Official Insignia of Federally and State Recognized Native American Tribes, 60 Fed.
Reg. 44,603 (20 August 2001).
92
Zografos Johnsson, supra note 90, at 155.
Burri 19

so.93 A certification mark is capable of distinguishing goods or services, which are

certified by the proprietor of the mark in respect of material, mode of manufacture of
goods or performance of services, quality, accuracy or other characteristics, from
goods and services which are not so certified. It should be noted that in some
jurisdictions, such as the European Union, which has only recently introduced the
certification mark,94 it cannot be used for the purpose of distinguishing goods or
services certified in respect of the geographical origin - a protection that is provided
by a discrete IP form – that of geographical indications (GIs).95 When applying for a
certification mark, it is necessary provide information as to the characteristics of the
goods or services to be certified; the conditions governing the use of the certification
mark; as well as the testing and supervision measures to be applied by the
certification mark owner. Unlike collective marks, certification marks are not
confined to any membership. They can be used by anybody who complies with the
standards defined by the owner of the certification mark.
In contrast, a collective mark is a mark which distinguishes the goods or services of
members of a particular association, which is the proprietor of the mark, from those
of other undertakings. There is no requirement for certification of the goods or
services, but the proprietor association may choose to adhere to certain standards. The
duration and scope of protection applicable to collective marks are similar to those of
ordinary trademarks. The cost of registering and renewing a collective mark will

93
In Kenya, for example, Sisal baskets are manufactured in a traditional way. The community of
basket weavers have formed the Taita Baskets Association which is the owner of the collective mark
“Taita Basket”. The mark is being used to protect and promote their baskets and to furthermore
establish rules quality standards on the use of the mark. In Peru, traditional farmers, who grow a
particular type of potato (famous for its quality and taste), have started using a collective trademark
(“Sumaq Sunqo”) to help promote their potatoes and distinguish them from other sorts not produced in
their region. WIPO, Protect and Promote Your Culture, A Practical Guide to Intellectual Property for
Indigenous Peoples and Local Communities (Geneva: WIPO, 2017), at 8, 20, 42-43.
94
There are variations across jurisdictions with regard to certification and collective marks. As
Zografos Johnsson clarifies (a) some laws permit registration of certification marks only, in which case
use of the marks is open to all who meet the standards; (b) others permit registration of collective
marks only, in which case collective marks may also perform a certification; and (c) there is a third
group of countries, which permits registration of both certification and collective marks. See Zografos
Johnsson, supra note 90, at 161.
95
We do not address GIs in this chapter. For excellent analyses, see e.g. Antony Taubman, “Saving the
Village: Conserving Jurisprudential Diversity in the International Protection of Traditional
Knowledge”, in Jerome H. Reichman and Keith Maskus (eds), International Public Goods and
Transfer of Technology under a Globalized Intellectual Property Regime (Cambridge: Cambridge
University Press, 2005), 521-560; Susy Frankel. “The Mismatch of Geographical Indications and
Innovative Traditional Knowledge”, Prometheus 29 (2011), 253-267; Daniel Gervais, “Traditional
Innovation and the Ongoing Debate on the Protection of Geographical Indications”, in Peter Drahos
and Susy Frankel (eds), Indigenous Peoples' Innovation: Intellectual Property Pathways to
Development (Canberra: Australian National University Press, 2012), 121-146 Tomer Broude, “Taking
‘Trade and Culture’ Seriously: Geographical Indications and Cultural Protection in WTO Law”,
University of Pennsylvania Journal of International Law 26 (2014), 624-692; Irene Calboli, “Of
Markets, Culture, and Terroir: The Unique Economic and Culture-related Benefits of Geographical
Indications of Origin”, in Daniel Gervais (ed), International Intellectual Property: A Handbook of
Contemporary Research (Cheltenham: Edward Elgar, 2015), 433-464.
20

usually be shared among the members of the association and is therefore overall
lower in comparison to ordinary trademarks.96
It can be summed up that: “[t]he registration of a certification or collective mark can
help indigenous communities distinguish their TCEs, promote their art and artists
nationally and internationally, and maintain the integrity of their culture. In addition,
a certification or collective mark can be a valuable tool to help improve their
economic position and ensure they get fair and equitable returns. Finally, these tools
can be used by indigenous communities to raise public awareness and maximise
consumer certainty as to the authenticity of the goods marketed under the mark”.97
Yet, and this is critical, the trademark is not a hard type of IP rights that allows its
holder to exclude others, as patent does. They can only limit who can use a certain
name, sign or symbol that is the subject of the trademark protection. Finally, despite
all good intentions behind the introduction of a collective or a certification mark,
certifications schemes do not always work – either because they encounter difficulties
in the indigenous communities or because there is no awareness and interest shared
by consumers.98

D. TCE and Copyright

Copyright can be said to be the most relevant protection mechanism as far as TCE are
concerned. Copyright has a broad scope and can protect a wide range of literary,
artistic and scientific creations, such as novels, poems, plays, films, musical
compositions, choreographs, paintings, drawings, photographs and sculpture.
Copyright protects the expression of ideas but not the ideas themselves; facts too are
usually not copyrightable. To qualify for protection, there is a threshold of originality
that must be passed. In most countries, the work of authorship needs not be novel,
ingenious or have aesthetic merit, however, in order to satisfy the originality
requirement. For example, the US Supreme Court defined originality as requiring
only that the work be independently created by the author and that it possess “at least
some minimal degree of creativity”.99 Copyright protection is available for works
made by more than one author, provided that the authors are identifiable or in cases
where a legal entity is the copyright owner of works. In some countries, such as the

96
Zografos Johnsson, supra note 90, at 160.
97
Zografos Johnsson, supra note 90, at 161-162.
98
Graber and Lai have examined different certification schemes, in particular the Australian one, and
identified the reasons for their lack of success. They found that reasons for the failure of the Australian
system were: (1) the top-down nature of the system and the poor consultation with the relevant
stakeholders prior to its inception; (2) difficulties in defining and controlling the standard of
“authenticity”; (3) non-independence of the certifier, which was the same body that set the standards
and owned the trademarks; and (4) poor funding of the system, which meant an inability to market the
initiative. See Christoph B. Graber and Jessica Lai, “Indigenous Cultural Heritage and Fair Trade:
Voluntary Certification Standards in the Light of WIPO and WTO Law and Policy-making”, in Peter
Drahos and Susy Frankel (eds), Indigenous Peoples' Innovation: Intellectual Property Pathways to
Development (Canberra: Australian National University Press, 2012), 95-119.
99
Feist Publications v. Rural Telephone Service Co., 499 U.S. 340 (1991).
Burri 21

United States, fixation in a tangible form may be required. To be protected under

copyright, no other formalities, such as registration, are typically required – there is in
this sense a sort of automatism in the granting of copyright protection – upon the
creation of the work or its fixation. The copyright is understood as a package of rights
– it encompasses economic and moral rights. The latter seek to protect the integrity
and reputation of the creator of the copyrighted work but are not enshrined to the
same extent in all jurisdictions. Economic rights would last for at least 50 years
following the death of the author or the last surviving author in cases of joint
authorship. The precise duration of protection will depend on national law; afterwards
the work will fall into the public domain and creators and licensees can no longer
control the distribution and use of the work. Moral rights, on the other hand, might
last indefinitely, again depending on national law.
Most copyright owners have exclusive rights over the reproduction, public
performance, public display, distribution and the making of derivative works. In all
cases, the plaintiff will have to prove that the defendant copied from the copyrighted
material in a way that is qualitatively or quantitatively substantial: “[t]hat is,
copyright is only valid against those who ‘free-ride’, and not against fully
independent creators”. 100 So unlike under patent, “reverse engineering” under
copyright is permitted. Copyright owners can generally license their works – retaining
ownership but granting permission for other people to use the rights in specific ways.
Rights may be transferred or licensed in exchange for a one-off fee or periodic
royalties. Copyrights may also be bought, subdivided and inherited, so overall the
rightsholder can often be an individual other than the original creator. As noted earlier,
copyright is meant to foster creativity by a trade-off between the creator’s limited
monopoly over her works and the access by other to the copyrighted works. For this
purpose, copyright is not an absolute right but there are various exceptions and
limitations designed to balance the needs to protect creativity and disseminate
information. Jurisdictions differ here in their approaches in implementing the three-
step-test of the TRIPS,101 which broadly defines the test for permitting exceptions and
limitations, but they all provide different opportunities to access and use of
copyrighted works without the permission of the rightsholder and without
remuneration – for instance, for the purposes of citation, parody, news reporting or
research and education.

100
Gordon, supra note 49, at 630.
101
Article 13 TRIPS. See e.g. On the three-step test and its interpretation, see e.g. Jo Oliver,
“Copyright in the WTO: The Panel Decision on the Three-Step Test”, Columbia Journal of Law and
the Arts 25 (2002), 119-170; Martin Senftleben, “Towards a Horizontal Standard for Limiting
Intellectual Property Rights? WTO Panel Reports Shed Light on the Three-Step Test in Copyright Law
and Related Tests in Patent and Trademark Law”, International Review of Intellectual Property and
Competition Law 37 (2006), 407-438; Carlos M. Correa, Trade Related Aspects of Intellectual
Property Rights: A Commentary on the TRIPS Agreement (Oxford: Oxford University Press, 2007), at
146-153; Christophe Geiger, Daniel Gervais and Martin Senftleben, “The Three-Step Test Revisited:
How to Use the Test’s Flexibility in National Copyright Law”, American University International Law
Review 29 (2014), 581-626.
22

One could argue that TCE and copyright are a good match because they are about
creative works. Yet, there are some notable mismatches102:
(a) Originality: With originality, there are at least two clusters of contentious issues
that become evident in the attempts to interface TCE and copyright. First, although
the threshold of originality is fairly low in most national jurisdictions, it is still an
essential element. Many traditional literary and artistic productions are not “original”
in this sense, as they are often passed down – substantially unchanged – from
generation to generation. Indeed, because indigenous art has a function as a historical
and sacred text, innovation may be restricted and there may be a close supervision as
to who can reproduce it.103 It should also be added that copyright cannot protect the
indigenous “style” but only elements of that style to the extent that it incorporates
original expression. At the same time, it is often the reputation associated with a TCE,
as embodied or represented by its distinctive “style”, that is the object of
misappropriation. In an even broader sense, copyright law is poorly equipped to
adequately protect TCE as an integral part of the history and life of the indigenous
and local communities. As Frankel explains with the example of the indigenous art of
marking the skin ta moko, while copyright may protect some expression of ta moko,
as each is unique and personal, it cannot protect the knowledge, traditions and rules
that accompany various ta moko and when the Ford Motor Company put ta moko on
cars and Sony used in a video game, “they detach ta moko from the rules and
traditions that maintain and develop it”.104
The second cluster of issues relates to the defensive protection of TCE. Works
derived from materials in the public domain can be copyright protected, because a
new interpretation, arrangement, adaptation or collection of public domain materials,
or even their “re-packaging” in the form of digital enhancement, can result in a new
distinct expression which is sufficiently original. In this sense, individuals not part of
the indigenous community can create original works based on TCE. The question
here is whether and how there should be regulation of derivative works created by
authors not connected with the traditions and cultural materials they adapted or were
inspired by. While there have been some patent cases of misappropriation, where the
indigenous and local communities have defended their interests,105 other cases of
creative derivative works may not be as clear-cut.
(b) Ownership: protection of copyright requires the identification of a known
individual creator or creators in order to determine the holders of rights and to
identify precisely who might benefit from such rights. As the WIPO has pointed out:
“It is difficult, if not impossible, however to identify the creators of TCEs, and hence

102
All of these have been discussed in the work of WIPO IGC. See WIPO, TCE Gap Analysis, Annex
1.
103
Christine Haight Farley, “Protecting Folklore of Indigenous Peoples: Is Intellectual Property the
Answer?”, Connecticut Law Review 30 (1997), 1-57, at 21.
104
Frankel, supra note 12, at 630.
105
Milpurrurru v. Indofurn Pty Ltd. (1994) 54 F.C.R 240 case in Australia was the first case in which a
court declared that Aboriginal artists must be compensated for the unauthorized use of their art.
Burri 23

the rights holders and beneficiaries in TCEs, because TCEs are communally created
and held and/or because the creators are simply unknown and/or unlocatable. The
very concept of ‘ownership’ in the IP sense may also be alien to many indigenous
peoples”.106 The WIPO has additionally clarified that, “[e]ven where an individual
has developed a tradition-based creation within his or her customary context, the
creation is not ‘owned’ by the individual but falls within a shared sense of communal
responsibility, identity and custodianship. This is what marks such a creation as
‘traditional’. TCEs might well have had an author at some stage, but that author is
now unknown or simply unlocatable”.107 Courts have been prepared to recognize
communal interests in a copyright work. In the Australian case of Bulun Bulun v. R &
T Textiles, 108 the court held that, where an individual indigenous artist is given
permission by an indigenous community for the creation of an artistic work in
accordance with the requirements of customary law and custom, the artist may owe
fiduciary obligations to act to preserve the integrity of communal culture. Such
fiduciary obligations may arise out of the relationship between the artist and the
community as one of mutual trust and confidence. Customary law is part of the
factual matrix which characterizes the relationship. Arising out of the fiduciary
relationship, the community’s primary right was to bring an action against the artist to
enforce his fiduciary obligations in the event of a breach of his obligations.
(c) Fixation: the fixation requirement existing in many national copyright laws
prevents intangible and oral expressions of culture, such as tales, dances or songs,
from being protected unless and until they are fixed in some form or media. Even
certain “fixed” expressions, such as face painting, body painting and sand carvings,
may not meet the requirement. Yet, rights in recordings and documentation of TCE
vest in the person responsible for these acts of fixation, such as ethnomusicologists,
folklorists and other researchers, and not in the TCE bearers.
(d) Term of protection: the limited term of protection in copyright, related rights and
industrial designs is claimed to be inappropriate for TCE. It fails to meet the need to
protect TCE in perpetuity or at least as long as the community exists. The limited
term of protection also requires certainty as to the date of a work’s creation or first
publication, which is often unknown in the case of TCE.
(e) Exceptions and limitations: apart from the limited term of protection, it has been
argued that other exceptions and limitations commonly found in copyright laws are
not suitable for TCE. For example, typical exceptions, which allow a sculpture or
work of artistic craftsmanship permanently displayed in a public place to be
reproduced in photographs or drawings without permission may seriously disturb
indigenous sensibilities and undermine customary rights. Similarly, national
copyright laws often allow public archives, libraries and the like to make
reproductions of works and keep them available for the public. Some of these

106
WIPO, TCE Gap Analysis, Annex 1, at 10.
107
WIPO, TCE Gap Analysis, Annex 1, at 4.
108
Bulun Bulun v. R & T Textiles (Pty) Ltd (1998) 41 IPR 51338.
24

exceptions and limitations have been criticized by indigenous and traditional

communities, and others have stressed the need for any exceptions and limitations to
take into account the public interest.

IV. CONCLUSION
The relationship between cultural heritage and intellectual property evolves in a
profoundly complex setting – with many institutions and actors involved, often with
very different or even divergent interests, and within a fragmented legal regime. This
chapter revealed only a small part of this complexity and the tensions on both sides,
as well as the difficulties when interfacing cultural heritage and intellectual property.
We showed that although intellectual property law has developed sophisticated rules
with regard to a variety of intellectual property forms, it is based on certain author-
centered and mercantilist premises that do not work so well with the protection of
traditional knowledge and traditional cultural expressions. The sources, the dynamics
and the embeddedness of cultural heritage cannot be adequately matched by a set of
economic rights. Expressions of cultural heritage “fail” the legal tests in IP law
precisely because of some of their intrinsic characteristics – because they have been
passed from generation to generation, belong to the community, or cannot be
separated from land or religion. We showed nonetheless that in the fields of patent,
trademark and copyright protection, there are tools that may provide some, albeit
imperfect, protection of TK and TCE. The work under the auspices of WIPO has
sought in the past decade to address some of the gaps and provide for new
international instruments for an improved IP protection of TCE and TK.109 While
generally this has been greeted as a positive development, some authors have
cautioned against it. Munzer and Raustiala, for instance, have examined existing
theories of property in search of a basis for TK protection and argue that, “provisions
aimed at the ‘defensive’ protection of TK – that is, at halting the (mis)use of TK by
nonindigenous actors in patents or copyrighted materials – merit the most support”.110
They find however that offensive protection, in which TK holders would have the
right to control TK should not be adopted.111 Some of the concerns Munzer and
Raustiala share are that, “[r]obust TK protection is in great tension with many core
principles of the existing IP system; it is not merely something that can be tacked on
as a new right […] [and] TK protection aimed solely at indigenous groups requires a
compelling theory of discrimination between indigenous and non-indigenous
claims”. 112 Pager has argued recently that, even if there is some merit in the
protection of traditional culture, WIPO’s approach is too broad and may have
unintended consequences, in particular because it mixes TCE and TK, issues of

109
For an excellent analysis of the latest draft articles, see Sean A. Pager, “Traditional Knowledge
Rights and Wrongs”, Virginia Journal of Law and Technology 20 (2016), 82-200.
110
Munzer and Raustiala, supra note 32, at 40.
111
Ibid.
112
Ibid., at 66. In the same line, see Hughes, supra note 91.
 Burri 25

culture and technological innovation.113 He suggests that “TK negotiators should

abandon their ambition to use TK rights as the vehicle to redress global inequality and
focus instead on drafting a more modest set of treaties that focus narrowly on
pragmatic goals: ensuring benefit-sharing for source communities, safeguarding
cultural integrity, and preventing unfair competition”.114
It should be noted in a more pragmatic sense that many countries have already
adjusted their domestic IP regimes to reflect the concerns of indigenous and local
communities and give them an opportunity to prevent harm and to control their
cultural heritage.115 Such an adaptation, which is less “top-down” is more likely to
provide for viable mechanisms for interfacing the systems of intellectual property and
cultural heritage, which can protect knowledge and creativity that is not divorced
from the customs and societal norms of indigenous and local communities.116 Finally,
it appears that there is a urgent need for a dialogue that involves all stakeholders and
transcends the often rigid divides between “cultural” and “IP” debates.

113
Pager, supra note 109.
114
Pager, supra note 109, at 200.
115
See e.g. Frankel, supra note 12, 785-789; Susy Frankel, “TK and Innovation as a Global Concern”,
in Daniel J. Gervais (ed), International Intellectual Property: A Handbook of Contemporary Research
(Cheltenham: Edward Elgar, 2015), 217-245; New Zealand Intellectual Property Office, supra note 86.
116
Frankel, supra note 12, at 630-631; also Peter Drahos, “A Networked Responsive Regulatory
Approach to Protecting Traditional Knowledge”, in Daniel J. Gervais (ed), Intellectual Property, Trade
and Development: Strategies to Optimize Economic Development in a TRIPS-plus Era (Oxford:
Oxford University Press, 2007), 385-416.

View publication stats