Research Handbook on Intellectual Property and Cultural Heritage 1800376901, 9781800376908

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RESEARCH HANDBOOK ON INTELLECTUAL PROPERTY AND CULTURAL HERITAGE

RESEARCH HANDBOOKS IN INTELLECTUAL PROPERTY Series Editor: Jeremy Phillips, Intellectual Property Consultant, Olswang, Research Director, Intellectual Property Institute and co-founder, IPKat weblog Under the general editorship and direction of Jeremy Phillips comes this important new Research Handbook series of high quality, original reference works that cover the broad pillars of intellectual property law: trademark law, patent law and copyright law – as well as less developed areas, such as geographical indications, and the increasing intersection of intellectual property with other fields. Taking an international and comparative approach, these Research Handbooks, each edited by leading scholars in the respective field, will comprise specially commissioned contributions from a select cast of authors, bringing together renowned figures with up-and-coming younger authors. Each will offer a wide-ranging examination of current issues in intellectual property that is unrivalled in its blend of critical, innovative thinking and substantive analysis, and in its synthesis of contemporary research. Each Research Handbook will stand alone as an invaluable source of reference for all scholars of intellectual property, as well as for practising lawyers who wish to engage with the discussion of ideas within the field. Whether used as an information resource on key topics, or as a platform for advanced study, these Research Handbooks will become definitive scholarly reference works in intellectual property law. Titles in the series include: Research Handbook on Patent Law and Theory Second Edition Edited by Toshiko Takenakaa Research Handbook on Intellectual Property and Digital Technologies Edited by Tanya Aplin Research Handbook on Intellectual Property and Technology Transfer Edited by Jacob H. Rooksby Research Handbook on Intellectual Property and Investment Law Edited by Christophe Geiger Research Handbook on the World Intellectual Property Organization The First 50 Years and Beyond Edited by Sam Ricketson Research Handbook on Trademark Law Reform Edited by Graeme B. Dinwoodie and Mark D. Janis Research Handbook on Design Law Edited by Henning Hartwig Research Handbook on Intellectual Property and Employment Law Edited by Niklas Bruun and Marja-Leena Mansala Research Handbook on Intellectual Property and Cultural Heritage Edited by Irini Stamatoudi

Research Handbook on Intellectual Property and Cultural Heritage Edited by

Irini Stamatoudi Professor of Intellectual Property Law and Cultural Heritage Law, Faculty of Law, University of Nicosia, Cyprus

RESEARCH HANDBOOKS IN INTELLECTUAL PROPERTY

Cheltenham, UK • Northampton, MA, USA

© The Editor and Contributors Severally 2022

All rights reserved. No part of this publication may be reproduced, stored in a retrieval system or transmitted in any form or by any means, electronic, mechanical or photocopying, recording, or otherwise without the prior permission of the publisher. Published by Edward Elgar Publishing Limited The Lypiatts 15 Lansdown Road Cheltenham Glos GL50 2JA UK Edward Elgar Publishing, Inc. William Pratt House 9 Dewey Court Northampton Massachusetts 01060 USA A catalogue record for this book is available from the British Library Library of Congress Control Number: 2022937598 This book is available electronically in the Law subject collection http://dx.doi.org/10.4337/9781800376915

ISBN 978 1 80037 690 8 (cased) ISBN 978 1 80037 691 5 (eBook)

EEP BoX

Contents

List of contributorsviii Introduction to the Research Handbook on Intellectual Property and Cultural Heritage: Overview of the issues Irini Stamatoudi PART I

1

IP PROTECTION FOR CULTURAL HERITAGE

SECTION I.A GENERAL 1

The notions of intellectual property and cultural heritage: Overlaps and clashes Irini Stamatoudi

8

2

The protection of cultural heritage by copyright and related rights Paul Torremans

38

3

The protection of cultural heritage by trademarks Mira Burri

56

4

Cultural heritage and patent law: Alternatives for the protection of traditional knowledge and genetic resources Pedro Henrique D. Batista

5

The protection of cultural heritage by designs Bernd Justin Jütte and Alina Trapova

6

The protection of intangible cultural assets by trade secrets and unfair competition law Neethu Rajam and Jens Schovsbo

73 94

113

SECTION I.B SPECIAL ISSUES 7

Traditional knowledge, databases and prior art: Options for an effective defensive use of TK against undue patent granting Reto M. Hilty, Pedro Henrique D. Batista and Suelen Carls

8

Re-evaluating the art practice of ‘appropriation’ from a copyright law perspective154 Marina Markellou

9

Preservation and heritagisation of street art and graffiti Enrico Bonadio v

132

170

vi  Research handbook on intellectual property and cultural heritage 10

Copyright issues on the use of images on the Internet Marie-Christine Janssens, Arina Gorbatyuk and Sonsoles Pajares Rivas

191

11

Linking, framing, and browsing digital or digitised works of art Irini Stamatoudi and Zoi Mavroskoti

214

12

The protection of traditional cultural expressions by geographical indications Michael Blakeney

236

13

Copyright ownership challenge arising from AI-generated works of art: A time to stand and stare Theodoros Chiou

PART II

250

POLITICS AND POLICIES ASSOCIATED WITH PROTECTING CULTURAL HERITAGE BY IPRS

14

States’ discretion to classify IP subject matter as national cultural treasures Maria-Daphne Papadopoulou and Maria G. Sinanidou

275

15

Intellectual property, cultural heritage, and human rights Peter K. Yu

295

16

‘Best practices’ to protect indigenous knowledge? Jessica C. Lai

312

17

Intangible cultural heritage, intellectual property and the public domain Charlotte Waelde

327

18

Bridging intellectual property and cultural heritage law in the practice of international governmental organisations Andrzej Jakubowski and Hanna Schreiber

340

PART III SPECIAL ISSUES FOR CULTURAL INSTITUTIONS 19

The artist’s resale right Simon Stokes

359

20

Digitization of cultural heritage under EU copyright: Digitizing the past to enable access and innovation for the future Stavroula Karapapa

375

21

Intellectual property and cultural heritage issues for museums of archaeological materials Pınar Oruç and Uma Suthersanen

392

22

Management issues for cultural heritage institutions Konstantinos Roussos and Irini Stamatoudi

413

23

IP management for cultural heritage institutions Rina Elster Pantalony

439

Contents  vii 24

Cultural heritage, galleries and auction houses Leila A. Amineddoleh

455

25

IP issues relating to cultural heritage platforms and new business models Julia Wildgans

480

26

Born digital: Law, policy, and the preservation of videogames as digital cultural heritage Benjamin Farrand

27

Private international law and cultural property and art disputes Marc Weber

28

ADR, cultural heritage and intellectual property: A continuum of dispute resolution processes Debbie De Girolamo

29

Intellectual property implications of 3D printing of cultural heritage Charles Cronin

Conclusion to the Research Handbook on Intellectual Property and Cultural Heritage: Important highlights Irini Stamatoudi

502 517

544 565

579

Index585

Contributors

Leila A. Amineddoleh, Founder of Amineddoleh & Associates LLC and Adjunct Professor at New York University and Fordham University, School of Law, US Pedro Henrique D. Batista, LL.M. (Munich), Junior Research Fellow, Max Planck Institute for Innovation and Competition, Munich, Germany Michael Blakeney, Winthrop Professor, Faculty of Law, University of Western Australia, Australia; Letizia Gianformaggio Chair of Law, University of Ferrara, Italy Enrico Bonadio, Reader in Intellectual Property Law, The City Law School, City, University of London, UK Mira Burri, Professor of International Economic and Internet Law, Faculty of Law, University of Lucerne, Switzerland Suelen Carls, PhD, Senior Research Fellow, Max Planck Institute for Innovation and Competition, Munich, Germany; IP Expert, World Intellectual Property Organization; Visiting Professor, University of Marília, Brazil Theodoros Chiou, PhD, Post-Doc Researcher at the University of Athens, School of Law, Attorney-at-law, Greece Charles Cronin, Adjunct Professor, Claremont Graduate University; Visiting Scholar, George Washington University Law School, US Debbie De Girolamo, Reader in Law, Director, Art, Business and Law LLM Programme, School of Law, Centre for Commercial Law Studies, Queen Mary University of London, UK Benjamin Farrand, Reader in Law and Emerging Technologies, Newcastle Law School, Newcastle University, UK Arina Gorbatyuk, Postdoctoral Fellow of the Research Foundation – Flanders (FWO) at Centre for IT and IP Law (CiTiP), KU Leuven, Belgium Reto M. Hilty, Director, Max Planck Institute for Innovation and Competition, Munich, Germany; Professor of Law at the University of Zurich, Switzerland, and at the University of Munich, Germany Andrzej Jakubowski, Assistant Professor, Institute of Law Studies, University of Opole, Poland Marie-Christine Janssens, Professor of Law, Head of Centre for IT and IP Law (CiTiP), KU Leuven, Belgium Bernd Justin Jütte, Assistant Professor in Intellectual Property Law, Sutherland School of Law, University College Dublin, Ireland; Senior Researcher, Faculty of Law, Vytautas Magnus University, Lithuania viii

Contributors  ix Stavroula Karapapa, Professor of Intellectual Property and Information Law at the University of Essex, UK Jessica C. Lai, Associate Professor of Commercial Law, Wellington School of Business and Government, Victoria University of Wellington, New Zealand Marina Markellou, Post-Doc Researcher, Panteion University, Greece Zoi Mavroskoti, PhD, Attorney-at-Law, Greece Pınar Oruç, Lecturer in Commercial Law, University of Manchester, UK Sonsoles Pajares Rivas, Legal Researcher at Centre for IT and IP Law (CiTiP), KU Leuven, Belgium Rina Elster Pantalony, Director, Copyright Advisory Services, Columbia University Libraries, New York, USA Maria-Daphne Papadopoulou, LLM mult, PhD, Head of the Legal Department/Hellenic Copyright Organization, Greece Neethu Rajam, PhD (Copenhagen), LLM (LSE, Lond.), Former Post-doc Fellow, Faculty of Law, University of Copenhagen, Denmark Konstantinos Roussos, Doctor of Archaeology, Research Assistant, Faculty of Law, University of Nicosia, Cyprus Jens Schovsbo, Professor, LLD, PhD, Faculty of Law, Center for Information and Innovation Law (CIIR), University of Copenhagen, Denmark Hanna Schreiber, Assistant Professor, Faculty of Political Science and International Studies, University of Warsaw, Poland Maria G. Sinanidou, Int IP LLM, Certified Mediation Advocate, Counselor at Law/Hellenic Copyright Organization, Greece Irini Stamatoudi, Professor of Intellectual Property Law and Cultural Heritage Law, Faculty of Law, University of Nicosia, Cyprus Simon Stokes, LLM; Solicitor (England and Wales); Senior Counsel, Al Tamimi & Company, Riyadh, Kingdom of Saudi Arabia Uma Suthersanen, Director, Queen Mary Intellectual Property Research Institute; and Professor of Global Intellectual Property Law, Queen Mary University of London, UK Paul Torremans, Professor of Intellectual Property Law, School of Law, Faculty of Social Sciences, University of Nottingham, UK Alina Trapova, Assistant Professor in Law and Autonomous Systems, University of Nottingham, UK Charlotte Waelde, Professor, Centre for Dance Research, Coventry University, UK Marc Weber, LLM, Attorney-at-Law, Partner at LANTER, Zurich, Switzerland Julia Wildgans, PhD student, University of Mannheim, Germany

x  Research handbook on intellectual property and cultural heritage Peter K. Yu, Regents Professor of Law and Communication, and Director, Center for Law and Intellectual Property, Texas A&M University, USA

Introduction to the Research Handbook on Intellectual Property and Cultural Heritage: Overview of the issues Irini Stamatoudi

Both intellectual property (IP) and cultural heritage (CH) have evolved during the years and have gained tremendously in significance as well as in economic value, despite the fact that the former mainly pertains to the private sphere whilst the latter is considered a ‘common good’.1 The relationship between intellectual property and cultural heritage has never been an easy one since it evolves in a profoundly complex setting with many institutions and actors involved (such as states, governmental and non-governmental organizations, indigenous communities, museums, libraries, archives, research institutions, educational institutions, commercial entities such as galleries and auction houses), often with very different or even divergent interests, and within fragmented legal regimes, especially when it comes to cultural heritage law. On the one hand, cultural heritage law has evolved between two main traditions, that of ‘nationalism’ or ‘retentionism’, where countries aim to keep as many cultural treasures as possible within their territories, and that of ‘internationalism’, ‘imperialism’ or ‘cosmopolitanism’,2 which in fact approaches cultural heritage as a trade commodity, that should freely circulate among countries, as it is kept and preserved for humanity as a whole irrespective of its provenance. In recent years, though, these two theories have been partly watered down and replaced by more pragmatic approaches, which aim at a synthesis rather than a segmentation. According to some of them (and depending on the case) cultural property may be inextricably linked to national identity but it may also present trade/property aspects. Through synergies 1 ‘IPR-intensive industries [in the EU] generated 29.2% of all jobs in the EU during the period 2014–2016. On average over this period, they employed almost 63 million people in the EU. In addition, another 21 million jobs were generated in industries that supply goods and services to IPR-intensive industries. Taking indirect jobs into account, the total number of IPR-dependent jobs rises to 83.8 million (38.9%). Over the same period, IPR-intensive industries generated almost 45% of total economic activity (GDP) in the EU, worth €6.6 trillion. They also accounted for most of the EU’s trade with the rest of the world and generated a trade surplus, thus helping to keep the EU’s external trade broadly balanced’. EPO and EUIPO, “IPR-intensive industries and economic performance in the European Union” Industry-Level Analysis Report, September 2019 Third edition . Christopher Heer, Dominic Cerilli, Daryna Kutsyna, “Statistics on the Value and Importance of Intellectual Property” (18 November 2020) . Both accessed 18 October 2021. Cultural heritage contributes to a country’s economy in a multifaced way and especially through tourism. See also UNESCO (2010), “Economy” https://​en​.unesco​.org/​creativity/​sites/​creativity/​ files/​cdis/​economy​_dimension​.pdf accessed 18 October 2021. 2 I. Stamatoudi, Cultural Property Law and Restitution. A Commentary to International Conventions and European Union Law, Edward Elgar Publishing, Cheltenham (UK) – Northampton (US), 2011, pp. 4seq. and 19seq.

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2  Research handbook on intellectual property and cultural heritage and co-operation, all these aspects can be brought to the forefront for the benefit of all the parties involved. International Conventions in this area tried to bridge the gaps between national laws to a certain extent.3 Also, EU law has harmonized certain aspects of it for EU countries.4 Still yet, national mentalities hold well in the area and each country has its own approach on the matter depending mainly on what it considers as being national cultural heritage and whose property this is supposed to be. This is one aspect of the spectrum. The other aspect is that many cultural heritage institutions (CHIs) possess significant cultural treasures or goods, which they need to preserve as part of their mission, bring forward, proliferate and give access to, for the public. Some of these institutions – despite the fact that some of them may be non-profit – make a living or sustain their goals through the commercial exploitation of those treasures on the basis of the production or design of copies in various forms – books, albums and so on – that are sold on the market or in their own (e-)shops. On the other hand, intellectual property laws have evolved in a trade-related environment bearing in mind – especially in the case of copyright – moral rights, too. If one also takes into account the fact that the idea for the global protection of IP was elaborated upon already in early 1800s,5 and that IP law then flourished as a response to multiple technological developments, digital technologies, the Internet, and artificial intelligence (AI),6 being some of the most recent ones, we ended up having sophisticated and elaborated rules depending on the type of the IP right. In some areas of IP, we also have more standardized and uniform provisions in a number of countries, when such provisions in the area of cultural heritage are rather sparse.7 3 See in particular the conventions that deal with the illegal removal and circulation of cultural goods, i.e., the 1970 UNESCO Convention on the Means of Prohibiting and Preventing the Illicit Import, Export and Transfer of Ownership of Cultural Property and 1995 UNIDROIT Convention on Stolen or Illegally Exported Cultural Objects; I. Stamatoudi, “Restitution of stolen and Illegally Exported Cultural Objects in the Context of the Unidroit Convention 1995” in P. Torremans (ed) Legal Convergence in The Enlarged Europe of the New Millennium, Kluwer Law International (2000), at 109. 4 Directive 2014/60/EU of the European Parliament and of the Council of 15 May 2014 on the return of cultural objects unlawfully removed from the territory of a Member State and amending Regulation (EU) No 1024/2012 (Recast), OJ L 159, 28.5.2014, p. 1–10; Council Regulation (EC) No 116/2009 of 18 December 2008 on the export of cultural goods (Codified version), OJ L 39, 10.2.2009, p. 1–7; Regulation (EU) 2019/880 of the European Parliament and of the Council of 17 April 2019 on the introduction and the import of cultural goods PE/82/2018/REV/1, OJ L 151, 7.6.2019, p. 1–14. I. Stamatoudi, “The national treasures exception in Article 36 EC: How many of them fit the bill?” (1998) 3 Art, Antiquity and Law 39; I. Stamatoudi, “National cultural treasures and the free movement of goods in the Single Market” in E. Trova (ed), Cultural Heritage and the Law, Sakkoulas Publications, Athens, 2003, at 261. 5 E.g., the 1623 Statute of Monopolies (UK), which although it prohibited most royal monopolies, it specifically preserved the right to grant ‘letters patent’ for inventions of new manufactures for up to 14 years and the 1710 Statute of Anne, which empowered writers with renewable 14-year protection for their original works. See also the 1883 Paris Convention for the Protection of Industrial Property (covering patents, trademarks and industrial designs), the 1886 Berne Convention for the Protection of Literary and Artistic Works and the 1891 Madrid Agreement, which launched the Madrid System for the international registration of trademarks. 6 Issues of AI are still under discussion. 7 Although its origins date back to the mid-nineteenth century when the first legal instruments were drafted, still cultural heritage law is under development. See some examples during this period: The Lieber

Introduction  3 In broad terms, one could argue that IP is there to serve the interests of both right-holders (authors, creators, singers, phonogram and film producers, publishers, inventors, trademark holders, designers, etc.) and the public and society at large, creating at the same time a fertile ground for a flourishing culture, which depends on incentives for further creation and production as well as on the free or cost-effective, easy and timely access to knowledge. Cultural heritage law aims to serve the interests of the cultural heritage as such, which is approached from different angles by different states. A general rule could be that – according to the view a state takes – state control can be extensive or less extensive (to non-existent), and thus private ownership restricted accordingly. Primary examples of cultural institutions found at the crossroads of cultural heritage and IP are museums, galleries, and auction houses, audiovisual and broadcasting organizations, libraries, archives, cultural digital platforms, and so on. All these have a role in the creation, production, exploitation, dissemination, and promotion of cultural property in both a conventional and a digital environment, making use at the same time of new business models and practices irrespective of whether they work for pecuniary or non-pecuniary benefit. There are two main aspects pertaining to the role of cultural institutions. The first one is their role as predominant users of IPRs. They face challenges and opportunities as custodians and managers of content that belongs to third parties or to which the state has an interest from a cultural heritage point of view. They need to preserve, enhance, and provide access to such content in a legal and at the same time efficient and effective manner. The second one is their role in the development of new or derivative content, which complements their role as custodians and providers of content and also renders them primary right-holders. It is in this context that one needs also to examine how information and communications technologies (ICTs) and cutting-edge technologies (e.g., augmented reality, virtual reality, AI) can facilitate and perhaps further extend this role of those institutions by building, for example, safe and robust tools to preserve national cultural heritage, and at the same time by facilitating development and delivery of value-added services in the cultural heritage sector. Especially in the area of AI-generated works of art, one wonders whose cultural heritage they are and to whom their Code (Francis Lieber, Instructions for the Government of Armies of the United States in the Field,1863); International Convention with Respect to the Law and Customs of War by Land (Hague II), 29 July 1899; Convention Respecting the Laws and Customs of War on Land (Hague IV), 18 October 1907; Article 238 of the Treaty of Peace between the Allied & Associated Powers and Germany, Versailles, 28 June 1919 and Protocols; Inter-Allied Declaration Against Acts of Dispossession Committed in Territories under Enemy Occupation or Control, London, 5 January 1943; Judgment of the International Military Tribunal, 30 September 1946; Convention for the Protection of Cultural Property in the Event of Armed Conflict (1954 Hague Convention on Cultural Property), 14 May 1954; Statutes of the International Centre for the Study of the Preservation and Restoration of Cultural Property, 5 December 1956 (as revised, 24 April 1963, and 14–17 April, 1969); Convention on the Means of Prohibiting and Preventing the Illicit Import, Export and Transfer of Ownership of Cultural Property, 14 November 1970; Convention Concerning the Protection of the World Cultural and Natural Heritage, 23 November 1972; Recommendation Concerning the International Exchange of Cultural Property, Adopted by the General Conference at its Nineteenth Session, Paris, 30 November 1976; Recommendation for the Protection of Movable Cultural Property, Adopted by the General Conference at its Twentieth Session, Paris, 28 November 1978; European Cultural Convention, 19 July 1954; European Convention on Offences Relating to Cultural Property, 23 June 1985; Convention for the Protection of the Architectural Heritage of Europe, 3 October 1985; European Convention on the Protection of the Archaeological Heritage (Revised), 16 January 1992; Resolution 1205, Looted Cultural Property, Parliamentary Assembly of the Council of Europe, 4 November 1999.

4  Research handbook on intellectual property and cultural heritage rights belong. New business models are also extremely relevant in a digital cross-border environment, where intermediaries can also play the role of either a facilitator or an aggregator. This book aims to explore the intersection between intellectual property rights (IPRs) and cultural heritage from a variety of angles and perspectives. It is divided into three main parts. Part I (IP Protection for Cultural Heritage) is subdivided into two sections. The first section (I.A) aims to deal with the notions of cultural heritage and intellectual property as these are found and defined in the various international conventions, EU law, and national legal instruments. Some basics will also be discussed as to how cultural property cuts across various areas of IP law giving rise to both synergies and frictions at the same time. The chapters to follow will look into this issue more extensively. More specifically, they shall discuss how various types of cultural property can be or are protected by different types of IP and what are the challenges and opportunities deriving from such an interplay. In fact, the types of IPRs discussed are copyright and related rights, patents, trademarks, designs and trade secrets. The second section (I.B) goes into more specialized issues, such as whether traditional knowledge databases form an effective mechanism against undue patent granting; whether appropriation art is compatible with copyright law and the conflict between copyright law and the freedom of art; the conflict between the right to tangible property and the right to intangible property when it comes to street art, graffiti and copyright law; the challenges that the online exploitation of images sets; whether linking, framing, and browsing digital works of art is compatible with copyright law and under what conditions; the protection of traditional cultural expressions by geographical indications; and lastly, copyright ownership issues arising from the production of AI-generated works of art. Apart from the legal and factual interplay between cultural heritage and IPRs, there are also some politics involved, which sometimes transforms itself into policies either through best practices and soft law or through the introduction of new legislation. Part II (Politics and policies associated with protecting cultural heritage by IPRs) deals with a variety of issues that could come under the umbrella of politics and policies, and which are associated with the protection of cultural heritage by IPRs. These are a state’s discretion to classify IP protectable subject matter as national cultural heritage. In this regard the Greek example will be taken. The intersection between IP and cultural heritage will also be explored from a human rights perspective. There will also be an attempt to offer a general overview of best practices and examples relating to the protection of folklore, traditional knowledge, and genetic resources. The next chapter in this part will examine the role of a robust and thriving public domain for cultural heritage and the need for an effective access to content in general and art and culture in particular. This is also based on the premise that where IP protection expires, cultural heritage protection comes into play despite the fact that on many occasions these two protections coincide and in cases even when IPRs have expired, their subject matter could still be relevant from a cultural heritage point of view. This section ends with the role of governmental organizations in the area of cultural heritage and IP law. Part III (Special issues for cultural institutions) explores special issues pertaining to the role and function of cultural institutions of various types and missions. This part starts with the artist’s resale right, exploring its justification, content, operation, and significance. It then goes on to identify and explain IP issues relating to the increasing need of digitizing the collections of libraries and archives. The next three chapters are more managerial in nature as they focus on both theoretical and practical issues concerning the nexus between IP, cultural heritage, and the role of museums of the visual arts, galleries, and auction houses, as well as cultural

Introduction  5 heritage institutions in general. Chapter 25 deals with IP issues relevant to cultural heritage platforms and to new business models (such as Europeana, Google Arts, Creative Commons, etc.). Chapter 26 deals with the law, policy, and the preservation of videogames as digital cultural heritage, while Chapters 27 and 28 discuss private international law and alternative dispute resolution issues relating to cultural property and art disputes respectively. Chapter 29 explores issues pertaining to the intellectual property issues that arise regarding the 3D printing of cultural heritage and the separation of the intellectual expression of cultural artifacts from the tangible media in which it is fixed. At the end conclusions are drawn, placing the emphasis on highlights of the discussions included in this book. The idea for this book occurred to me not only because this was a specialization which I catered for, for years, both academically but also in practice from the post of the Director General of the Hellenic Copyright Organization8 (2007 to 2018) and as an advisor and member of many advisory committees to the Greek Ministry of Culture on cultural heritage matters (1999 up to date), but also by reason of the fact that the academic materials in the area were scarce, which was a disappointing conclusion to draw if one realizes that the needs were inversely proportional to the existing writings. The intersection between IP and cultural heritage – as explained above – is not only complex, but also sensitive, as it involves issues of morality, ethics, and public policy. From that point of view, it merits a considerable amount of research. I would primarily like to thank the publishers for giving me the chance to explore this field further. I would also like to thank the contributors for their willingness and enthusiasm with which they responded to my call. If it was not for them, this book would not come to existence. Last but not least, I would like to thank Dr Maria Papavassileiou and Dr Konstantinos Roussos for helping me out with the logistics of this project.

8 The HCO belongs to the Greek Ministry of Culture and Sports and is the competent authority in Greece for copyright matters.

PART I IP PROTECTION FOR CULTURAL HERITAGE

Section I.A General

1. The notions of intellectual property and cultural heritage: Overlaps and clashes Irini Stamatoudi

1. INTRODUCTION Intellectual property is an area of law that has primarily evolved as a response to the printing press and the Industrial Revolution and then to the technological and digital developments that followed. Yet, it has also been used as a vehicle in certain circumstances to accommodate the protection of more traditional subject matter that could not necessarily fit in some other area of law. Certain jurisdictions, for example, have based the legal protection of traditional cultural expressions/folklore, genetic resources and traditional knowledge on IP or IP-like or even IP-inspired regimes. Although many of the legal principles governing intellectual property rights have evolved over centuries, it was not until the 19th century that the term intellectual property began to be used, and not until the late 20th century that it became commonplace in the majority of the world. The British Statute of Anne 1710 and the Statute of Monopolies 1623 are now seen as the origins of copyright and patent law respectively. In ancient Greece, copyright was not protected, and creators mostly earned their living from subsidies received from the state or rich patrons (Mecenases). Claims sounding in moral right, especially the creator’s right to have authorship of his work attributed to him, found pronounced social recognition, but remained without legal sanctions.1 Intellectual property rights (IPRs) refer to the legal rights granted with the aim to protect the fruits of the human intellect in the field of industry, literature, art and science. These rights include industrial property rights (e.g., patents, industrial designs, trademarks, etc.) and copyright (rights of the authors or creators) and related rights (rights of the performers, sound and film producers, broadcasting organizations, etc.). These legal rights are usually absolute and exclusive rights, i.e., they belong to their right-holder and can only be exercised by him. That means that any use (on most occasions commercial use only) of subject matter that is protected

1 I. Stamatoudi, “Greece” in L. Bently (ed) International Copyright Law and Practice, Matthew Bender, US (loose-leaf), 2021. See also Marianina Olcott, “Ancient and Modern Notions of Plagiarism: A Study of Concepts of Intellectual Property in Classical Greece,” Journal of the Copyright Society of the U.S.A., 2002, vol. 49, p. 1047. Note that the ancient city-state Sybaris, a Greek colony in Southern Italy, had a law entitling the creator of a new and tasty dish to use this dish exclusively for one year. See Athenaeus, The Deipnosophists (trans. C.B. Gulick, Loeb Classics, 1963), vol. 5, p. 349. See also Stanford Encyclopedia of Philosophy, “Although there is no known Roman law protecting intellectual property, Roman jurists did discuss the different ownership interests associated with an intellectual work and how the work was codified—e.g., the ownership of a painting and the ownership of a table upon which the painting appears. There is also reference to literary piracy by the Roman epigrammatist Martial. In this case, Fidentinus is caught reciting the works of Martial without citing the source” https://​ plato​.stanford​.edu/​entries/​intellectual​-property/​.

8

The notions of intellectual property and cultural heritage  9 by IPRs is not allowed without the right-holder’s consent and without paying a fee unless such use is permitted on the basis of an exception or limitation or as a matter of a balancing act between the clash of two, for example, fundamental rights, which (balancing act) however is ultimately judged by the courts. IPRs – through the granting of a legal monopoly/exclusivity to the right-holder – (a) give statutory expression to the moral and economic rights of creators and inventors in their creations and inventions respectively and the rights of the public in having access to those creations and inventions. These rights are limited in time (with the exception of trademarks) so that the balance between the two (i.e., the rights of authors and inventors and those of the public at large) are balanced; and (b) promote, as a deliberate act of government policy, creativity, innovation and the dissemination and application of their results and encourage fair trading, which contributes to economic and social development. These are intangible rights and should therefore be distinguished from the physical or digital carrier on which they are embodied (e.g., one should distinguish between the book as paper and ink and the story in it attracting copyright protection). According to the principle of territoriality applying to IPRs by reason of the international conventions in the area, the scope of protection of an IP right is limited to the territory of the state where the right is granted.2 This means that although IPRs differ from country to country (e.g., copyright laws are different in the US and in Greece) or country to region (e.g., Canadian patent and European patent), and are independent from each other, they co-exist alongside each other on the same immaterial good. Thus, IPRs are absolute and exclusive (property) rights, on intangible subject matter, limited in time, and with the aim, on the one hand, to safeguard the interests of the right-holders (both pecuniary and non-pecuniary), while on the other hand, to encourage fair trading and incentivize further creation and innovation for the benefit of society, culture and the economy. They also aim at regulating access to knowledge and information either through mechanisms of disclosure (as is the case with patents) or after the expiration of an IPR’s duration. To these the application of exceptions and limitations should also be added as they enable uses of protected subject matter that otherwise would be covered by the exclusive right. On the other side of the spectrum is cultural heritage law, which is an area of law which developed as a response to the need to protect a state’s cultural heritage originally as part of its national culture. This is also the reason why the first laws on cultural heritage are national laws, while only later the need emerged for international legal instruments that would respond to the need of protection of cultural treasures in times of war as in times of peace. A number of important legal instruments emerged in this respect, placing the emphasis on the protection of cultural treasures during war,3 the prevention of the illegal movement of cultural goods,4 the 2 This principle is embedded in all national legal systems in compliance with the TRIPs Agreement and EU law. See G.B. Dinwoodie, ‘Developing a Private International Intellectual Property Law: the Demise of Territoriality’, in William & Mary L. Rev. 2009, 711ff.; A. Peukert, Territoriality and Extraterritoriality in Intellectual Property Law, in G. Handl – J. Zekoll (eds), Beyond Territoriality: Transnational Legal Authority in An Age of Globalization, 2011, 194ff.; P. Torremans, Copyright territoriality in a borderless online environment, in J. Axhamn, Copyright in a borderless environment, Norstedts Juridik. Stockholm, 2012, 23ff. 3 E.g., 1954 Convention for the Protection of Cultural Property in the Event of Armed Conflict. 4 E.g., the 1970 UNESCO Convention on the Means of Prohibiting and Preventing the Illicit Import, Export and Transfer of Ownership of Cultural Property; 1995 UNIDROIT Convention on Stolen

10  Research handbook on intellectual property and cultural heritage safeguard of underwater cultural heritage,5 the international recognition of natural and cultural sites all over the world,6 and the safeguard of intangible cultural heritage and the protection and promotion of the diversity of cultural expressions.7 Regional law has also been enacted in this area, which to a certain extent has incorporated some of the relevant international conventions, with the prime example being the law of the European Union.8 The reference to international legal instruments and EU law in this chapter is indicative (per the needs of the discussion) and not exhaustive. The aim of this chapter is (a) to provide a primer (or a useful summary) of the basic notions of intellectual property (IP) and cultural heritage (CH) so as to set the framework within which discussion will develop in the next chapters of the book, and (b) give a small overview of the most characteristic overlaps and clashes between IP and CH law as well as a small insight/ indication as to how these two areas of law may work complementarily to each other.

2.

THE NOTION OF INTELLECTUAL PROPERTY (IP)

The basic characteristics of intellectual property rights have been set out in the first section of this chapter. This section aims to move on to the specifics of each type of IP. Although the scope of IP is very wide and encompasses far more types of IP than the ones that will be discussed in this section, we shall only refer to those that are relevant for the purposes of this book. 2.1

The Notion of Copyright and Related Rights

Copyright is a legal term referring to a set of legal provisions aiming at the protection of the rights of authors and creators over their literary and artistic works. A prerequisite for copyright protection is originality. A work is not protected unless it is original. Some jurisdictions (usually common law jurisdictions) provide for additional prerequisites such as classification (i.e., a work needs to be classified in one category of protected subject matter), fixation (i.e., a work needs to be fixated on some kind of medium: tangible or digital), and so on. Copyright protection extends only to expressions, and not to ideas, procedures, methods of operation or mathematical concepts, news information or simple facts and data as such. Other type of work such as official texts expressive of the authority of the state (notably legislative, administrative, or judicial texts) may also be specifically excluded from copyright protection by law. Copyright may or may not be available for a number of objects such as titles, slogans, or logos, depending on whether they are considered creative/original.

or Illegally Exported Cultural Objects; 2017 Council of Europe Convention on Offences Relating to Cultural Property (the Nicosia Convention). 5 2001 The Convention on the Protection of the Underwater Cultural Heritage. 6 1972 Convention Concerning the Protection of the World Cultural and Natural Heritage. 7 2003 The UNESCO Convention for the Safeguarding of the Intangible Cultural Heritage and the 2005 Convention for the Protection and Promotion of the Diversity of Cultural Expressions. 8 Art. 36 TFEU; EU Directive 2014/60 on the return of cultural objects unlawfully removed from the territory of a Member State; EU Regulation 116/2009 on the export of cultural goods; EU Regulation 880/2019 on the introduction and the import of cultural goods.

The notions of intellectual property and cultural heritage  11 According to the Berne Convention, which precludes any formalities as a prerequisite for copyright protection, copyright protection is obtained automatically without the need for registration or other formalities. Yet, some countries have a system in place to allow for the voluntary registration of works. Such voluntary registration systems can help solve disputes over ownership or creation, as well as facilitate financial transactions, sales, and the assignment and/or transfer of rights.9 Other countries provide for the voluntary registration with an organization in order for one to acquire a certified date without that being, of course, a prerequisite for protection.10 It just works as a rebuttable presumption that a work existed on a particular date and was deposited by its potential right-holder. Article 2 of the Berne Convention states that: “The expression ‘literary and artistic works’ shall include every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression.” The Convention lists the following examples of such works: ● ● ● ● ● ●

books, pamphlets and other writings; lectures, addresses, sermons; dramatic or dramatico-musical works; choreographic works and entertainments in dumb show; musical compositions with or without words; cinematographic works to which are assimilated works expressed by a process analogous to cinematography; works of drawing, painting, architecture, sculpture, engraving and lithography; photographic works to which are assimilated works expressed by a process analogous to photography; works of applied art; illustrations, maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or science; “translations, adaptations, arrangements of music and other alterations of a literary or artistic work,” which “shall be protected as original works without prejudice to the copyright in the original work”; and “collections of literary or artistic works such as encyclopedias and anthologies which, by reason of the selection and arrangement of their contents, constitute intellectual creations” – again, the Convention provides that these “shall be protected as such, without prejudice to the copyright in each of the works forming part of such collections.”11

● ● ● ● ● ●

Computer programs and databases are also protected by copyright.12 Yet, there are also works that are not expressly referred to in international conventions, regional (such as EU) legislation or national law and are still protected by copyright to the extent they are original. Such examples can be multimedia works, websites, virtual reality shows, augmented reality works, 3D printing, and so on. It is also currently explored whether artificial intelligence works may also be protected by copyright or by a right akin to it.

The US system requires for US works registration with the Library of Congress. See, for example, the system operated by the Hellenic Copyright Organization (Greece). 11 WIPO, Understanding copyright and related rights, 2016, p. 7 https://​ www​ .wipo​ .int/​ edocs/​ pubdocs/​en/​wipo​_pub​_909​_2016​.pdf. 12 Added to the list of protected works under Berne on the basis of article 10 TRIPs Agreement. 9

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12  Research handbook on intellectual property and cultural heritage Works are not protected by copyright unless they are original. The criterion of originality is rarely defined in the laws. It usually derives from case law and differs essentially between the two large copyright traditions: the common law and the continental law traditions as well as between countries belonging to one or another. Under the common law tradition, the originality criterion is rather low, varying between skill, labour and judgement (UK) and the ‘sweat of the brow’ principle (US). In the civil law tradition, the originality criterion is rather high, usually requiring that the work reflects the author’s personality. In the EU, for example, a work is original if it is its author’s own intellectual creation, i.e., the author has made free and creative choices and has stamped the work with his personal touch.13 Copyright is an absolute right in the sense that its holder is the exclusive owner of the rights in the work and can exclude third parties from using her or his work without her/his authorization. There are two types of rights under copyright: ● economic rights, which allow the rights owner to derive financial reward from the use of his works by others; and ● moral rights, which protect the non-economic interests of the author in his work. Thus, a rights owner can prohibit or authorize (sometimes – depending on the right and the jurisdiction – he only has a right to receive remuneration for the use of his work) any of the following acts:14 ● its reproduction in various forms, such as printed publication or sound recording, and distribution to the public; ● its public performance, such as in a play or musical work; ● its recording, for example, in the form of compact discs or DVDs; ● its broadcasting, by radio, cable or satellite; ● its translation into other languages; ● its adaptation, such as a novel into a film screenplay; ● import and export; ● resale right for works of the visual arts; ● its communication, and making available to the public/on demand right (the latter for internet uses only where the public can access the work whenever and from wherever one wishes). The Berne Convention provides for minimum moral rights protection: (a) the right to claim authorship of a work (right of paternity), and (b) the right to oppose changes to a work that could harm the creator’s reputation (right of integrity). Yet, a number of (essentially civil law) jurisdictions have extended this protection by (a) adding to the list of moral rights, such as15

13 I. Stamatoudi, “Originality under EU Copyright Law” in P. Torremans (ed.), Copyright Law: A Handbook of Contemporary Research, Edward Elgar Publishing, Cheltenham (UK) – Northampton (US), 2017, 57. 14 This list may differ between jurisdictions. 15 This enumeration may differ between jurisdictions not only concerning the nature of the rights but also their content.

The notions of intellectual property and cultural heritage  13 the right of publication,16 the right of withdrawal/repudiation for literary and scientific works,17 and the right to have access to a work;18 (b) extending the scope of the right of integrity by not providing the additional requirement concerning the harm to the creator’s reputation; (c) rendering the moral rights provisions ius cogens (compulsory), meaning that one may not transfer or waive them;19 (d) extending their duration beyond the one for the economic rights.20 Moral rights are not usually subject to exceptions or limitations, despite the fact that even in those jurisdictions that cannot be waived, one may limit them by providing express authorizations in writing, for particular and restrictively defined acts.21 Yet, the economic rights of authors are subject to exceptions and limitations for the benefit of research, education, the press, less privileged groups (such as people with disabilities), and society at large.22 It seems that these provisions aim to restore the balance between the rights of the authors (to be able to make a living out of their works, control their exploitation and therefore have an incentive for further creation) and those of society (to have access to works and other materials, especially under certain circumstances without the need of authorization and the payment of a fee23). Some of these exceptions are the exception for the reproduction of works for private purposes, the right of quotation, the panorama exception, exceptions for teaching and research, for the benefit of the press, for caricature and pastiche, for people with disabilities, etc. All these exceptions are subject to the three-step test, i.e., (a) the reproduction of a work can only be permitted in ‘certain special cases’, (b) it should not conflict with the ‘normal exploitation’ of the work, and (c) it should not unreasonably prejudice the ‘legitimate interests’ of the author. According to the Berne Convention, copyright lasts for a minimum of 50 years from the death of the author, while in the EU the duration extends to 70 years after the death of the author, calculated from 1 January of the year following the event of the death. Other jurisdictions, such as the US, provide for a longer protection in certain instances. The initial owner of copyright in a work is usually its author (a number of jurisdictions provide that the author can only be a natural person), although there may be presumptions in the law which vest rights in certain instances to other parties such as employers or other entrepreneurs. National law usually provide for special provisions for special types of works, such as audiovisual works, computer programs, databases, etc. They also provide for tailor-made

An author’s right to decide if, when, and where to publish his work. An author’s right to withdraw a literary or scientific work from the market (compensating his publisher) in case of change in convictions or beliefs. 18 An author’s right to have access to works of unique embodiment (usually works of the visual arts) in case he has been alienated from them by reason of sale or donation (causing the least possible nuisance to their owner). 19 Usually, moral rights cannot be transferred. Yet, in some common law jurisdictions they need to be asserted as part of the copyright protection. 20 For example, in Greece, the right of paternity and the right of integrity last forever and can be exercised – after the expiration of copyright – by the Minister of Culture. 21 See, for example, article 16 (entitled “Consent of the Author as Exercise of the Moral Right”) Law 2121/1993 as amended (Greece). 22 P. Samuelson, “Justifications for Copyright Limitations & Exceptions” https://​www​.law​.berkeley​ .edu/​files/​Justications​_for​_Copyright​_Limitations​_and​_Exceptions​_​-​_Pamuela​_Samuelson​.pdf. 23 Yet, there are exceptions where an act may be exempted but a fee may need to be paid. See, for example, the EU exception on compensation for the purposes of private reproduction. 16 17

14  Research handbook on intellectual property and cultural heritage provisions for the transfer or licensing of rights of special types of works (print publications, (re-)use of photographs, audiovisual works, etc.). Apart from authors, copyright law also protects related rights holders. These are entitled to protection because they invest in the production, promotion, or dissemination of a work not only with money but also with expertise or through their acting or interpretation of the work. Therefore, their efforts and investment should not be open to free-riding. Depending on the jurisdiction24 these are usually: ● ● ● ● ● ●

performers or performing artists; producers of audio and/or video media; broadcasting organizations; publishers of print materials; database makers; people publishing for the first time unpublished creations in which copyright protection has expired; ● publishers of press publications for the online use of their press publications by information society service providers. Related rights are independent from copyright and do not prejudice copyright. Their scope of protection is more limited compared with copyright, but many copyright provisions usually apply to them per se. In the EU performers are also entitled to a limited moral rights protection, i.e., to a right of paternity and a right of integrity. Most related rights usually last for 50 years running from a triggering event, although there are special provisions for some of them such as the sui generis right for databases,25 the right in previously unpublished works,26 and the right for the online press publications.27 Given the fact that right-holders cannot always collect royalties themselves (as this would not be cost-effective and would also be highly impractical) for the use of their works, they authorize (through an assignment, licence, or any other contractual arrangement) such rights to collective management organizations (CMOs) or other similar entities (e.g., independent

24 The EU provide for specific types of right-holders such as database makers and publishers of press publications for their online use of their works. 25 Article 10 EU Database Directive. This right runs for 15 years from the date of completion of the making of the database calculated from 1 January of the year following the date of completion. In the case of a database which is made available to the public in whatever manner before expiry of this period, the term of protection by that right shall expire 15 years from 1 January of the year following the date when the database was first made available to the public. Any substantial change evaluated qualitatively or quantitatively, to the contents of a database, including any substantial change resulting from the accumulation of successive additions, deletions, or alterations, which would result in the database being considered to be a substantial new investment, evaluated qualitatively or quantitatively, shall qualify the database resulting from that investment for its own term of protection. 26 Article 4 EU Term of Protection Directive: “Any person who, after the expiry of copyright protection, for the first time lawfully publishes or lawfully communicates to the public a previously unpublished work, shall benefit from a protection equivalent to the economic rights of the author. The term of protection of such rights shall be 25 years from the time when the work was first lawfully published or lawfully communicated to the public.” 27 Article 15(1) EU Digital Single Market Directive. This right expires two years after the press publication is published. That term is calculated from 1 January of the year following the date on which that press publication is published.

The notions of intellectual property and cultural heritage  15 management entities) that collect them on their behalf and distribute them to their members/ right-holders.28 CMOs operate on prescribed rules on transparency and governance, as these are set by the EU Directive on Collective Management and have been transposed into the national laws of EU Member States.29 Copyright laws contain provisions on the enforcement of rights varying from out-of-court enforcement (by police, custom authorities, municipalities, tax police, port police, etc,) to administrative, civil, and penal sanctions (the two latter can be pursued in the courts). Alternative dispute resolution is also possible.30 Concerning the intersection between copyright and CH, we pinpoint to the most common and interesting issues arising. Many artists, especially those using new technologies or even artificial intelligence, are not entirely sure who owns copyright.31 Issues also arise with regard to the protection of works qualifying as appropriation art, street art and graffiti.32 On top of this, we also have issues with those jurisdictions where works – especially works of the visual arts – may qualify as national cultural heritage because of their importance, rarity, connection to national history as well as for other reasons. In these cases, national laws may impose restrictions on the transfer of ownership and use of those works for the sake of cultural heritage preservation.33 Copyright law is particularly relevant for cultural heritage institutions (perhaps the most relevant compared with any other type of IP right), which possess in their collections or have acquired by purchase, loans or donations, any types of works of the visual arts, such as paintings, sculptures, collages, photographs, video art as well as books, archives, databases, documents, archival materials, documentaries, and so on. Copyright becomes relevant when these institutions wish to take action pursuing their vision and aims: make their collections available to the public, digitize them,34 use them in tourist or art guides, in albums, in virtual

According to article 3 of the EU Collective Rights Management (CRM) Directive: (a) ‘collective management organization’ means any organization which is authorized by law or by way of assignment, licence or any other contractual arrangement to manage copyright or rights related to copyright on behalf of more than one right-holder, for the collective benefit of those right-holders, as its sole or main purpose, and which fulfils one or both of the following criteria: (i) it is owned or controlled by its members; (ii) it is organized on a not-for-profit basis; (b) ‘independent management entity’ means any organization which is authorized by law or by way of assignment, licence or any other contractual arrangement to manage copyright or rights related to copyright on behalf of more than one right-holder, for the collective benefit of those right-holders, as its sole or main purpose, and which is: (i) neither owned nor controlled, directly or indirectly, wholly or in part, by right-holders; and (ii) organized on a for-profit basis. 29 Directive 2014/26/EU of the European Parliament and of the Council of 26 February 2014 on collective management of copyright and related rights and multi-territorial licensing of rights in musical works for online use in the internal market OJ L84/72/20.3.2014 (CRM Directive). 30 See Chapters 27 and 28 on issues of private international law and ADR respectively. 31 See Chapter 13 on copyright ownership challenges arising from AI-generated works of art. 32 See Chapters 8 and 9. 33 See Chapter 14 on states’ discretion to classify IP subject matter as national cultural treasures. 34 See Chapter 20 on digitization of cultural heritage under EU copyright. 28

16  Research handbook on intellectual property and cultural heritage tours, in cultural heritage platforms (e.g., Europeana, Google Art),35 in social media,36 provide links to third party sites,37 use them as the basis for immersive performances, gamification and video games,38 for projects of virtual or augmented reality, or which want to commercialize them through (e-)shops (by reproducing copies or producing derivative works or collections of works, posters, photographs, etc.), or solely upload them on their site. As was demonstrated above, any ‘dealing’ with protected subject matter (and we have seen that there are a great variety of things that may be protected by copyright and/or related rights) requires the authorization of its right-holder unless an exception or limitation applies, or the material is subject to open initiatives such as Free and Open Source Software (FOSS) and Creative Commons (CC). There are currently exceptions and limitations that are relevant for non-profit and cultural heritage institutions for the purposes of preserving materials, using them in catalogues and books, digitizing orphan works and out of commerce works in their collections and so on. Some of them are discussed in the chapters of this book. Yet, an institution cannot rely solely on exceptions and limitations or open initiatives to pursue its goals. It needs to take positive action to ensure that it has all the necessary rights and licences to conduct its operations and that its employees, collaborators, and suppliers work under a clear understanding with the institution as to who holds rights in what as well as the extent and scope of those rights. Copyright is also relevant when institutions wish to use third party rights for campaigning, advertising purposes, for creating content, for the making of copies from images of artefacts in their collections (e.g., create a mug with details from a painting), use photographs taken by third parties, link to third parties’ content on the Internet and so on. These are the instances where the institutions need to make sure that they do not infringe third party rights. Relevant chapters in this book will explore issues of management of protected subject matter shedding light on the variety of the issues emerging.39 Last but not least, there is also the issue whether copyright or related rights can be used as a vehicle to protect cultural heritage material such as traditional cultural expressions (TCEs) and folklore.40 The main characteristics of TCEs are that they may be considered as the forms in which traditional culture is expressed. They form part of the identity and heritage of a traditional or indigenous community and are passed down from generation to generation. They may

35 See Chapter 25 dealing with IP issues relating to cultural heritage platforms and new business models. 36 See Chapter 10 on copyright issues on the use of images on the Internet. 37 See Chapter 11 on linking, framing, and browsing digital or digitized works of art. 38 See Chapter 26 on video games. 39 See Chapters 21, 22 and 23. 40 WIPO’s Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC) is negotiating the international legal protection of TCEs. See WIPO Publication (2015), Intellectual Property and Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions https://​www​.wipo​.int/​publications/​en/​details​.jsp​?id​=​248; WIPO Publication, Intellectual property and traditional cultural expressions/folklore https://​www​.wipo​.int/​edocs/​pubdocs/​ en/​ tk/​ 913/​ wipo​ _pub​ _913​ .pdf; WIPO Publication (2015), Intellectual Property and Folk, Arts and Cultural Festivals. Practical Guide https://​www​.wipo​.int/​publications/​en/​details​.jsp​?id​=​4371; WIPO Publication (2002) P.V. Valsala, G. Kutty, National experiences with the protection of expressions of folklore/traditional cultural expressions. India, Indonesia and the Philippines https://​www​.wipo​.int/​ edocs/​pubdocs/​en/​tk/​912/​wipo​_pub​_912​.pdf; https://​www​.wipo​.int/​publications/​en/​details​.jsp​?id​=​287​ &​plang​=​EN; UNESCO – WIPO Model Provisions for National Laws on Folklore https://​www​.wipo​.int/​ export/​sites/​www/​tk/​en/​folklore/​1982​-folklore​-model​-provisions​.pdf.

The notions of intellectual property and cultural heritage  17 include music, dance, designs, performances, ceremonies, architectural forms, handicrafts and narratives. Most of the times the term ‘TCEs’ is used interchangeably with the term ‘folklore’. Contemporary adaptations of expressions of folklore are copyrightable, while performances of traditional songs and music may come under the 1996 WIPO Performances and Phonograms Treaty (WPPT) and under the 2012 Beijing Treaty on Audiovisual Performances. These issues are explored further in Chapter 2 of the book. 2.2

The Notions of Patents and Utility Models

Having discussed copyright, we now move to industrial property law starting with patents. Patent law protects inventions.41 Inventions may relate to a new device, product, method, or process that have been created from scratch, or to an incremental improvement to a known product or process. Merely finding something that already exists in nature generally does not qualify as an invention since an adequate amount of human ingenuity, creativity, and inventiveness must be involved. If an invention meets the requirements for patentability (i.e., constitutes patentable subject matter, is new, presents an inventive step and is industrially applicable), its inventor may apply for a patent. A patent is a document, issued, upon application, by a government office (or a regional office acting for several countries), which describes an invention and creates a legal situation in which the patented invention can normally only be exploited (manufactured, used, sold, imported) with the authorization of the owner of the patent.42 In other words, we refer to a legal monopoly in the sense that this right confers on its right-holder absolute and exclusive rights for a limited period of time, i.e., generally 20 years from the filing of the application. Once the patent expires, the protection ends and the invention enters the public domain, i.e., anyone can use it without the need of any authorization or the payment of a fee. Patents resemble a social contract where exclusive, limited-in-time protection is granted in exchange for disclosing the invention to the public. Patentable subject matter Patent protection is generally available for inventions in all fields of technology.43 Yet, states may exclude subject matter from protection, such as: ● discoveries of materials or substances already existing in nature; ● scientific theories or mathematical methods; ● plants and animals other than microorganisms, and essentially biological processes for the production of plants and animals, other than non-biological and microbiological processes; ● schemes, rules or methods, such as those for doing business, performing purely mental acts or playing games; ● methods of treatment for humans or animals, or diagnostic methods practised on humans or animals (but not products for use in such methods);44 41 The aim of patent law is to encourage technological innovation by providing information on the latest technical developments and ensuring exclusive rights to patent holders, promote competition and investment as well as promote technology transfer. 42 EPO Teaching Kit https://​www​.epo​.org/​learning/​materials/​kit​.html. 43 Article 27.1 of the TRIPS Agreement. 44 Article 27.3 of the TRIPS Agreement.

18  Research handbook on intellectual property and cultural heritage ● as well as inventions the commercial exploitation of which would contravene public order or morality.45 Requirements of patentability As we already mentioned, an invention is patentable if it is new, involves an inventive step and is industrially applicable. An invention is new if upon its application for patent protection it is not part of the existing knowledge found anywhere in the world in any form (written or oral), usually referred to as ‘prior art’.46 Inventiveness/obviousness (the second requirement) comes as a supplement to the previous one and is the most difficult one to assess. According to it an invention should not be obvious to a person having ordinary skill in the art (i.e., possessing normal skills and knowledge in a particular technical field), meaning that protection should not be given to what is already known as part of the prior art, or to anything that the person with ordinary skill could deduce as an obvious consequence thereof. The requirement of industrial applicability/utility means that the invention must be of practical use, or capable of some kind of industrial application. Patent law grants exclusive rights to its holders on the basis of which they may prevent others from making, using, offering for sale, selling or importing infringing products in the country where the patent was granted. These rights also allow them to assign, sell or license the whole or part of their patent rights. Patent law also provides for exceptions for non-commercial purposes such as private use and academic research. There are various routes for protecting inventions through patent law depending on the geographical coverage one aims at. There is the national route (where one according to the principle of territoriality gets protection in the country in which the invention has been registered), the regional route (e.g., the European patent47 and the European Union Patent48), where one gets protection in the region in which the invention has been registered, and the international route (i.e., through the Patent Cooperation Treaty (PCT), where one gets protection in all the countries-members of the PCT which one selected upon application and which have accepted her/his application).49 The European Patent and the PCT are bundle of rights, i.e., one gets as many patents as countries in which one applied successfully, while the European Union Patent is a unitary right which is valid for the whole of the EU and cannot be restricted geographically.50 Inventions can also be protected as utility models (or also known as ‘short-term patents’ as well as by other names depending on the jurisdiction). Not all countries provide for utility models protection. Also, there is no regional protection (e.g., central filing in the EU) or international filing systems. The difference with patents is that their requirements for protection are less strict, in particular with regard to the inventive step, fees are lower, and the duration of protection is shorter (depending on the jurisdiction it may extend to 10 years, while patents are protected for 20 years). The process from filing to granting is far simpler compared with Article 27.2 of the TRIPS Agreement. ‘Prior art’ is, in general, all the knowledge that existed prior to the relevant filing or priority date of a patent application, whether it existed by way of written or oral disclosure. 47 According to the European Patent Convention https://​www​.epo​.org/​. 48 The European Patent with Unitary Effect (EPUE) is not in force at the time of writing this chapter. See https://​ec​.europa​.eu/​growth/​industry/​strategy/​intellectual​-property/​patent​-protection​-eu​_en. 49 https://​www​.wipo​.int/​pct/​en/​. 50 Except for Spain and Croatia. 45 46

The notions of intellectual property and cultural heritage  19 patents in the sense that utility models are registered and published a few months after application and there is generally no substantive examination as to the actual requirements of protection. Usually, utility models are reviewed only in invalidation or infringement proceedings. Otherwise, the rights under the utility model protection are similar to the ones for patents. Some of the elements that are comprised by the notion of cultural heritage, such as traditional knowledge (TK) of indigenous and local communities, especially those related to genetic resources (GR), may have relevant intersections with patent law. In fact, its technical character and its special protection at the international level through the Convention on Biological Diversity (CBD) and the Nagoya Protocol led to its approximation with patent law.51 Two aspects of it seem of interest. First, in the context of so-called positive protection, the possibility for communities to obtain TK protection by means of patent law and second, in the context of defensive protection, one needs to explore how to avoid the misappropriation of this knowledge by impeding third parties from patenting inventions based on it that do not fulfil the substantive requirements for protection. There is a special chapter on these issues in the book (Chapter 4). In the context of the defensive protection, one also needs to ensure that the system avoids granting patents merely based on traditional knowledge (TK) from indigenous and local communities.52 This can be done if TK is considered as part of the prior art. A separate chapter deals with this issue (Chapter 7). Apart from the above, there may be instances where a cultural heritage institution may develop itself an invention, such as, for example, the technology that has been developed in collaboration between the J. Paul Getty Museum in Los Angeles, the Hellenic Ministry of Culture and Sports, and the National Technical University of Athens, on the protection of museum objects in the event of earthquakes.53 This is also a need which emerges very often in relation to the development of computer programs in those countries that protect software by patent law. In all these cases, it is useful for institutions to know (a) how to proceed with the protection of such subject matter and especially how not to jeopardize its protection by, for example, revealing it through publications and therefore destroy novelty (which forms a necessary requirement for protection), and (b) what to be aware of if they themselves use third party patents or utility models to pursue their aims. These are some of the issues dealt with under the chapters on CH and IP management (Chapters 22 and 23).

51 “In considering IP issues associated with GRs, WIPO’s work complements the frameworks for access and benefit-sharing provided by the Convention on Biological Diversity (CBD) and its Nagoya Protocol, the International Treaty on Plant Genetic Resources for Food and Agriculture of the United Nations Food and Agriculture Organization (FAO), the Pandemic Influenza Preparedness Framework (PIP) Framework of the World Health Organization and other specialized access and benefit-sharing framework” https://​www​.wipo​.int/​tk/​en/​genetic/​. 52 This is also called bio-piracy. See Sangeeta Udgaonkar, ‘The Recording of Traditional Knowledge: Will It Prevent “Bio-Piracy”?’ (2002) 82 Current Science 414; John Reid, ‘Biopiracy: The Struggle for Traditional Knowledge Rights’ (2009) 34 American Indian Law Review 78. 53 The J. Paul Getty Museum, the Hellenic Ministry of Culture and Sports, and the National Technical University of Athens announced the signing of a research agreement to collaborate on a project to protect museum objects in the event of an earthquake, beginning with the National Archaeological Museum in Athens, Greece (20.2.2018) https://​www​.getty​.edu/​news/​getty​-museum​-collaborates​-on​ -seismic​-research​-project​-with​-university​-athens​-greece/​.

20  Research handbook on intellectual property and cultural heritage 2.3

The Notions of Trademarks and Geographical Indications

A trademark is any sign with a dual function protecting both entrepreneurs and consumers. On the one hand, it individualizes the goods of a company and distinguishes them from the goods of its competitors, and on the other hand, it protects consumers as it enables them to distinguish between different products or services. There are a variety of trademarks: individual marks distinguishing between competitors (this does not mean that an individual trademark has to be owned by a single person: individual trademarks can be owned by one or more legal or natural persons). Collective marks is another category of marks. They help distinguish the goods and services of a group of companies or members of an association from those of competitors. They may also be used to identify products which share a certain characteristic. Only associations of manufacturers, producers, suppliers of services or traders, as well as legal persons governed by public law, may apply for collective marks. Any natural or legal person, including institutions, authorities and bodies governed by public law, may apply for EU certification marks provided that such person does not carry on a business involving the supply of goods or services of the kind certified.54 Certification marks, which is yet another category of marks, indicate that goods or services certified comply with the certification requirements of a certifying institution or organization, and they work as a sign of supervised quality. Any sign capable of distinguishing goods or services may qualify as a trademark. Examples are words, figurative marks, shape marks (also covering packages in certain instances), position marks, pattern marks, colour marks, sound marks, motion marks, multimedia marks, and hologram marks.55 Certain jurisdictions provide protection for scent marks, too.56 Even the design of a store may qualify as a trademark if it is found to have a distinctive character. This was the case with the Apple stores and their characteristic design. In the case C-421/13, Apple Inc. v Deutsches Patent- und Markenamt, the Court of Justice of the EU (CJEU) held that the possibility of protection for the ‘packaging of goods’ also extends to the presentation of the establishment in which a service is provided. As a result, the representation, by a design alone, without indicating the size or the proportions, that depicts the layout of a retail store by means of an integral collection of lines, curves and shapes, may be registered as a trade mark provided that the sign is capable of distinguishing the services of the applicant for registration from those of other undertakings, and, that registration is not precluded by any of the grounds for refusal as set out in the 2008/95 Directive. Yet, a sign consisting exclusively of the shape or other characteristics of a product, which give substantial value to the good (on which the sign is attached) is not eligible for protection under trademark law. The rationale behind such a refusal has been identified by the CJEU in the Bang & Olufsen case (Case T-508/08 Bang & Olufsen v OHIM [2011] ETMR 10): that is to prevent the exclusive and permanent right, which a trademark confers from serving to extend

EUIPO, Trademarks https://​euipo​.europa​.eu/​ohimportal/​en/​trade​-marks. For examples see the ones provided by EUIPO https://​euipo​.europa​.eu/​ohimportal/​en/​trade​-marks​ -examples. 56 There are scent trademarks in the US. There are no current scent trademarks registered with the EU. Australia had granted only one (for a brand of eucalyptus-scented golf tee), and the UK had two registered smell trademarks, both successfully applied for in 1994: dart feathers that smell like bitter beer, and “a floral fragrance/scent reminiscent of roses as applied to tyres” for road vehicles. 54 55

The notions of intellectual property and cultural heritage  21 the life of other rights which the legislature has sought to make subject to ‘limited periods’. Performing the same function as in the case of shapes of goods, which are necessary to obtain a technical result, the objective sought by the refusal of such a registration has been clearly stated by the Court as to prevent the granting of an (eternal) monopoly on those shapes. Trademarks are renewed for periods of 10 years and can last indefinitely (as long as one pays the required fees). There are two essential requirements for a trademark to be registered. The first one relates to its basic function, i.e., to distinguish the products or services of one enterprise from those of another. From that function it follows that a trademark must be distinctive. The second requirement relates to the possible harmful effects of a trademark if it has a misleading character or if it violates public order or morality. There are usually two grounds of refusal for the registration of trademarks: the absolute and the relative grounds (whose content may differ between jurisdictions). Thus, on the basis of the absolute grounds of refusal a trademark application may be rejected if the sign is considered (a) generic for the category of products and services to be registered (e.g., the word ‘drinks’ for beverages), (b) descriptive (e.g., the word ‘bitter’ for beer), (c) deceptive (e.g., the word ‘cow’ for goat milk), (d) against the public order or morality, which may differ according to the mentalities of each country (e.g., the use of a religious sign for cigarettes), or constitutes (e) a flag, an armorial bearing, an official hallmark or an emblem of a state or an international organization. Relative grounds of rejection pertain to trademark conflicts with prior trademark rights. Having two identical (or very similar) trademarks for the same type of product or service could cause confusion among consumers. If a trademark is identical or confusingly similar to an existing one for same or similar products, it will be rejected. Famous trademarks get enhanced protection as their use for even different types of products may cause confusion to consumers. Although the use of a trademark is not a necessary precondition for applying for registration, yet, the ultimate aim of trademarks is to be used in trade; otherwise they would constitute an unjustifiable obstacle in the market and an artificial barrier for the protection of new trademarks. Therefore, laws provide for grace periods (varying from three to five years depending on the jurisdiction) where one is obliged to use her/his trademark otherwise s/he loses it.57 The use must be made in the country of registration and in relation to the goods or services that it has been registered for. Trademark law gives one the exclusive right (a) to use the trademark (positive aspect), e.g., by affixing it on goods, containers, labels, packaging, putting the goods bearing the trademark on the market, stocking them, importing and exporting them, using the trademark on business papers and in advertising as well as (b) exclude others from using it (negative aspect), i.e., prevent others from marketing identical or similar products under the same or a confusingly similar mark. Trademarks – as all intellectual property rights – are territorial in nature and they are valid only in the territory of the country where they have been registered. Yet, regional protection in some cases is also available. There are regional offices that offer such protection, e.g., the African Regional Industrial Property Office, the Organisation Africaine de la Propriété

In fact, it is open for cancellation after the request of a person with a legitimate interest in the case.

57

22  Research handbook on intellectual property and cultural heritage Intellectuelle, the Benelux Trademark Office, and the European Union Intellectual Property Office (EUIPO). EU law also provides for unitary protection for trademarks. That is one trademark valid for the whole of the European Union, registered with EUIPO in accordance with the provisions of the EUTM Regulations.58 It is not possible to limit the geographic scope to certain EU Member States only. Its duration is the same as with national trademarks (i.e., for a period of 10 years that can be renewed indefinitely). Apart from the regional protection, there is also a system of international registration of marks administered by WIPO. This system is governed by two treaties, the Madrid Agreement Concerning the International Registration of Marks (1891) and the Madrid Protocol (1989) (The protocol is a filing treaty and not a substantive harmonization treaty). A person who has a link (through nationality, domicile, or establishment) with a country party to one or both Treaties may, on the basis of an application or registration with the trademark office of that country, obtain an international registration having effect in some or all of the other countries of the Madrid Union. This is not a unitary right – as the EU trademark that is valid for the whole of the EU – but rather a bundle of national rights consisting, in fact, of the rights provided by the law of each country where the trademark has been registered through the international filing of the application. Trademarks may be used as a legal vehicle to protect elements from the source communities’ culture, traditional cultural expressions (TCEs), and traditional knowledge (TK).59 This, however, works as a double-edged sword in the sense that communities may want to protect subject matter which is part of their tradition so as to trade their own goods or services (positive side), but they may also have an interest to prevent third parties from registering as trademarks signs that belong to their own culture and tradition. And this may require special mechanisms. Apart from the above, there are also issues relating to IP management. How can a cultural heritage institution best protect its trademarks? When are trademarks useful for cultural institutions and sites? Can cultural heritage or art be protected by trademark law and is this the best way forward? The famous artist Banksy lost the battle to protect some of his artistic works as trademarks because they were not intended to perform the task of a trademark, i.e., distinguish goods on the market.60 How can a cultural heritage institution or site make use of its trademarks on the Internet, on social media, on cultural heritage platforms and what is acceptable trademark use of an institution’s trademarks by third parties? How can an institution ensure

58 Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark OJ L 154, 16.6.2017, p. 1–99; Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Delegated Regulation (EU) 2017/1430 OJ L 104, 24.4.2018, p. 1–36; Commission Implementing Regulation (EU) 2018/626 of 5 March 2018 laying down detailed rules for implementing certain provisions of Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Implementing Regulation (EU) 2017/1431OJ L 104, 24.4.2018, p. 37–56. 59 See Chapter 3. 60 https://​www​.theartnewspaper​.com/​2021/​05/​20/​not​-laughing​-now​-banksy​-loses​-second​-trademark​ -case​-over​-famous​-monkey​-image. See also the reasoning offered by EUIPO: Banksy’s application was inconsistent with honest practices because his intention wasn’t to create or maintain a share of the market by commercializing goods, but only to circumvent the law.

The notions of intellectual property and cultural heritage  23 that third parties refrain from infringing its trademarks? These are only a few of the issues emerging. One very interesting issue is whether trademarks are well suited for the protection of cultural property since they are closely linked and associated with legal monopolies with the intention to give a competitive (through their use) advantage on the market to their right-holders by excluding the use of those trademarks by third parties. Blocking CH by trademark law may create problems as CH elements, which are free in certain instances for all to use may in this way be taken out of the public domain and become proprietary rights in the hands of only a few.61 Yet, collective marks may be particularly useful as they can be used, for example, by local communities for the promotion of products by local and traditional artisans. Geographical indications indicating the origin of a product may also be useful in this respect. Trademarks should be distinguished from geographical indications (GIs) in the sense that the former aim to distinguish the goods and services of one company from those of another. The trademark gives its owner the right to exclude others from using it. A geographical indication tells consumers that a product is produced in a certain place and has certain characteristics that are due to that place of production or else it possesses qualities, reputation, or characteristics that are essentially attributable to that place of origin. It may be used by all producers who make their products in the place designated by a geographical indication and whose products share specified qualities. It usually contains the name of the place of production of the product at issue. Chapter 12 explores whether and how traditional cultural expressions (TCEs) may be protected by geographical indications. 2.4

The Notion of Designs

Designs refer to the looks of a product, i.e., the outward visible appearance of the whole or part of a product resulting from its specific three-dimensional or two-dimensional (or combination of the two) features such as the lines, patterns, the shape of a product, its ornamentation, its texture, colour, etc. Industrial design protection covers a wide variety of products of industry, fashion, and handicrafts, such as spare parts for cars, architectural structures, design of mobiles, medical instruments, electrical appliances, household products, furniture, toys, watches, jewellery, textile designs, sports equipment as well as the packaging of products, their containers and generally their ‘get-up’. This protection extends even further in the digital world so as to include computer icons, typefaces, web designs, graphical user interfaces, and so on. Needless to say, if an item lacks an outward appearance or does not have an industrial or handicraft nature,62 it is not protected by design law. Thus, ideas, smells, tastes, fragrances, music, and sounds are not considered to be designs as well as products belonging to the natural world, colours per se, without shape or contour, and words in a standard typeface without any additional figurative elements. Computer programs as such are also excluded from design protection.

See Chapter 17 on intangible cultural heritage, intellectual property, and the public domain. Some countries exclude handicrafts from design protection, as industrial design law in these countries requires that the product to which an industrial design is applied is ‘an article of manufacture’ or that it can be replicated by ‘industrial means’. 61 62

24  Research handbook on intellectual property and cultural heritage Designs that are also not eligible for registration in many countries include (a) the ones that do not meet the requirements for protection (i.e., depending on the jurisdiction, these are novelty, originality and/or individual character), (b) designs whose appearance is dictated exclusively by the technical function of a product, (c) designs incorporating protected official symbols or emblems such as a national flag, and (d) those that are considered to be contrary to public order or morality. Designs differ from trademarks in the sense that they do not need to be distinctive and indicate the origin of the product; and they differ from patents because they are not dictated by function, i.e., they do not constitute an innovative solution to a technical problem. Designs (depending on the jurisdiction) have usually a dual protection, one under copyright and one under industrial property law: they are protected by copyright as works of the applied arts or even works of the visual arts and are also protected as industrial designs (industrial property law). Depending on the jurisdiction this protection may be cumulative63 (if the requirements for each type of protection are met) or mutually exclusive.64 Industrial designs are protected at national level and their protection is territorially based (i.e., they are protected only in the country where they have been registered). Yet, there are also regional routes of protection, with the prime example being the EU Community design.65 In the EU there are two options for protecting designs: the registered and the unregistered designs (whose scope of protection and duration differ from each other). The EU Community registered design is a unitary right, meaning that it is valid for the whole of the EU and its scope cannot be limited to certain EU countries only. In the EU designs are protected if they are new and have an individual character. A design is considered new if no identical design has been made available to the public before the date of the filing of the application. Identical designs also include those designs that differ in immaterial details only. A design is made available to the public if it has been exhibited, used in trade, published or in any other way disclosed, for example through the Internet or in the press. Any design made 63 Cumulative protection by copyright and by industrial design law may be in part or as a whole depending on the jurisdiction. 64 E. Derclaye (ed.), Copyright/Design Interface in the EU, Cambridge University Press, Cambridge, 2018. 65 The relevant EU law is the following: Directive 98/71/EC on the legal protection of designs (harmonizing the laws of the EU Member States). The legislation for the Community design is: Commission Regulation No 876/2007 amending Regulation No 2245/2002 implementing Council Regulation No 6/2002 on Community Designs following the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs. Commission Regulation No 877/2007 amending Regulation No 2246/2002 concerning the fees payable to the Office for Harmonization in the Internal Market (Trademarks and Designs) following the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs. See also Council Regulation No 1891/2006 of 18 December 2006 amending Regulations No 6/2002 and No 40/94 to give effect to the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs. (Since the beginning of 2008, it has been possible for the European Community to be designated under the Hague system of international registration of industrial designs. This system allows the owner of an industrial design to get design protection in the territories of the Contracting Parties by filing a single application with the International Bureau of WIPO.) Council Decision of 18 December 2006 approving the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs, adopted in Geneva on 2 July 1999.

The notions of intellectual property and cultural heritage  25 available to the public anywhere in the world at any time constitutes a prior design. For EU law a design is not considered to have been disclosed if (a) it is not known in specialized circles in a given sector within the EU or (b) its disclosure to a third party was under a condition of confidentiality. Usually, a grace period applies to designs. That means that the law can allow the filing of an application for registration of an industrial design after its disclosure, within a limited period from the date of disclosure – generally six months or a year – without destroying the requirement of novelty. A design has an individual character if the overall impression it makes on the informed user differs from that made by any other designs available to the public. That means that theoretically there is a global comparison between designs while the informed user is a notion, which refers to a person who is not just the average consumer but has some awareness of prior existing designs and a relatively high degree of attention without being a designer or a technical expert. Industrial (registered) design protection in the EU lasts for five years and can be renewed up to five times, coming to a total of 25 years. (Registered) design rights are absolute and exclusive rights. They cover the design itself (the appearance) and not the product it is applied to, and they provide the designer with the exclusive right to use the design. This includes the making, offering, putting on the market, importing, exporting, stocking, or using of a product in which the design is incorporated or to which it is applied. It also allows the designer to prevent third parties from using her/his work without authorization. There are also exceptions such as private acts for non-commercial purposes, acts for experimental purposes, and so on.66 Under the EU design system, apart from registered designs there is also the option of unregistered designs. Unregistered designs are protected without the need of registration (and consequently the payment of fees). Yet, their term of protection is limited to three years from the date it was first made available to the public in the EU and they only offer protection against copying. There is also the option of international registration of designs under the Hague system for the International Registration of Industrial Designs.67 This is a legal mechanism for registering a design in countries and/or intergovernmental organization members of the Hague Agreement and is administered by the International Bureau of WIPO. It offers the owner of an industrial design a means of obtaining protection in several countries by simply filing one application

66 The ‘must match’ exception (found in some jurisdictions only) relates to the use of the design of a component part of a complex product for the purpose of the repair of that complex product to restore it to its original form. There is also the EU Community exhaustion, where the distribution rights in an item bearing a design are exhausted once the product is put on the market in the EU by the right-holder or with his consent and can therefore circulate freely within the EU without the right-holder being able to block its import or export on the basis of his IP rights. 67 General standards of protection to be provided by states: 1883 Paris Convention for the Protection of Industrial Property is the first major international agreement covering general standards of protection to be provided by states in the area of patents, industrial designs and marks. Registration system for obtaining protection: The 1925 Hague Agreement Concerning the International Registration of Industrial Designs governs the WIPO-administered global protection system for registering designs. International classification system: The 1968 Locarno Agreement establishes the international classification for industrial designs.

26  Research handbook on intellectual property and cultural heritage with the International Bureau of WIPO, in one language, with one set of fees in one currency (Swiss Francs). This is not a unitary right but rather a bundle of national rights. That means that an international registration produces the same effects in each of the designated countries, as if the design had been registered directly with each national office, unless protection is refused by the national office of that country.68 Chapter 5 of this book deals with the interrelation between intangible cultural heritage (ICH) and designs. It refers to specific examples where CH elements would likely qualify for design protection, such as the rug pattern of the Navajo Nation,69 jewellery designs,70 Māori tattoo patterns71 as well as traditional craftsmanship, elements of social practices, festive events and artistic expressions to the extent they include some sort of physical representation of shapes, forms and patterns. Yet, these are cases that are also subject to limitations in the sense that (a) their ‘designer’ is not known since they are usually “the outcome of an intergenerational process attached to the membership of a group or community in which no single individual has contributed to the creation of a specific cultural expression”,72 (b) the aim of the community that created (or designed) them is not necessarily commercial in the sense that they are more interested in promoting communal interests of a non-commercial nature rather than the opposite, and (c) a great number of these designs are definitely not new or aimed to be applied on a product. On top of that, design rights, as any other type of IP right aim at promoting commercial interests through exclusivity while the interest of the community or the public at large would be to use them for free (as part of the public domain) without any exclusivity constraints. One should also not disregard the fact that exclusivity may work as a means against misappropriation and as a vehicle for the communities to gain an income that may contribute substantially to their efforts for maintaining and preserving their culture. Apart from the above clashes, one should also consider that cultural institutions may want to promote their collections through design law, i.e., ensure exclusivity for designs based on items in their collections with the aim to promote these collections to their audiences or commercialize them through (e-)shops or otherwise. In recent years the fact that cultural institutions need to raise their own funds to pursue their goals has proven to be essential. At the same time, the same institutions need to be vigilant when using third party designs, e.g., designs that have been outsourced from third companies or individuals, designs used in their campaigns (e.g., conventional and digital advertising materials) and so on. These are issues dealt with under the chapters on CH and IP management (Chapters 22 and 23).

68 The Hague System simplifies the management of an industrial design registration since it is possible to record subsequent changes or to renew the registration through a single procedural step with the International Bureau of WIPO. 69 Michael F. Brown, ‘Culture, Property, and Peoplehood: A Comment on Carpenter, Katyal, and Riley’s “In Defense of Property”’ [2010] International Journal of Cultural Property 569, at 573. 70 Maree Sainsbury, ‘Indigenous cultural expression and registered designs’, in: Matthew Rimmer (ed.), Indigenous Intellectual Property (Edward Elgar 2015), at 236. 71 Lily Martinet, ‘Traditional Cultural Expressions and International Intellectual Property Law’ [2019] International Journal of Legal Information 6, at 9. 72 See the discussion in Chapter 5.

The notions of intellectual property and cultural heritage  27 2.5

The Notion of Trade Secrets and Unfair Competition Law

According to EU law, a trade secret is a valuable piece of information for an enterprise that is treated as confidential and which gives that enterprise a competitive advantage.73 Examples are any type of valuable information or knowledge that is kept secret, such as new manufacturing processes, recipes, chemical compounds, mixing of ingredients found in nature so as to perform a certain function, information on whom to buy from and whom to sell to, blueprints, instructions, formulae, specifications, studies, management skills, market intelligence, etc. The main characteristics of trade secrets are that (a) they are not registered, (b) protection depends entirely on actively keeping them secret (not just being secret) by taking special measures (e.g., NDAs or any type of confidentiality agreement, restrict access to them, indicate them as confidential or of restricted access, and so on), (c) there is no geographical limitation (yet, their protection in a country depends on the law of that country), (d) they do not expire: they are protected for as long as they are kept secret. In case such information is revealed, protection is lost automatically. Also, one cannot prevent third parties from finding out this information by, for example, reverse engineering a product or developing themselves independently such information (parallel innovation). Trade secrets in the EU are protected on the basis of Directive (EU) 2016/943 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure.74 According to the EU, trade secrets are not a form of exclusive intellectual property right since they do not confer an absolute and exclusive right to the trade secret holder (since reverse engineering and parallel innovation are allowed). Trade secret protection in the EU provides a legal framework against misappropriation. In fact, the Directive harmonizes the civil means through which victims of trade secret misappropriation (such as theft, bribery or spying) can seek protection, such as: ● stop the unlawful use and further disclosure of misappropriated trade secrets; ● remove from the market goods that have been manufactured on the basis of a trade secret that has been illegally acquired; ● ask for compensation for the damages caused by the unlawful use or disclosure of the misappropriated trade secret. The Directive does not provide for criminal sanctions. The EU Directive also provides for exceptions to trade secret protection (article 5 EU Directive). Undisclosed information is also protected through unfair competition law. The TRIPS Agreement makes reference to the protection against unfair competition as provided in the http://​ec​.europa​.eu/​growth/​industry/​intellectual​-property/​trade​-secrets​_en. According to Directive (EU) 2016/943 of the European Parliament and of the Council of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure (OJ L 157, 15.6.2016, p. 1–18) trade secrets are information which meets all of the following requirements: (a) it is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question; (b) it has commercial value because it is secret; (c) it has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret. [Emphasis added]. 73 74

28  Research handbook on intellectual property and cultural heritage Paris Convention for the Protection of Industrial Property.75 Under the relevant provisions of the Paris Convention, any act of competition contrary to honest practices in industrial or commercial matters constitutes an act of unfair competition.76 Trade secret protection may be a protection that sits well with traditional knowledge, genetic resources, intangible cultural heritage and generally culturally valuable or sacred information, since these communities traditionally have kept such information secret to protect it from misappropriation, restrict its use within the community, for religious purposes, for maintaining it for future generations, or for all those reasons together. Yet, the practices of such communities create some limitations when compared with the traditional trade secret provisions in the sense that such information is known within defined communities, which however consist of a number of members and the use of such information or secret may be publicly exposed to third parties. Chapter 5 explores (a) whether the legal framework for secrecy offers protection to intangible cultural assets and (b) how confidential indigenous knowledge that has cultural significance to a community can be protected from third party commercialization or misappropriation. 2.6

Traditional Cultural Expressions/Folklore, Genetic Resources and Traditional Knowledge

The notions of traditional cultural expressions (TCEs) or else known as folklore, traditional knowledge (TK) and genetic resources (GR) do not squarely fall within the domain of intellectual property. Yet, they are intangible assets (although they do not fully possess the characteristics of subject matter falling within IP). The World Intellectual Property Organization (WIPO) has conducted substantial work in the area, explored the possibility for an international protection of those concepts (which has not been successful so far) and also offers some definitions as to their content. Traditional cultural expressions “include music, dance, art, designs, names, signs and symbols, performances, ceremonies, architectural forms, handicrafts and narratives, or many other artistic or cultural expressions”. They may be

75 See Art. 39(1) TRIPS Agreement referring to the protection against unfair competition as provided in the Paris Convention for the Protection of Industrial Property. On the relationship to the Paris Convention see Chapter 5 in this book referring to Sam Ricketson, The Paris Convention for the Protection of Industrial Property – A Commentary (Oxford University Press 2015), §§ 13.61 ff. TRIPS in Art. 39(1) and in the headline for Sect. 7 refers to “undisclosed information”. This expression was used to avoid referring to an expression linked to a given legal system, see Daniel Gervais, The TRIPS Agreement – Drafting History and Analysis, 4th e (2012) § 2.486. It thus covers what may in national law be called “trade secrets” or “confidential information”, ibid. 76 Art. 10 bis (2) Paris Convention, 1883. In addition, the provision also provides: (3) The following in particular shall be prohibited: (i) all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a competitor; (ii) false allegations in the course of trade of such a nature as to discredit the establishment, the goods, or the industrial or commercial activities, of a competitor; (iii) indications or allegations the use of which in the course of trade is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods.

The notions of intellectual property and cultural heritage  29 considered as the forms in which traditional culture is expressed; they form part of the identity and heritage of a traditional or indigenous community; and are passed down from generation to generation. TCEs are integral to the cultural and social identities of indigenous and local communities, embody know-how and skills, and transmit core values and beliefs. Their protection is related to the promotion of creativity, enhanced cultural diversity and the preservation of cultural heritage.77

As we discussed in the section on copyright, TCEs can indirectly be protected by copyright essentially in relation to derivative works, i.e., works based on TCEs, which however need to be original, while performances of TCEs may be protected under the 1996 WIPO Performances Treaty and the 2012 Beijing Treaty. Traditional knowledge (TK) is “knowledge, know-how, skills and practices that are developed, sustained and passed on from generation to generation within a community, often forming part of its cultural or spiritual identity”.78 According to WIPO: TK in a general sense embraces the content of knowledge itself as well as traditional cultural expressions, including distinctive signs and symbols associated with TK. 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, and innovations. Traditional knowledge can be found in a wide variety of contexts, including agricultural, scientific, technical, ecological and medicinal knowledge as well as biodiversity-related knowledge.79

As it has been made clear in previous sections, TK has intersections with patent law (and utility models), trademark law, geographical indications (including appellations of origin), and trade secret law. Relevant chapters in this book explain the pros and cons of such protection as well as the inherent limitations that these systems of protection present with regard to the particularities of TK. Genetic resources (GR) include microorganisms, plant varieties, animal breeds, genetic sequences, nucleotide and amino acid sequence information, traits, molecular events, plasmids, and vectors.80 GR also have intersections with a number of branches of IP such as patents, utility models and trade secrets. TCEs, TK and GR may also form part of a nation’s cultural heritage, coming within the scope of intangible cultural heritage, to the extent they meet the requirements for such protection according to the provisions of national cultural property law.

https://​www​.wipo​.int/​tk/​en/​folklore/​. Some of the relevant Treaties in this respect are the 1992 Biodiversity Convention, the 2003 UNESCO Convention on the protection of Intangible Cultural Heritage, the 2001 FAO International Treaty on Plant Genetic Resources for Food and Agriculture and so on. See IIED – the International Institute for Environment and Development Andes (Peru), Dobbo-Yala Foundation (Panama), University of Panama, Chinese Centre for Agricultural Policy, Southern Environmental and Agricultural Policy Research Institute, Kenya Forestry Research Institute, Centre for Indigenous Farming Systems (Bhopal), Ecoserve (New Delhi), Herbal and Folklore Research Centre (Andhra Pradesh), Protection of Traditional Knowledge and Cultural Heritage – the Concept of ‘Collective Bio-Cultural Heritage’, Working Group on Indigenous Populations, 23rd Session https://​pubs​.iied​.org/​sites/​default/​files/​pdfs/​migrate/​G01067​ .pdf. 79 https://​www​.wipo​.int/​tk/​en/​tk/​. 80 https://​www​.wipo​.int/​tk/​en/​genetic/​. 77 78

30  Research handbook on intellectual property and cultural heritage

3.

THE NOTION OF CULTURAL PROPERTY

There is no internationally accepted definition of cultural property. Cultural property is a notion, which differs according to the point of view taken, to the legal instrument applied, and to the intended result. It is also a notion which is subject to evolution,81 while in bilateral or multilateral relations it forms the subject of mutual agreement or compromise respectively. Therefore, the definition of a state’s cultural property varies according to whether it is the state itself which defines that property, or whether it is defined by another state involved in a claim for return or restitution.82 Does that mean that ‘cultural property’ is a term which is vague and flexible and cannot be subject to an objective definition?83 Not entirely. Cultural property is occasionally classified into categories according to time spans (cut-off dates in history), monetary values, types of use, types of material, and so on. These categories have much to do with cultural conceptions as to what is worth protecting and what is not, depending primarily on each state’s interests and culture.84 That means that a cultural object may be considered in one state as res extra commercium, as non-exportable in another and of no significance to a third. In general, however, one could define cultural property as anything which bears witness to the artistry, history, and identity of a particular culture.85 That includes 81 Especially after the growth of interest in anthropology and ethnography. Askerud, P. and Clément, E. (1997), Preventing the Illicit Traffic in Cultural Property. A Resource Handbook for the implementation of the 1970 UNESCO Convention, Paris: UNESCO, 5. Indicative also is the fact that cultural objects are no longer approached on the basis of their aesthetic value but as evidence of particular cultures and times in history. This is also the reason why their preservation in their context carries so much weight. Preserving cultural objects in context allows one to use them as testimonies of particular habits of their time in order to advance research and contribute to the knowledge of our history. See also Francioni, Fr., ‘A Dynamic evolution of concept and scope: from cultural property to cultural heritage’, in Yusuf, A. (ed.), Standard-setting in UNESCO, volume I: normative action in education, science and culture, essays in commemoration of the Sixtieth Anniversary of UNESCO, Paris, p.221. 82 I. Stamatoudi, The Lawyer’s role in requests for return of cultural objects which have been illegally excavated or illegally exported, Greek Ministry of Culture, The protection of cultural treasures from illegal movement and claims for repatriation (24-25 September 2009), New Acropolis Museum, Conference Papers, Athens, 2008, 127; I. Stamatoudi, ‘Mediation and Cultural Diplomacy: the issues they set’, May 2009/issue 241/242 Museum International 116; I. Stamatoudi, ‘Alternative Dispute Resolution (ADR) and insights on cases of Greek cultural property: The J. P. Getty case, the Leon Levy and Shelby White case and the Parthenon Marbles case’, [2016] International Journal of Cultural Property Law 433. 83 Some countries chose a general definition (especially countries in continental Europe), while some others (especially common law countries) an enumerative one according to their legal tradition and the items they want to cover. See Lalive, P. (1993), ‘Le projet de Convention de l’Unidroit sur les biens culturels volés ou illicitement exportés’, in Briat, M. and Freedberg, J. (eds), Legal Aspects of International Art Trade, The Hague: Kluwer Law International, 26–27. For more detail see I. Stamatoudi, Cultural Property Law and Restitution. A Commentary to International Conventions and European Union Law, Edward Elgar Publishing, 2011. 84 I. Stamatoudi, ‘Current Trends and Principles in Cultural Property Law’, in Protection and Return of Cultural Goods, Krispis Publications and Sakkoulas Publications, Athens – Thessaloniki, 2011, 149. And I. Stamatoudi ‘Return of Cultural Treasures to their Countries of Origin: Principle or Trend in Cultural Property Law?’ in Ph. Pazartzis, M. Gavouneli, A. Gourgourinis and Matina Papadaki (eds), Reconceptualising the Rule of Law in Global Governance, Resources, Investment and Trade, Hart Publishing, Oxford, 2016. 85 Specialized categories such as archaeology, prehistory, history, religion, literature, science, anthropology and ethnology are included in the aforementioned general categories. Also included is any-

The notions of intellectual property and cultural heritage  31 objects that are considered cultural by nature (such as, for example, a painting) as well as objects, which by reason of time and evolution of beliefs have been rendered cultural (such as, for example, utensils).86 ‘Cultural property’ is not a term identical to ‘cultural heritage’. In practice, though, these two terms are used interchangeably. Cultural property is a Western concept with commercial connotations and direct reference to property law and thus ownership. The fundamental policy behind property law has been seen as the protection of the rights of the possessor. If this policy is carried to its logical conclusion, the owner can be buried with a painting that he purchased for millions of dollars, but which represents a peak achievement of human culture. The fundamental policy behind cultural heritage law is protection of the heritage for the enjoyment of present and later generations.87 Cultural property law, if seen restrictively, can be put alongside real property,88 personal property89 and intellectual property.90,91 However, cultural property law only contains parts of these fields of law (for example only parts of ‘real property law’ are relevant to cultural property law since not all cultural property is immovable property) and at the same time presents particularities that cannot be accommodated by these fields of law (for example certain aspects of intangible cultural property, which are not protected by intellectual property, i.e., ideas, languages, and so on).

thing which qualifies as intellectual property according to national and community laws and international conventions. Interesting in this respect is also the definition of ‘movable cultural property’ according to the 1978 Recommendation for the Protection of Movable Cultural Property. I.1.For the purposes of this Recommendation: (a) ‘movable cultural property’ shall be taken to mean all movable objects which are the expression and testimony of human creation or of the evolution of nature and which are of archaeological, historical, artistic, scientific or technical value and interest, including items in the following categories: (i) products of archaeological exploration and excavations conducted on land and under water; (ii) antiquities such as tools, pottery, inscriptions, coins, seals, jewellery, weapons and funerary remains, including mummies; (iii) items resulting from the dismemberment of historical monuments; (iv) material of anthropological and ethnological interest; (v) items relating to history, including the history of science and technology and military and social history, to the life of peoples and national leaders, thinkers, scientists and artists and to events of national importance; (vi) items of artistic interest, such as: paintings and drawings, produced entirely by hand on any support and in any material. 86 Derout, A. (1993), La protection des biens culturels en droit communautaire, Rennes: Editions Apogée. 87 Prott, L.V. and P.J. O’Keefe (1992), ‘“Cultural Heritage” or “Cultural Property”?’, International Journal of Cultural Property1, 307. The authors refer to two characteristic cases: Milirrpum v. Nabalco Pty. Ltd (1971) 17 F.L.R. 141 and Mullick v. Mullick (1925) LR LII Indian Appeals 245. In the first case it was noted that the Australian aboriginals, rather than believing that the land belonged to them, believed that they belonged to the land. In the second case the Privy Council held that a Hindu family idol was not a mere chattel which was owned and could be dealt with by its owner as he pleased, but a legal entity in its own right to which duties were owed and which was entitled to have its own interests represented in court. 88 Which stands for interests in land. 89 Which stands for everything else but interests in land. 90 Which stands for interests in the fruits of the intellect. 91 Crewdson, R. (1984), ‘Cultural Property – a Fourth Estate?’, Law Society Gazette, 126.

32  Research handbook on intellectual property and cultural heritage Cultural property law has seen an evolution towards cultural heritage law.92 The term ‘cultural property’, though known in civil law tradition,93 was used for the first time in English in a legal context in the 1954 Hague Convention for the Protection of Cultural Property in the Event of Armed Conflict. After that it was again used in the 1970 UNESCO Convention on the Means of Prohibiting and Preventing the Illicit Import, Export and Transfer of Ownership of Cultural Property. The term ‘cultural heritage’ is found in the 1969 European Convention on the Protection of Archaeological Heritage, the 1972 UNESCO Convention concerning the Protection of the World Cultural and Natural Heritage94 and the 1985 Convention for the Protection of the Architectural Heritage of Europe, the 1995 UNIDROIT Convention on Stolen or Illegally Exported Cultural Objects, the 2017 Council of Europe Convention on Offences Relating to Cultural Property (the Nicosia Convention), as well as in many regional and national legal instruments. In the secondary European Union legislation, the terms ‘goods’ and ‘objects’ are used, which come closer to the ‘property’ term. The reason for that is that (a) in practice the two terms (‘property’ and ‘heritage’) are used interchangeably95 (this is also the reason why some states, parties to the aforementioned Conventions, have incorporated them into their national laws by using the term ‘cultural heritage’ (e.g., Australia));96 (b) the term ‘property’ is a term with particular connotations in law and therefore seems to prevail in strictly legal instruments; and (c) the international instruments concerning the illegal trade in cultural goods refer to the tangible, rather than to the intangible, part of cultural heritage. In any case, however, the term ‘cultural heritage’ is a wider term,97 which moves away from the

92 Prott, L.V. and P. O’Keefe, n. 87 above. See also Frigo, M. (2004), ‘Cultural property v. cultural heritage: a “battle of concepts” in international law?’ International Review of the Red Cross, 86 (854), 367; Przyborowska-Klimczak, A. (1989–1990), ‘Les notions de “biens culturels” et de “patrimoine culturel mondial” dans le droit international’, Polish Yearbook of International Law, XVIII, 51; Blake, J. (2000), ‘On defining the cultural heritage’, International & Comparative Law Quarterly 61; O’Keefe, R. (1999), ‘The meaning of “cultural property” under the 1954 Hague Convention’, Netherlands International Law Review, 26. 93 E.g., ‘biens culturels’ in French, ‘beni culturali’ in Italian and ‘politistika agatha’ in Greek. The Greek term is a term which, though translated in English as ‘cultural goods’, is however wider than that, since it refers to goods in the wider sense of the word and not as mere commodities. Yet, all these terms cannot incorporate the full notion of cultural heritage. 94 I. Stamatoudi, ‘Basic Principles of the Unesco Convention concerning the Protection of the World Cultural and Natural Heritage’, in St. Perrakis (ed.), Η Σύμβαση για την προστασία της παγκόσμιας πολιτιστικής και φυσικής κληρονομιάς: 40 χρόνια μετά. Μία κριτική αποτίμηση (Convention concerning the Protection of the World Cultural and Natural Heritage: 40 years after. A critical approach), Εκδ. Ι. Σιδέρης, Athens 2014, 17. 95 See in this respect article 1 paragraph 1 of an earlier draft of the 2001 UNESCO Convention on the Protection of the Underwater Cultural Heritage, which refers to both terms interchangeably: ‘For the purposes of the Convention all remains and objects and any other traces of human existence […] shall be considered as being part of the underwater cultural heritage, and are hereinafter referred to as “underwater cultural property”’. The final text of article 1 is changed and has solely kept the notion of ‘cultural heritage’. 96 See also the Greek law 3028/2002 on the protection of antiquities and cultural heritage in general. 97 Prott, L. and P. O’Keefe (n. 87 above) define ‘cultural heritage’ in the following manner: ‘The cultural heritage consists of manifestations of human life which represent a particular view of life and witness the history and validity of that view. The expression of culture or evidence of a way of life may be embodied in material things such as monuments or sites.’

The notions of intellectual property and cultural heritage  33 strictly legal notion of ownership and property98 towards a broader scope, encompassing a duty to safeguard99 this inheritance and hand it down to future generations. Cultural property can be divided into tangible (for example monuments and movable goods, such as antiquities, paintings, statues, and so on) and intangible property (intellectual property law subject matter as well as traditional cultural expressions/folklore, genetic resources, traditional knowledge, as these have been described above, and so on).100 Intangible cultural heritage is defined in article 2 of the 2003 UNESCO Convention on the protection of Intangible Cultural Heritage for the purposes of this Convention.101 According to it, it means: 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. This intangible cultural heritage, transmitted from generation to generation, is constantly recreated by communities and groups in response to their environment, their interaction with nature and their history, and provides them with a sense of identity and continuity, thus promoting respect for cultural diversity and human creativity.

It is manifested 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. Yet, cultural property law at national and international level focuses primarily on the protection of tangible cultural goods. There is also a distinction between movable and immovable property. However, this distinction is not always easy to make. It is not, for example, easy to tell whether a part of a sculpture detached from a permanent building is considered movable property after its detachment or whether it continues to qualify as immovable property. In English law there is the concept of ‘fixtures’ (objects which are attached in a permanent way to the building and cannot be separated from the immovable and therefore are susceptible to any rules relating to it). Two English cases that had to deal with cultural property of this kind held that a door and a door frame that had been designed by the famous architect William Adam and had been detached from the house, should be returned and reinstalled as they constituted an integral part of it and continued to do so after their unauthorized removal (Phillips v Lamdin).102 In Norton v Dashwood,103 tapestries that had been affixed to the walls of a house for more than a hundred

98 Property law traditionally gives priority to the rights of the possessor: one can do what one wishes with his own property (including one’s right to destroy it) excluding all others. Cultural heritage law avoids the strict commoditization of cultural objects and also takes other values and interests apart from the commercial value into account, such as the interests of society, community and those of mankind in general. 99 I.e. protect and preserve. 100 See in this respect the 2003 UNESCO Convention for the Safeguarding of Intangible Cultural Heritage and its definitions: Article 2. 101 I. Stamatoudi, ‘The protection of intangible property by means of the Unesco Convention on the safeguarding of intangible heritage and intellectual property law’ [2004] 57 Revue Hellénique de droit International 149. 102 [1949] 2 KB 33. 103 [1896] 2 Ch 497.

34  Research handbook on intellectual property and cultural heritage years were also considered an integral part of it and therefore could not be separated without causing damage to their context. The most interesting case, though, albeit a French one, is Ville de Genève et Fondation Abegg v Consorts Margail.104 In this case the French court held that the frescoes detached from a building and sold outside the country remained immovables even after their detachment and therefore were subject to the rules relating to immovables. This case and its outcome bear strong similarities to the English Phillips v Lamdin case.105 Another distinction is between land and underwater cultural heritage. The notion of underwater cultural heritage has been defined in article 1(1) (a) of the 2001 UNESCO Convention on the Protection of Underwater Cultural Heritage (Paris, 2 November 2001): 1. (a) ‘Underwater cultural heritage’ means all traces of human existence having a cultural, historical or archaeological character which have been partially or totally under water, periodically or continuously, for at least 100 years such as: (i) sites, structures, buildings, artefacts and human remains, together with their archaeological and natural context; (ii) vessels, aircraft, other vehicles or any part thereof, their cargo or other contents, together with their archaeological and natural context; and (iii) objects of prehistoric character. (b) Pipelines and cables placed on the seabed shall not be considered as underwater cultural heritage. (c) Installations other than pipelines and cables, placed on the seabed and still in use, shall not be considered as underwater cultural heritage.106

A further theoretical distinction is made between cultural and natural heritage, as in the 1972 UNESCO Convention Concerning the Protection of the World Cultural and Natural Heritage (Paris, 16 November 1972). However, in practice this distinction is not always followed given the fact that many items coming within the concept of natural heritage are considered to be cultural objects according to the 1970 UNESCO Convention and the 1995 UNIDROIT

D 1985.208. See Stamatoudi, I. (2002), ‘Legal Grounds for the Return of the Parthenon Marbles’, Revue Hellénique de Droit International, 2, 513, at 519–520; I. Stamatoudi, "The law and the ethics deriving from the Parthenon Marbles case" (1997) 3 Web Journal of Current Legal Issues 12pp. (available on the Internet on the University of Newcastle-upon-Tyne's WWW server http://​www​.ncl​.ac​.uk/​~nlawwww/​) and Yearbook of Current Legal Issues, Blackstone Press (1998); I. Stamatoudi, “Legal issues associated with the return of the Parthenon Marbles” in the book of Μ. Marouli - Zilemenou (ed.), Ο Παρθενώνας. Η Επιστροφή των Γλυπτών (The Parthenon. The return of the Sculptures), I. Sideris, 2004, at 214; E. Korka and I . Stamatoudi, “The Parthenon Marbles issue: legal, ethical and political issues” in Proceedings of the 3rd International Conference of Experts on the Return of Cultural property, Hellenic Ministry of Culture and Sports, Athens 2014, at 45; E. Korka and I. Stamatoudi, “The 200-year case for the return of the Parthenon Marbles” (with Elena Korka), Festshcrift Dusan Sidjanski, Editions L’age d’homme, Lausanne, 2017, at 133; I. Stamatoudi, “Greek and British arguments for the return or not of the Parthenon Marbles” 2020 (4) Environment and Law 514. 106 See also the Council of Europe Recommendation 848 (1978) on underwater cultural heritage. A draft Convention on underwater heritage was drafted in 1985 by the Council of Europe but could not be opened for signature. Also article 1 of the Valetta Convention, in the definition of archaeological heritage, makes reference to heritage situated on land or under water in the area under the jurisdiction of the parties to the Convention. The ‘area’ includes the territorial sea, the contiguous zone and the continental shelf. See also the 1982 United Nations Convention on the Law of the Sea, the ICOMOS Charter on Underwater Cultural Heritage (1996), the 1989 International Salvage Convention, the Council of Europe Recommendation 1486 (2000) on Maritime and Fluvial Cultural Heritage. See Pickard, R. (2003), European Cultural Heritage: A review of Policies and Practice, Strasbourg: Council of Europe Publishing, vol. II, 53. 104 105

The notions of intellectual property and cultural heritage  35 Convention.107 Also, the European Convention on the Protection of Archaeological Heritage (Council of Europe, London, 6 May 1969 as revised in Valetta, 16 January 1992) refers to the protection and enhancement of the archaeological heritage in the context of town and country planning operations (Preamble). The notion of ‘cultural property’ has been defined in various national, regional (including European Union) or international conventions, for the purposes of these instruments. Article 1 of the 1970 UNESCO Convention, dealing with the prevention of the illicit export, import and transfer of ownership of cultural property, defines ‘cultural property’ as property which, on religious or secular grounds, is specifically designated by each state as being of importance for archaeology, prehistory, history, literature, art or science and belongs to a number of categories that are specifically set out in the same article.108 In other words, according to this Convention states parties to the convention are free to define their own cultural property as long as this definition comes within the specifically designated categories of article 1. Almost the same list of objects is also found in the 1995 UNIDROIT Convention on Stolen or Illegally Exported Cultural Objects without, however, any reference made this time to the contracting states’ competence to define their cultural treasures.109 This can be considered as retrogression compared with the 1970 UNESCO Convention. These definitions constitute the compromise reached between two views: on the one hand, the most ‘protective’ view of culture, which favours a broad definition of cultural objects held by states that regard themselves as victims of plunder and spoliation and want to protect their treasures as effectively as possible, and on the other hand, the view of the so-called ‘art market’ states, which favour a narrow definition, including only a limited number of cultural objects and therefore not jeopardizing the free trade in art and their extensive museum and privately owned collections containing items

107 See e.g., article 1(a) of the 1970 UNESCO Convention and Annex (a) in the 1995 UNIDROIT Convention: ‘Rare collections and specimens of fauna, flora, minerals and anatomy, and objects of palaeontological interest’. 108 (a) Rare collections and specimens of fauna, flora, minerals and anatomy, and objects of palaeontological interest; (b) property relating to history, including the history of science and technology and military and social history, to the life of national leaders, thinkers, scientists and artists and to events of national importance; (c) products of archaeological excavations (including regular and clandestine) or of archaeological discoveries; (d) elements of artistic or historical monuments or archaeological sites which have been dismembered; (e) antiquities more than one hundred years old, such as inscriptions, coins and engraved seals; (f) objects of ethnological interest; (g) property of artistic interest, such as: (i) pictures, paintings and drawings produced entirely by hand on any support and in any material (excluding industrial designs and manufactured articles decorated by hand); (ii) original works of statuary art and sculpture in any material; (iii) original engravings, prints and lithographs; (iv) original artistic assemblages and montages in any material; (h) rare manuscripts and incunabula, old books, documents and publications of special interest (historical, artistic, scientific, literary, etc.) singly or in collections; (i) postage, revenue and similar stamps, singly or in collections; (j) archives, including sound, photographic and cinematographic archives; (k) articles of furniture more than one hundred years old and old musical instruments. 109 Article 2: ‘For the purposes of this Convention, cultural objects are those which, on religious or secular grounds, are of importance for archaeology, prehistory, history, literature, art or science and belong to one of the categories listed in the Annex to this Convention.’

36  Research handbook on intellectual property and cultural heritage with a foreign provenance.110 The aforementioned states are also known as ‘export’ states and ‘import’ states respectively. European Union law, which mainly concerns the prevention of illicit trade in cultural goods after the creation of the internal market on 1 January 1993 and the abolition of internal borders, refers to ‘cultural goods’ and ‘cultural objects’. The relevant pieces of legislation are (a) EU Directive 2014/60 on the return of cultural objects unlawfully removed from the territory of a Member State, which introduced arrangements enabling Member States to secure the return to their territory of cultural objects removed in breach of national measures, (b) EU Regulation 116/2009 on the export of cultural goods which ensures uniform controls at the EU’s external borders by subjecting the export to the presentation of an export licence which is obtained with the competent authorities in the Member States and valid throughout the EU, and (c) EU Regulation 880/2019 on the introduction and the import of cultural goods which aims to prevent the import and storage in the EU of cultural goods illicitly exported from a third country, thereby reducing trafficking in cultural goods, combatting terrorism financing and protecting cultural heritage, especially archaeological objects in source countries affected by armed conflict. The Regulations refer to ‘goods’ while the Directive refers to ‘objects’. Both are considered to have defined ‘national treasures’ (as these are provided for in article 36 TFEU) which,

See also Article 1 of the 1954 Hague Convention: For the purposes of the present Convention, the term ‘cultural property’ shall cover, irrespective of origin or ownership: (a) movable or immovable property of great importance to the cultural heritage of every people, such as monuments of architecture, art or history, whether religious or secular; archaeological sites; groups of buildings which, as a whole, are of historical or artistic interest; works of art; manuscripts, books and other objects of artistic, historical or archaeological interest; as well as scientific collections and important collections of books or archives or of reproductions of the property defined above; (b) buildings whose main and effective purpose is to preserve or exhibit the movable cultural property defined in subparagraph (a) such as museums, large libraries and depositories of archives, and refuges intended to shelter, in the event of armed conflict, the movable cultural property defined in subparagraph (a); (c) centres containing a large amount of cultural property as defined in subparagraphs (a) and (b), to be known as ‘centres containing monuments’. Article 1 of the 1972 UNESCO Convention Concerning the Protection of the World Cultural and Natural Heritage: For the purpose of this Convention, the following shall be considered as ‘cultural heritage’: monuments: architectural works, works of monumental sculpture and painting, elements or structures of an archaeological nature, inscriptions, cave dwellings and combinations of features, which are of outstanding universal value from the point of view of history, art or science; groups of buildings: groups of separate or connected buildings which, because of their architecture, their homogeneity or their place in the landscape, are of outstanding universal value from the point of view of history, art or science; sites: works of man or the combined works of nature and man, and areas including archaeological sites which are of outstanding universal value from the historical, aesthetic, ethnological or anthropological point of view. The definitions found in regional Conventions are also relevant. See e.g. article 5 of the 1954 European Cultural Convention, article 1 of the 1969 European Convention on the Protection of the Archaeological Heritage as revised in Valetta, 16 January 1992, article 1 of the 1985 Convention for the Protection of the Architectural Heritage of Europe, article 2 and the Annex to the 1985 European Convention on Offences Relating to Cultural Property (which has never entered into force) and article 2 of the 1976 Convention on the Protection of the Archeological, Historical, and Artistic Heritage of the American Nations (Convention of San Salvador) signed in Washington, D.C., on 16 June 1976. 110

The notions of intellectual property and cultural heritage  37 by derogation from the rules on the free movement of goods, are subject to their ‘protective regime’.111 It can be derived from the above that (a) variations in terms are not as important as variations in definitions, and (b) the significant limiting factor in relation to a definition is not so much whether it is set out as a list of objects or categories (an enumerative definition) or as a general definition or a combination of the two, but whether a state’s competence in defining its own cultural treasures is taken into account. In the aforementioned definitions the competence of the state varies. That means in practice that there will be cases where there will be no agreement as to whether an object falls within the ambit of legal instrument or not, if the parties come from different traditions or do not share the same values, mentalities or interests (i.e., divergent views between source states and import states).112 Such instances may slow down or otherwise affect the application of the legal instruments in the field.

4. CONCLUSIONS This chapter provided a general overview of the basic types of intellectual property, of the notion of cultural heritage, and the intersections between the two. These two fields of law have much in common, especially when it comes to intangible cultural heritage, but at the same time their perspectives and philosophies differ. Intellectual property places the emphasis on proprietary rights in the context of trade and commercialization, taking into account public policy as well as ethical and moral issues, while cultural heritage law takes as a starting point public policy, preservation and humanitarian aspects. Intellectual property subject matter may qualify as cultural heritage in certain instances, while cultural heritage subject matter may use intellectual property as a vehicle or means to (even indirectly) serve its aims.113 Such instances and examples are explored further in the chapters of this book.

111 I. Stamatoudi, ‘The national treasures exception in Article 36 EC. How many of them fit the bill?’ (1998) 3 Art, Antiquity and Law 39; I. Stamatoudi, ‘National cultural treasures and the free movement of goods in the Single Market’ in Ε. Trova (ed), Η Πολιτιστική Κληρονομιά και το Δίκαιο (Cultural Heritage and the Law), Sakkoulas Publications, Αthens, 2003, at 261. 112 I. Stamatoudi, ‘Restitution of Stolen and Illegally Exported Cultural Objects in the Context of the Unidroit Convention 1995’ in P. Torremans (ed), Legal Convergence in The Enlarged Europe of the New Millennium, Kluwer Law International (2000), at 109. 113 I. Stamatoudi, ‘Management of Cultural Heritage Documentation’ (2013) 10 Mass Media and Communication Law Review (DIMEE) 26.

2. The protection of cultural heritage by copyright and related rights Paul Torremans

INTRODUCTION If we are to assume that the concept of heritage points to the fact that whatever object that forms part of cultural heritage has a certain age, in the sense that it takes decennia to acquire the importance and relevance that makes it being perceived as heritage, then this chapter can be very short indeed. Copyright in a work (of cultural heritage) expires after the life of its author plus 70 years,1 and for related rights the term of protection tends to be even shorter. Most of our cultural heritage is therefore in the public domain and is no longer protected by copyright or related rights. And the clear tendency in EU law is to preserve the public domain once copyright has expired and not to allow the erection of new hurdles to access.2 It is that last aspect that we will turn to first. That will bring us to digitisation and reproduction of those works of cultural heritage that are still in copyright and to which the general assumption mentioned above does not apply. And in a third stage we will turn to moral rights. In countries such as the United Kingdom, where the term of protection for moral rights is the same as the term of protection for economic rights,3 there is of course not a lot to discuss further, but in a vast number of countries, moral rights are perpetual4 and pass to the heirs or even to the state, and then moral rights may become the ‘copyright’ tool to protect cultural heritage.

REPRODUCTIONS OF WORKS OF ART IN THE PUBLIC DOMAIN Cultural heritage institutions de facto control access to cultural heritage works even if the latter have entered the public domain. In a typical example, I will need to visit the museum if I want to see the original copy of an ancient Greek statue. When I buy the entrance ticket, the museum may use contractual means to control access, e.g., by prohibiting the making of photos or

Or life of the author plus 50 years in those countries that stick to the Berne and TRIPS minimum. Recital 53 to Directive 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the Digital Single Market and amending Directives 96/9/EC and 2001/29/EC [2019] OJ L 130/92. And see European Copyright Society, Comment of the European Copyright Society on the Implementation of Art. 14 of the Directive (EU) 2019/790 on Copyright in the Digital Single Market, https://​europeanco​pyrightsoc​ietydotorg​.files​.wordpress​.com/​2020/​04/​ecs​_cdsm​ _implementation​_Article​_14​_final​.pdf . 3 Section 86(1) Copyright, Designs and Patents Act 1988, see P. Torremans, Holyoak and Torremans Intellectual Property Law, Oxford University Press, (9th ed, 2019), pp.228–229. That approach is not unique. It, e.g., also applies in Belgium according to Article XI.166 § 1 WER (code of economic law). 4 E.g. in France, see Article L121-1 Code de la Propriété Intellectuelle. 1 2

38

The protection of cultural heritage  39 videos of the objects contained in its collection. Often such a contractual term is combined with a museum shop offering the visitor a faithful reproduction of the statue in our example, be it as a replica or as a photograph on a postcard. These faithful reproductions often come with a copyright notice and, assuming that notice is backed up by the national copyright law granting copyright to such a faithful reproduction, that means that access is restricted further as the buyer will not be able to reproduce the work or the statue or communicate the work to the public.5 This came to be seen as a problem and Article 14 Digital Single Market (DSM) Directive6 contains an attempt to address the matter. The starting point is that a work of visual art can be reproduced, communicated to the public or used otherwise without the authorisation of the author once the copyright in the work has expired. But that obvious starting point is then expanded upon with a provision stating that no copyright shall exist in a faithful reproduction of such a work of visual art that is in the public domain. Article 14 covers both copyright and related rights expressis verbis and it does therefore also stop the application of mechanisms such as the one found in Article 72 of the German Copyright Act7 that put in place a weaker regime of protection for non-original photographs and that had been held by the Bundesgerichtshof to cover faithful reproduction.8 Whereas related rights for non-original photographs, or in a system such as the UK one, copyright in them, are the main target of Article 14, other related rights are evidently also affected if they cover faithful reproductions of works of visual art. One could, for example, think of rights covering non-original audiovisual recordings.9 The exclusion from copyright will enter into effect at the moment the works of visual art enter the public domain, irrespective of when the reproduction was made, which is shown by the use of the term ‘when (the term of protection has expired)’ rather than the term ‘if’, which would have pointed towards a pre-condition (that needed to be met when the reproduction was made). What is the impact of this restriction on the protection of cultural heritage works by copyright and related rights? In as far as these faithful reproductions provide access to the works of cultural heritage that are works of visual art, they do not merely provide an income to cultural heritage institutions; copyright and related rights in the reproductions also allow them to control further use and adaptations. That tool has now disappeared. But it does not mean that they need to allow the production of reproductions by third parties, let alone the use of any kind of advanced technology for that purpose. And when allowing access and the use of certain technologies in making reproductions, contractual provisions that impose financial 5 Recital 53 to Directive 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the Digital Single Market and amending Directives 96/9/EC and 2001/29/EC [2019] OJ L 130/92. 6 Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the Digital Single Market and amending Directives 96/9/EC and 2001/29/ EC [2019] OJ L 130/92. 7 Urheberrechtsgesetz – UrhG, https://​www​.gesetze​-im​-internet​.de/​englisch​_urhg/​. 8 Case I ZR 104/17 Museumsfotos, German Federal Supreme Court (Bundesgerichtshof), 20 December 2018, http://​juris​.bundesgerichtshof​.de/​cgibin/​rechtsprechung/​document​.py​?Gericht​=​bgh​&​ Art​=​en​&​nr​=​92142​&​pos​=​0​&​anz​=​1. Article 14 of course only changes the outcome in relation to works of visual art and faithful reproductions thereof. 9 European Copyright Society, Comment of the European Copyright Society on the Implementation of Art. 14 of the Directive (EU) 2019/790 on Copyright in the Digital Single Market, https://​europeanco​ pyrightsoc​ietydotorg​.files​.wordpress​.com/​2020/​04/​ecs​_cdsm​_implementation​_Article​_14​_final​.pdf .

40  Research handbook on intellectual property and cultural heritage conditions and, more importantly, restrictions on the use of the reproduction can still be put in place. One should of course not overlook the fact that Article 14 only covers faithful reproductions. It is explicitly acknowledged that copyright and related rights will continue to exist in any reproduction that is original in the sense that it is the author’s own intellectual creation. In other words, reproductions that pass the originality test as laid down in the Infopaq case10 will remain protected by copyright.11 In practice this means that galleries, museums and other institutions that have works of visual art in their collections will still be able to offer via their web shops and museum shops high-quality faithful reproductions of these works and price these accordingly.12 Article 14 will merely restrict the copyright and related rights protection and, once acquired, these reproductions can therefore be used freely unless one has agreed to contractual restrictions on their use. But if these institutions want to use copyright and related rights as a tool to control further use of the reproductions, Article 14 pushes them towards reproductions that are not faithful reproductions and that offer added value, and through that added value meet the originality standard. Digital Art and Non-fungible Tokens to the Rescue At first one may think that replacing the good old postcard or other faithful reproduction by a creative adaptation style reproduction is a daft idea that will not provide an income for cultural heritage institutions; recent developments, though, question that assumption. I refer here to digital art and to the phenomenon of non-fungible tokens, or NFTs. Digital art is an artistic work that uses digital technology as part of the creative or presentation process. That relatively easily translates into a creative presentation of a work of art that itself is in the public domain for our current purposes. Reproductions can be made of such a digital artwork or ‘creative presentation of a public domain work of art’ and these can be sold in hard copies in museum shops or via cultural heritage institution websites where digital JPEG format13 versions can be offered for download. The problem, though, with JPEG files, as with any digital files, is that once they are out there or once a single copy has been acquired, they can be copied and transferred easily without loss of quality. That is not the most positive characteristic if a museum or cultural heritage institution wants to make money on the back of them and the standard technical protection measures are cumbersome and unpopular with the public. This is where the non-fungible token or NFT (phenomenon) comes in. Amongst super-fans of works of art that are in the public domain, but that are kept in a single cultural heritage institution location, there may be a market for the ‘original’ of the creative reproduction. Whereas fungible means are exchangeable, a non-fungible token is by definition non-exchangeable. NFTs are therefore unique collectible tokens that are permanently tied to works of digital art. They cannot be separated and in a sense the token is the art and the art is the token. A non-fungible token (NFT) Case C-05/08 Infopaq International A/S v Danske Dagblades Forening ECLI:​EU:​C:​2009:​465. For an example in relation to photographs, see Cour de Cassation (France), Cass. 1ère civ. 11 mai 2017, n°15-29.374, ECLI:​FR:​CCASS:​2017:​C100563, https://​www​.legifrance​.gouv​.fr/​affichJuriJudi​.do​ ?oldAction​=​rechJuriJudi​&​idTexte​=​JURITEXT000034705564​&​fastReqId​=​441085215​&​fastPos​=​1. 12 P. Torremans, ‘Presenting Best Practices for Copyright and Trademarks in Common Law Countries for Cultural Heritage and Museum Collections’, paper delivered 11 September 2019 at WIPO Workshop on IP for Libraries/Museums at the Bibliotheca Alexandrina, Alexandria, Egypt. 13 Or Joint Photographic Experts Group, the standard for digital photography having been named after the group who created it. 10 11

The protection of cultural heritage  41 is a unit of data stored on a blockchain or digital ledger. That unit of data certifies the digital asset to be unique and therefore not interchangeable. Plenty of other copies of the creative reproduction of the public domain work of art can be made, sold, copied and circulated, but there will only be one NFT certified original.14 And there is a market for such original NFT certified work. And that is an understatement, as in recent years the market for them has exploded and very significant sums are currently being paid. It may be a bubble that will burst one day, but for now it is a reality. The token under the reproduction gives it value and acts as a digital certificate of ownership that can be sold. The combination of copyright and the NFT may well assist cultural heritage institutions in this area.15

PRESERVATION OF CULTURAL HERITAGE: PERMISSION TO MAKE COPIES Let us now move away from out-of-copyright works that are in the public domain. Due to the long term of copyright, there are plenty of cultural heritage works that are still in copyright. That copyright may not be held by the cultural heritage institutions that have these works in their collections, though. These institutions have, on the other hand, the task to preserve these works in as good a condition as possible. That may result in the need to reproduce the whole or part of the work to replace the original or to have an alternative copy that can be viewed, consulted and used by the public in those cases where the original has become too fragile for that purpose. The right of reproduction may stand in the way at that stage, even if it is merely cumbersome and time-consuming to gather all the permissions beforehand. Article 6 of the Digital Single Market Directive therefore puts in place an exception to the benefit of cultural heritage institutions.16 Acts of reproduction for preservation by cultural heritage institutions was an issue that was being dealt with in different ways by member states. This hampers cooperation and the sharing of means and resources and can have a negative impact on the preservation of cultural heritage.17 Article 6 of the Digital Single Market Directive addresses this issue through the introduction of a mandatory exception to permit cultural heritage institutions to reproduce works and other subject matter permanently in their collections for preservation purposes. Preservation purposes are seen in a rather wide sense here and do not merely include remedying the degradation of the original support or addressing its technical obsolescence (e.g., old digital formats that can no longer be opened under the latest software or films in formats for which projectors are no longer available), but also the need to be able to insure works or other subject matter.18 An example of the latter could be making a digital copy of the Edwin Morgan

See https://​www​.bbc​.com/​news/​technology​-56371912 (last accessed 29 May 2021). See https://​www​.abc​.net​.au/​news/​science/​2021​-03​-06/​nft​-crypto​-digital​-art​-could​-be​-bonanza​-for​ -artists/​13220228 (last accessed 29 May 2021). 16 For a more detailed analysis see I. Stamatoudi and P. Torremans, EU Copyright Law: a commentary, Edward Elgar Publishing, (2nd ed, 2021), Ch. 17. 17 Recital 26 to Directive 2019/790. 18 Recital 27 to Directive 2019/790. 14 15

42  Research handbook on intellectual property and cultural heritage Scrapbooks, as the originals held by the library of the University of Glasgow are fragile and may only be insured if they are not handled by all users.19 The same broad approach continues when it comes to defining works and other subject matter that are permanently in the collection of a cultural heritage institution, i.e., what can benefit from the preservation measures. Such works and other subject matter include the scenario where copies of such works or other subject matter are owned or permanently held by that institution, for example as a result of a transfer of ownership or a licence agreement, legal deposit obligations or permanent custody arrangements. In other words, the emphasis is put on the aspect of permanency, rather than on the aspect of ownership and title.20 Let us then turn to what Article 6 describes as the making of copies or, in essence, what can be done to preserve the work or subject matter. These copies can be made in any format or medium. That means in practice that the appropriate preservation tool can be chosen for each case and that the technology involved can vary. There is also no strict limit on the number of copies that can be made. And the copies can be made at any time in the lifecycle of the work.21 As these operations are often complex and involve specialist knowledge and equipment, cultural heritage institutions can provide assistance to one another and can rely on third parties acting on their behalf and under their responsibility, even if these are based in other member states.22 But the exception only applies for the purposes of preservation, and the making of copies and the number of copies is limited to what is required for preservation purposes. Or as Recital 27 puts it: “Acts of reproduction undertaken by cultural heritage institutions for purposes other than the preservation of works and other subject matter in their permanent collections should remain subject to the authorisation of rightholders, unless permitted by other exceptions or limitations provided for in Union law.”23 The scope of the exception only involves the (exclusive) rights that it covers. These rights are the press publishers right in Article 15(1) of the Digital Single Market Directive, the right of reproduction in the 2001 Directive,24 the right to make a permanent or temporary reproduction of a computer program by any means and in any form, in part or in whole, in so far as loading, displaying, running, transmission or storage of the computer program necessitate such reproduction in Article 4(1)(a) of the Computer Programs Directive,25 the right to make a temporary or permanent reproduction by any means and in any form, in whole or in part, and the sui generis right in the Database Directive (Articles 5(a) and 7(1)).26 19 https://​www​.digitisingmorgan​.org/​Edwin, see P. Torremans, Copyright Infringement, Exceptions and Limitations and Access to Shared Cultural Heritage Across Borders in Andrea Wallace and Ronan Deazley, eds, Display at Your Own Risk: An experimental exhibition of digital cultural heritage (2016). Available at: http://​displayatyourownrisk​.org/​torremans/​. 20 Recital 29 to Directive 2019/790. 21 Recital 27 to Directive 2019/790. 22 Recital 28 to Directive 2019/790. 23 Recital 27 to Directive 2019/790. 24 Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society [2001] OJ L 167/1. 25 Directive 2009/24/EC of the European Parliament and of the Council of 23 April 2009 on the legal protection of computer programs (codified version) [2009] OJ L111/16. 26 Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases [1996] OJ L77/20.

The protection of cultural heritage  43 Article 7 of the Digital Single Market Directive27 adds what it calls common provisions. For our current purposes it is important to note that paragraph (1) makes the exceptions that are created in implementing Article 6 mandatory. Parties can therefore no longer use contractual provisions to overrule them and such provisions in a contract shall be unenforceable. That re-enforces the position of cultural heritage institutions when acquiring works.

OUT-OF-COMMERCE WORKS Cultural heritage works, the majority of which tend to have a certain age, are also frequently out-of-commerce works if they are not unique pieces, such as sculptures, paintings, etc. That means that copyright in these works may still exist, but that cultural heritage institutions cannot acquire additional copies and that any acts of reproduction, distribution and communication to the public are still restricted by the exclusive rights copyright provides for in this respect. When cultural heritage institutions want to go beyond the preservation of the works that was mentioned above and make these works available to the public, copyright can become a hindrance. Digitisation of works is a clear example of such efforts by cultural heritage institutions, as it involves an act of reproduction and as the digital copy may be communicated to the public. Copyright permissions are a real problem for out-of-commerce works as often there is no longer an entity that can supply the copies or even be used as a point of contact to clear rights. The Digital Single Market Directive defines out-of-commerce works as a work in relation to which it can be presumed in good faith that the whole work or other subject matter is not available to the public through customary channels of commerce, after a reasonable effort has been made to determine whether it is available to the public.28 Verification of availability of a work shall normally take place in the member state where the cultural heritage institution concerned is established, unless verification across borders is considered reasonable, for example in cases where there is easily available information that a literary work was first published in a given language version in another member state. But one should keep in mind that when a work is available in any of its different versions, such as subsequent editions of literary works and alternative cuts of cinematographic works, or in any of its different manifestations, such as digital and printed formats of the same work, the work will not be considered to be an out-of-commerce work. Conversely, however, the commercial availability of adaptations, including other language versions or audiovisual adaptations of a literary work, should not preclude a work from being deemed to be out of commerce in a given language.29 The Orphan Works’ Directive already concerns certain uses of orphan works (i.e., works protected by copyright or related rights and whose rightholder(s) has not been identified or, even if identified, cannot be detected despite the fact that a diligent search has been conducted by the institutions who use the orphan works) by publicly accessible libraries, educational establishments and museums, as well as by archives, film or audio heritage institutions and public service broadcasting organisations, established in the member states, in order to achieve aims related to their public interest missions. The Digital Single Market Directive goes much further, however, in Article 8. Article 7 of Directive 2019/790. Article 8(5) of Directive 2019/790. 29 Recital 37 of Directive 2019/790. 27 28

44  Research handbook on intellectual property and cultural heritage The clear idea in Article 8 is to provide the cultural heritage institution with a counterpart that can grant it a non-exclusive licence for non-commercial purposes for the reproduction, distribution, communication to the public or making available to the public of out-of-commerce works.30 That counterpart role will be played by collective management organisations (CMOs). But there is an important restriction in the wording of Article 8. Only works that are permanently in the collection of the cultural heritage institution that is interested in digitising and making these works available online will be out-of-commerce works for the purposes of Article 8. According to Recital 29, works are considered to be permanently in the collection of a cultural heritage institution when copies of them are owned or permanently held by that institution, for example as a result of a transfer of ownership or a licence agreement, legal deposit obligations or permanent custody arrangements. That will, of course, not stop these institutions from purchasing more works or acquiring them in another way, so the future pool of relevant works will become larger. Digitisation and Other Uses Through Collective Management Organisations That brings us in more detail to the main route provided in Article 8. Article 8(1) enables representative collective management organisations (CMOs) to issue licenses for the use of out-of-commerce works by cultural heritage institutions (CHIs).31 It does that irrespective of whether all rightholders covered by such licences have mandated the CMO with such rights.32 That does not, however, mean that rightholders have no say in the matter. All rightholders have the option to opt out and thus prevent cultural heritage institutions from digitising and making their works available online unless they conclude an individual licence with them. In practice this opt-out option relies on the fact that cultural heritage institutions and collective management organisations publish information about out-of-commerce works in what is called a ‘public single online portal’ that will be administered by the EUIPO. They need to do so six months before they make the works available online. This six-month period is intended to give rightholders the opportunity to opt out before their works are made available.33 The other side of this coin is that once the six-month period has lapsed, the copyright liability of the cultural heritage institution disappears and they can make the works available on their website, digitise them, etc., for non-commercial purposes under the terms of the licence that has been agreed between the cultural heritage institution and the collective management organisation. In this scenario member states should stipulate in their national law that where a representative collective management organisation exists – first of all in terms of rightholders in the relevant type of works and, second, of the rights that are the subject of the licence – this collective management organisation may (it has a discretion) conclude a non-exclusive licence for non-commercial purposes with a cultural heritage institution for the reproduction, distribution, communication to the public or making available to the public of out-of-commerce works that are permanently in its collection, irrespective of whether all rightholders covered by the licence have mandated the collective management organisation at issue. The licence is

30 For a more detailed analysis see I. Stamatoudi and P. Torremans, EU Copyright Law: a commentary, Edward Elgar Publishing, (2nd ed, 2021), Ch. 17. 31 As defined in Article 2 of Directive 2019/790. 32 Article 8(1) of Directive 2019/790. 33 Article 10(1) of Directive 2019/790.

The protection of cultural heritage  45 provided in accordance with its mandates from rightholders and all rightholders (whether they are its members or not) are guaranteed equal treatment in relation to the terms of the licence. This can be seen as a form of extended collective licensing (ECL) along the lines of the Nordic system, as also non-members are covered by the licence. The crucial prerequisite for this system is that a representative collective management organisation exists in the member state concerned. There may in other words be member states that either do not have a representative collective management organisation of where the collective management organisation is not (for example commercially) interested in providing such a licence, for commercial or other reasons, and in these situations the system cannot work. In addition, a licence will only be concluded if the parties, i.e., the collective management organisation and the cultural heritage institution, agree on its terms. That means that in case a collective management organisation is not interested in providing a licence or when the parties did not come to an agreement, rights need to be cleared in the traditional method or the out-of-commerce work will simply not be digitised or become available. This is a drawback, because while the Directive provides for an alternative route in Article 8(2), that route does not come into play, since it is only triggered if a representative collective management organisation does not exist. It is not triggered if a representative collective management organisation merely does not co-operate.34 That brings us to the problem of which collective management organisation a cultural heritage institution should turn to, i.e., is there a choice in case one collective management organisation either does not wish to grant a licence or proposes what are considered to be unreasonable terms? Article 8(6) rules out any forum shopping or competition between collective management organisations and stipulates that a cultural heritage institution should seek a licence from a representative collective management organisation in the territory where it is established.35 That solution has the advantage of simplicity, but it brings with it the risk of territoriality. Licences that are only valid in the country of establishment are not a great tool in the internet era, where things are by definition of a cross-border nature. Article 9(1)36 overcomes that risk by obliging member states to ensure that licences granted under Article 8(1) allow for the use by cultural heritage institutions of out-of-commerce works in any member state separately or in all member states in a cross-border manner.37 That clearly facilitates digitisation and use of works even further, especially because most – if not all – cultural heritage institutions’ websites are available and accessible throughout the EU. Thus, collective management organisations should be able to provide multi-territorial licences without the need for countries to establish extra requirements for such a possibility, as is the case with multi-territorial licences for online uses of musical works.38 It is, however, obvious that the Article 8(3) of Directive 2019/790. Article 8(6) of Directive 2019/790. 36 Article 9(1) of Directive 2019/790. 37 See Recital 31 according to which “All Member States should have legal mechanisms in place allowing licences issued by relevant and sufficiently representative collective management organisations to cultural heritage institutions, for certain uses of out-of-commerce works or other subject matter, to also apply to the rights of rightholders that have not mandated a representative collective management organisation in that regard. It should be possible, pursuant to this Directive, for such licences to cover all Member States.” 38 Directive 2014/26/EU of the European Parliament and of the Council of 26 February 2014 on collective management of copyright and related rights and multi-territorial licensing of rights in musical works for online use in the internal market, OJ L 84, 20.3.2014, p. 72 (Articles 23–32). 34 35

46  Research handbook on intellectual property and cultural heritage standards of the Directive on Collective Management apply and the collective management organisations involved should abide by them.39 The option to provide broad licences that cover at least the whole of the EU should, of course, not be turned into an obligation. It is worth referring here to Recital 40, where it is provided that cultural heritage institutions and collective management organisations should remain free to agree on the territorial scope of licences, including the option of covering all Member States, the licence fee and the uses allowed. Uses covered by such licences should not be for profit-making purposes, including where copies are distributed by the cultural heritage institution, such as in the case of promotional material about an exhibition. At the same time, given that the digitisation of the collections of the cultural heritage institution can entail significant investments, any licences granted under the mechanism provided for in this Directive should not prevent cultural heritage institutions from covering the costs of the licence and the costs of digitising and disseminating the works or other subject matter covered by the licence.40

Digitisation and Other Uses by Means of an Exception Article 8(2) deals with the second option for cultural heritage institutions, but this second option only applies in the absence of a representative collective management organisation. When there is no representative collective management organisation that is able to issue licences for a certain type of work, cultural heritage institutions can rely on an exception that allows them to make out-of-commerce works in their collection available online, digitise them, etc.41 That does, however, again not mean that rightholders have no say in the matter. All rightholders have the option to opt out and thus prevent cultural heritage institutions from digitising and making their works available online unless they conclude an individual licence with them. In practice, this opt-out option relies on the fact that cultural heritage institutions publish information about out-of-commerce works in what is called a ‘public single online portal’ that will be administered by the EUIPO.42 They need to do so six months before they make the works available online. This six-month period is intended to give rightholders the opportunity to opt out before their works are made available.43 The other side of this coin is that once the six-month period has lapsed, the copyright liability of the cultural heritage institution disappears and they can make the works available on their website, digitise them, etc., for non-commercial purposes. In practice, a member state needs to provide for an exception or limitation on the basis of which out-of-commerce works can be digitised and become available online according to what is provided in paragraph 2 of Article 8 if a representative collective management organisation does not exist in the member state concerned for a specific type of work. Such

39 See Recital 34 Digital Single Market Directive. Directive 2014/26/EU of the European Parliament and of the Council of 26 February 2014 on collective management of copyright and related rights and multi-territorial licensing of rights in musical works for online use in the internal market, OJ L 84, 20.3.2014, p. 72. 40 Recital 40 to Directive 2019/790. 41 Article 8(2) of Directive 2019/790. 42 P. Keller, ‘Explainer: What will the new EU copyright rules change for Europe’s Cultural Heritage Institutions’, Europeana Pro, https://​pro​.europeana​.eu/​post/​explainer​-what​-will​-the​-new​-eu​-copyright​ -rules​-change​-for​-europe​-s​-cultural​-heritage​-institutions. 43 Article 10(1) of Directive 2019/790.

The protection of cultural heritage  47 an exception or limitation more specifically needs to cover (a) reproduction, communication to the public and the making to the public available right (Article 4(1) of Directive 2009/24/ EC), (b) all restricted acts pertaining to software (Article 4(1) of Directive 2009/24/EC), (c) all restricted acts pertaining to copyrightable databases – except for the right of distribution – and to databases protected by a sui generis right (Article 5(a), (b), (d) and (e) and Article 7(1) of Directive 96/9/EC), and (d) the rights provided for the press publication in the Digital Single Market Directive. In terms of content, this exception should allow cultural heritage institutions to make out-of-commerce works available, for non-commercial purposes, that are permanently in their collections, on condition that the name of the author or any other identifiable rightholder is indicated, unless this turns out to be impossible, and such works or other subject matter are made available on non-commercial websites. Recital 32 summarises the position for these cases where there is no practice of collective management of rights for a certain type of work or other subject matter or where the relevant collective management organisation is not sufficiently representative for the category of the rightholders and of the rights concerned in a particular country as follows: In such particular instances, it should be possible for cultural heritage institutions to make out-of-commerce works or other subject matter that are permanently in their collection available online in all Member States under a harmonised exception or limitation to copyright and related rights. It is important that uses under such exception or limitation only take place when certain conditions, in particular as regards the availability of licensing solutions, are fulfilled. A lack of agreement on the conditions of the licence should not be interpreted as a lack of availability of licensing solutions.44

Issues of Supervision The Directive is, on the other hand, less specific when it comes to the issue of supervision and it is left to the member states to decide who will have legal supervision responsibility when it comes to the compliance of the licensing of out-of-commerce works and to their use, within the conditions set out in this Directive. The same applies when it comes to the compliance of the parties concerned with the terms of those licences.45 Opt-out and Publicity Measures It was already mentioned above that according to Article 8(4)46 member states should provide rightholders with the option to opt out of the licensing option in paragraph 1 and the use of the exception in paragraph 2. Rightholders can opt out in a general way, or merely in specific cases and member states are obliged to provide that all rightholders may, at any time, easily and effectively, exclude their works or other subject matter from the licensing mechanism set out in paragraph 1 or from the application of the exception or limitation provided for in paragraph 2, either in general or in specific cases. That includes opting out after the conclusion of a licence or after the use concerned has begun in application of the limitation or exception. It speaks for itself that this opt-out mechanism can only function appropriately if the rightholder Recital 32 to Directive 2019/790. Recital 36 to Directive 2019/790. 46 Article 8(4) of Directive 2019/790. 44 45

48  Research handbook on intellectual property and cultural heritage is aware that their works are included in the target list of out-of-commerce works. Article 10 therefore puts in place a set of publicity measures, to which we now turn in a bit more detail.47 A single portal is established at EU level, but the information in it needs to be supplied from the national level. The Directive therefore obliges member states to provide in their national laws that (a) information sourced from cultural heritage institutions, collective management organisations or relevant public authorities enables the identification of out-of-commerce works (that are either (potentially) covered by a licence or used under the exception or limitation), (b) information about the options available to rightholders under the opt-out provision (Art. 8(4)), and (c) where available and relevant, information on the parties to the licence, the territories covered and the uses is made permanently, easily and effectively accessible in a public single online portal. That needs to be the case at least six months before any of the authorised or exempted acts (i.e., distribution, communication to the public or making available to the public in accordance with the licence or under the exception or limitation) are performed.48 The portal shall be established and managed by the European Union Intellectual Property Office (Regulation (EU) No 386/2012).49 This provision does not preclude the case where other types of information are also included so as to facilitate the application of the mechanisms.50 This information should be adequately publicised both before and during the use under a licence or under the exception or limitation, as appropriate, because the rightholder can opt out at any stage. Such publicity is particularly important when uses take place across borders in the internal market.51

Article 10 of Directive 2019/790. See Recital 35: “Appropriate safeguards should be available for all rightholders, who should be given the opportunity of excluding the application of the licensing mechanisms and of the exception or limitation, introduced by this Directive for the use of out-of-commerce works or other subject matter, in relation to all their works or other subject matter, in relation to all licences or all uses under the exception or limitation, in relation to particular works or other subject matter, or in relation to particular licences or uses under the exception or limitation, at any time before or during the term of the licence or before or during the use under the exception or limitation. Conditions governing those licensing mechanisms should not affect their practical relevance for cultural heritage institutions. It is important that, where a rightholder excludes the application of such mechanisms or of such exception or limitation to one or more works or other subject matter, any ongoing uses are terminated within a reasonable period, and, where they take place under a collective licence, that the collective management organisation once informed ceases to issue licences covering the uses concerned. Such exclusion by rightholders should not affect their claims to remuneration for the actual use of the work or other subject matter under the licence.” 49 Recital 41 “[…] Under Regulation (EU) No 386/2012 of the European Parliament and of the Council, the European Union Intellectual Property Office is entrusted with certain tasks and activities, financed by making use of its own budgetary means and aimed at facilitating and supporting the activities of national authorities, the private sector and Union institutions in the fight against, including the prevention of, infringement of intellectual property rights. It is therefore appropriate to rely on that Office to establish and manage the portal making such information available. […].” 50 “It needs to allow batch uploads via a web interface and APIs and support commonly used metadata formats used within the cultural heritage sector. To be meaningful for visual works the portal further needs to allow the publication of reduced size thumbnails as part of the required identifying information.” P. Keller, Independent Policy Advisor to Europeana Foundation Explainer: What will the Digital Single Market directive change for cultural heritage institutions? Europeana Foundation, June 2019 https://​ pro​.europeana​.eu/​files/​Europeana​_Professional/​Publications/​Explainer​_​%20What​%20will​%20the​ %20DSM​%20directive​%20change​%20for​%20cultural​%20heritage​%20institutions​_​%20090619​.pdf. 51 Recital 41 to Directive 2019/790. 47 48

The protection of cultural heritage  49 Allowing the rightholder to opt out at any stage does not merely offer flexibility to the rightholder in a sign of respect for their exclusive right; it also has an impact on the activities that the cultural heritage institution has already deployed. While the logical consequence of the appearance of an opt-out is that a rightholder excludes the application of either of the mechanisms (i.e., licensing of their works or the application of the exception) and that any ongoing uses are terminated, the cultural heritage institutions are allowed a reasonable period within which to terminate any use. And, where the use takes place under a collective licence, the collective management organisation will, once it has been informed of the opt-out, stop issuing licences covering the works and uses concerned. Such exclusion by rightholders will not affect their claims to remuneration for the actual use of the work under the licence.52 It is clear from the presence of the opt-out option that the exception at issue is not mandatory. It is clear that in terms of publicity, this is only the bare minimum. The member state where the licence is sought under Article 8(1), or in the case of a use under the exception or limitation under Article 8(2) where the cultural heritage institution is established, also has the ability to provide for ‘additional appropriate publicity measures’ – if necessary – for the general awareness of rightholders. These measures concern (i) the ability of collective management organisations to license out-of-commerce works, (ii) the licences granted or uses allowed under the exception or limitation, and (iii) the options available to rightholders through the opt-out.53 In this respect the system of publicity is reinforced even further to the benefit of rightholders without, however, providing for an extension of the initial six-month period.54 And if there is evidence, such as the origin of the works or other subject matter, to suggest that the awareness of rightholders could be more efficiently raised in other member states or third countries, such publicity measures should also cover those member states and third countries. Stakeholder Dialogue All of this is rather new and all kind of complexities that are not dealt with in detail by the Directive are bound to arise. Cultural heritage institutions may find themselves confronted with the need to identify large numbers of works as being out-of-commerce works, especially when it comes to works other than published works (e.g., books and journals), such as artworks, audiovisual works or photographs; this may become particularly cumbersome. Another difficult case that may well arise is where a collective management organisation is representative but is not interested in licensing an out-of-commerce work, because, for example, this is not commercially interesting for it (or merely because it cannot agree to the contractual terms

Recital 35 to Directive 2019/790. Article 8(4) of Directive 2019/790. 54 See also Recital 41 “[…] In addition to making the information available through the portal, further appropriate publicity measures might need to be taken on a case-by-case basis in order to increase the awareness in that regard of the rightholders concerned, for example through the use of additional channels of communication to reach a wider public. The necessity, the nature and the geographic scope of the additional publicity measures should depend on the characteristics of the relevant out-of-commerce works or other subject matter, the terms of the licences or the type of use under the exception or limitation, and the existing practices in Member States. Publicity measures should be effective without the need to inform each rightholder individually.” 52 53

50  Research handbook on intellectual property and cultural heritage suggested by the cultural heritage institution). In these cases, there is a risk that the whole process cannot go ahead.55 And in the same vein, not all works and their management and exploitation have the same particularities. In order to reflect the specificities of different types of work (or other subject matter) as regards modes of publication and distribution, and to facilitate the usability of those mechanisms, specific requirements and procedures may have to be established for the practical application of those licensing mechanisms, such as a requirement that a certain time period should have elapsed since the work was first commercially available. The Directive provides that it is appropriate that member states consult rightholders, cultural heritage institutions and collective management organisations when they establish such requirements and procedures.56 All of this shows the importance of a stakeholder dialogue in this context.57 Article 1158 turns that into a practical reality and stipulates that member states should consult rightholders, collective management organisations and cultural heritage institutions in each sector before they establish the specific requirements for out-of-commerce works pursuant to Article 8(5). And they should encourage regular dialogue between representative users’ and rightholders’ organisations, including collective management organisations, and any other relevant stakeholder organisations, on a sector-specific basis, to foster the relevance and usability of the licensing mechanisms set out in Article 8(1) and to ensure that the safeguards for rightholders referred in the Directive’s relevant provisions remain effective. No Replacements, but Additional Measures It remains of course the case that the measures provided in these articles to facilitate the collective licensing of rights in out-of-commerce works should not impinge on the use of such works under the exceptions or limitations provided for in EU law, or under other licences with an extended effect, where such licensing is not based on the out-of-commerce status of the covered works. These measures should also not prejudice national mechanisms for the use of out-of-commerce works that are based on licences between collective management organisations and users other than cultural heritage institutions.59 These are new, additional measures, and they do not replace existing copyright law and licensing arrangements set up under it.

55 P. Keller, Independent Policy Advisor to Europeana Foundation Explainer: What will the Digital Single Market directive change for cultural heritage institutions? Europeana Foundation, June 2019 https://​pro​.europeana​.eu/​files/​Europeana​_Professional/​Publications/​Explainer​_​%20What​ %20will​%20the​%20DSM​%20directive​%20change​%20for​%20cultural​%20heritage​%20institutions ​_​ %20090619​.pdf. 56 Recital 37 to Directive 2019/790. 57 See Recital 42: “In order to ensure that the licensing mechanisms established by this Directive for out-of-commerce works or other subject matter are relevant and function properly, that rightholders are adequately protected, that licences are properly publicised and that legal certainty is provided with regard to the representativeness of collective management organisations and the categorisation of works, Member States should foster sector-specific stakeholder dialogue.” 58 Article 11 of Directive 2019/790. 59 Recital 42 to Directive 2019/790.

The protection of cultural heritage  51 Cross-border Uses Licences granted by a national collective management organisation in the member state where the cultural heritage institution is established stand in sharp contrast with the cross-border nature of the Internet. As already mentioned above, Article 9(1)60 overcomes that issue by obliging member states to ensure that licences granted under Article 8(1) allow for the use by cultural heritage institutions of out-of-commerce works in any member state separately or in all member states in a cross-border manner.61 This approach is vital for the success of the measures. Digitisation may involve significant investments that may not be capable of being recouped on a purely national basis, and cultural heritage institutions may wish to attract an international audience. It is therefore important that the use authorised by the licence provided for in Article 8 can cover use by cultural heritage institutions in all member states. An example of such use that comes to mind is the cross-border use on the promotional material for an exhibition. Collective management organisations may historically on the other hand only have the national rights available for licensing, and use in other member states could therefore remain an infringing use. Paragraph one of Article 9 obliges member states therefore to make a licence allowing for cross-border use available. As a result, all the options remain open and contracting cultural heritage institutions and collective management organisations remain free to negotiate and agree on the territorial scope of licences, including the option of covering all member states, the licence fee and the uses allowed, and to make suitable and appropriate choices in this respect.62 And there is no real risk of forum shopping for a cheap deal, as the cultural heritage institutions are based in one place and will have to deal with the local collective management organisation for works in their collections. But there is another, potentially burdensome, side to this very welcome approach. Member states will introduce national exceptions and limitation into their national copyright law to implement Article 8 of the Directive. That means by definition that there will be 27 different versions of the exception and limitation and also the licensing provisions will differ member state by member state. That creates potentially serious issues of applicable law, as copyright laws are applied country by country in a territorial manner. Or to put it bluntly, Article 8(1) Rome II Regulation63 would result here in the application of the law of the country for which protection is sought on a country-by-country basis for each country where the use takes place. Even if they have a licence or can rely on an exception and limitation, cultural heritage institutions would have to deal with 27 national laws that are based on the same principles, but whose details differ. The application of multiple laws on a country-by-country basis is undesirable here and would place an additional heavy burden on the cultural heritage institutions. This is avoided by the creation of a presumption that any use of works under the exception or Article 9(1) of Directive 2019/790. See Recital 31, according to which “All Member States should have legal mechanisms in place allowing licences issued by relevant and sufficiently representative collective management organisations to cultural heritage institutions, for certain uses of out-of-commerce works or other subject matter, to also apply to the rights of rightholders that have not mandated a representative collective management organisation in that regard. It should be possible, pursuant to this Directive, for such licences to cover all Member States.” 62 Recital 40 of Directive 2019/790. 63 Regulation (EC) No 864/2007 of the European Parliament and of the Council of 11 July 2007 on the law applicable to non-contractual obligations (Rome II) [2007] OJ L 199/40. 60 61

52  Research handbook on intellectual property and cultural heritage limitation is deemed to occur solely in the Member State where the cultural heritage institution undertaking that use is established.64 Article 8(1) then results in the application of a single law that will be the law of the exception and limitation and the law of the place of establishment of the cultural heritage institution involved.65

MORAL RIGHTS There are countries where the duration of moral rights is linked to the duration of the economic rights in copyright and there are countries where moral rights are perpetual. We referred to that distinction above. This is an important distinction, but one we can leave to one side for a moment. The Paternity Right The author has the moral right to be identified in their capacity as the author of the work.66 That means that cultural heritage institutions should identify the author in their authorial capacity whenever the work is shown, reproduced or communicated to the public.67 The same applies in relation to reproductions of the work, and if these productions are original and attract copyright protection, the author of the reproductions enjoys the same paternity right.68 Separating both and clearly identifying who is the author of which (part of the) work is then of course also of the essence. In principle, the paternity right only needs to be observed until the moral rights expire, but as moral rights are territorial in nature just as any other aspect of copyright, global exploitation, especially when it comes to communication to the public on the internet, results in the application of the lex loci protectionis on a country-by-country basis around the world.69 That means that at least in some jurisdictions perpetual moral rights, including the right of paternity, will apply. It is therefore advisable that cultural heritage institutions always, and without temporal restriction, observe the paternity right and identify the author in their authorial capacity.

Article 9(2) of Directive 2019/790. J.J. Fawcett and P. Torremans, Intellectual Property and Private International Law, Oxford University Press (2nd ed, 2011), Ch. 12. 66 Article 6(bis) Berne Convention 1886. 67 See in general for Belgium P. Torremans and J. Deene, ‘Belgium’, in G. Davies and K. Garnett, Moral Rights, Sweet & Maxwell (2nd ed, 2016), Chapter 11, p.337 seq. and for the United Kingdom P. Torremans, Holyoak and Torremans Intellectual Property Law, Oxford University Press (9th ed, 2019), Chapter 14. 68 See e.g the UK case. John Walmsley v. Education Limited t/a Oise Cambridge [2014] 3 WLUK 354 (IPEC), paras. 11–13. 69 European Max Planck Group on Conflict of Laws in Intellectual Property, Conflict of Laws in Intellectual Property: The Clip Principles and Commentary, Oxford University Press (2013), 231. J.J. Fawcett and P. Torremans, Intellectual Property and Private International Law, Oxford University Press, (2nd ed, 2011), 13.52–13.56, pp.708–710. 64 65

The protection of cultural heritage  53 The Integrity Right In its most advanced, or shall we say most extreme, incarnation in national copyright laws, the integrity right gives the author the right to oppose any alteration to their work, even if they have transferred all the economic rights in the work.70 That can give rise to significant problems,71 as almost any preservation or other efforts by cultural heritage institutions will involve some kind of changes to the work. The involvement of digital technology inevitably leads to that result. Digitisation involves a change of technical format and the resolution/number of pixels and the format/inevitable resizing do result in changes and alterations, even if one attempts to stay as close as possible to the original. To make things even more sensitive, most national laws accept that the author who invokes their integrity right does not have to show that they suffered any prejudice or damage.72 Many national legal systems do, however, accept that such a strict approach can in practice make things unworkable. It is then accepted that those who exploit works that are protected by copyright can make such modifications as are customary for the particular mode of exploitation, such as formatting, etc., without the permission of the author and that the author cannot in all reasonableness and fairness oppose these.73 It followed in practice, for example, in Belgian case law that the remastering of a recording in order to improve the sound quality cannot violate the moral rights of the composer of the work when the cover of the CD states explicitly that the recording has been remastered and remixed. In the same way, the distribution of a fragment of a recording for mere promotional purposes cannot violate the moral right of the composer when it is clearly stated that what is circulated is only a fragment.74 This case law can easily be translated into the digitisation and original representation contexts and the issue that arises in this area for cultural heritage institutions. Careful digitisation efforts that mention that the work has been digitised whenever the outcome is used, reproduced or communicated to the public will therefore be entirely unlikely to infringe the integrity right. Another example from the Belgian courts shows that a photographer of a dish with cheese croquettes against a pale blue background could not successfully invoke his integrity right when the blue background was replaced by a yellow one on new packaging for the product. The background colour had in this case no special function or link with the dish of cheese croquettes and was not determinative from an aesthetic point of view.75 That in turn opens up a framework and perspectives for original representations, without falling foul of the integrity right of the original author. This becomes even clearer if one contrasts it with the case in which the unauthorised – and from 70 See e.g. in Belgian copyright law Article XI.165(2)(6) of the Code of Economic Law and Civ. Brussels, 17 October 1996, [1996] Auteurs & media 430 and A. Berenboom, Le nouveau droit d’auteur et les droits voisins, Brussels: Larcier, (4th ed, 2008), 185, nos 101, 107 and 190. 71 See in general for Belgium P. Torremans and J. Deene, ‘Belgium’, in G. Davies and K. Garnett, Moral Rights, Sweet & Maxwell (2nd ed, 2016), Chapter 11, p.337 seq. and for the United Kingdom P. Torremans, Holyoak and Torremans Intellectual Property Law, Oxford University Press (9th ed, 2019), Chapter 14. 72 See e.g. in Belgium: Cass. 8 May 2008 (Belgian Supreme Court), [2009] Auteurs & Media 102, annotated by F. Gotzen and [2008] ICIP 605, annotated by P. Campolini and B. Michaux. 73 H. Vanhees, Auteursrecht in een notendop, Leuven: Garant (1998), 54; A. Berenboom, Le nouveau droit d’auteur et les droits voisins, Brussels: Larcier (4th ed, 2008) 192, no. 107c and 197, no. 109. 74 Court of Appeal Brussels, 19 June 2006, [2006] Auteurs & Media 438, annotated by O. Sasserath. 75 Court of Appeal Brussels, 27 June 2007, no.2004/AR/1013, unreported.

54  Research handbook on intellectual property and cultural heritage a technical point of view, unnecessary – modernisation of a logo for fabric softeners was held to constitute an infringement of the integrity of the creation of the original designer.76 In other countries, such as the United Kingdom,77 the scope of the integrity right is much more limited. In these countries the copyright law sticks much more narrowly to the text of Article 6 bis Berne Convention, which stipulates that the minimum scope of the integrity right is the right “to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, the said work, which would be prejudicial to his honour or reputation”. Infringement of the integrity right will then require the cumulative proof of honour and reputation and prejudice to that honour and reputation as a result of the treatment that is meted out to the work.78 This integrity right can then, of course, not apply to any modification or be exercised at the discretion of the author. Instead, it has to be proven “that the distortion or other mutilation of [the] work really prejudices [the author’s] lawful intellectual or personal interests in the work”.79 This involves the balancing of all relevant interests involved. An important factor in this balancing exercise will be the purpose and the character of the use of the work in order to arrive at a fundamentally fair balance between the interests of the author and the user of the work.80 Acts of preservation and digitisation to keep the original of the work in good shape and at the same time guarantee access to the user must therefore have a good chance of not being held to amount to derogatory treatment that conflicts with the integrity right of the author. No doubt the same conclusion as the one that applied in the stricter systems also applies here, and those who exploit works that are protected by copyright can make such modifications as are customary for the particular mode of exploitation, such as formatting, etc., without the permission of the author and the author cannot in all reasonableness and fairness oppose these, especially when this is done by cultural heritage institutions within the scope of their mission and according to the standards generally applicable in the relevant area. Consent and Waivers In the United Kingdom the owner of the moral right can consent to certain things being done and these will then not be an infringement of the moral rights concerned.81 Other jurisdictions will not go that far, but arguably the author can always (tacitly) consent to their name not being mentioned or to certain treatment of the work and promise not to rely on the moral rights concerned. All of this may then not be enforceable, but it is submitted that it could reduce the damages to a nominal amount. Whenever possible, cultural heritage institutions are well advised to seek the consent of the author or the owner of the moral right whenever they feel their activities could affect the moral rights.

Civ. Tournai, 8 September 1997, [1997] Ingénieur Conseil 357. Section 80(1) Copyright, Designs and Patents Act 1988. 78 P. Torremans, Holyoak and Torremans Intellectual Property Law, Oxford University Press (9th ed, 2019), 231–233. Confetti Records, Fundamental Records & Andrew Alcee v. Warner Music UK Ltd (t/a East West Records) [2003] ECDR 336. 79 A. Dietz, ‘The Artist’s Right of Integrity under Copyright Law: A Comparative Approach’ (1994) 25 IIC 177, at 183. 80 P. Torremans, Holyoak and Torremans Intellectual Property Law, Oxford University Press (9th ed, 2019), 232. 81 Section 87(1) Copyright, Designs and Patents Act 1988. 76 77

The protection of cultural heritage  55 In the United Kingdom the copyright act even allows one to waive their moral rights and to surrender them in advance by means of a written and signed instrument.82 Most national laws around the world do not have an equivalent for this radically flexible rule83 and cultural heritage institutions are therefore advised not to rely on it in the digital age.

CONCLUSION The new legislation that is designed to bring copyright and related rights into the digital age and to address specific issues84 creates opportunities for preservation and digitisation for cultural heritage institutions. There are opportunities there that can be put to good and productive use in the interest of all parties involved. And as we demonstrated, moral rights will not be a hindrance in that respect if industry standards of the digital era are observed. It is therefore important to continue and to strengthen the dialogue between the cultural heritage institution community on the one hand and the copyright and related rights community on the other hand.

Sections 87(2) and (3) Copyright, Designs and Patents Act 1988. P. Torremans, Holyoak and Torremans Intellectual Property Law, Oxford University Press (9th ed, 2019), 237. 84 See I. Stamatoudi and P. Torremans, EU Copyright Law: a commentary, Edward Elgar Publishing, (2nd ed, 2021), Ch. 17. 82 83

3. The protection of cultural heritage by trademarks Mira Burri

1. INTRODUCTION One could assume that since both the protection of cultural heritage and that of intellectual property (IP) are inherently related to creativity, there ought to be a linkage between the two systems and proper working mechanisms for interfacing them. Yet, as it has been well documented in the literature, cultural heritage is not easily subsumed under existing intellectual property rights, and while both the international and the national legal frameworks have evolved over time to address the protection of different types of cultural expressions, no perfect match exists.1 Instead, what one is often confronted with are profound underlying tensions between the protection of cultural heritage and contemporary models of intellectual property rights’ protection, which often involve rigid rules with regard to threshold of protection, formalities of ownership, and are in general employed as investment protection rather than as a tool to preserve and promote culture,2 as readily revealed by a number of contributions in this volume.3 It should be highlighted in this context that the relationship between cultural heritage and IP protection is not static but dynamic and contentions may have been exacerbated over time, as the environment in which this relationship develops changes. The shifts of economic and cultural globalization as well as rapid and far-reaching technological advances need to be accounted for as forces of redefining the relationship between cultural heritage and IP protection.4 Often these transformations cannot be plainly categorized as “positive” or “negative” for the protection of cultural heritage or for the interests of indigenous and local communities: some of them, such as for instance the affordances of digitization and

1 See e.g. Mira Burri, “Cultural Heritage and Intellectual Property”, in Francesco Francioni and Ana Filipa Vrdoljak (eds), The Oxford Handbook of International Cultural Heritage Law (Oxford: Oxford University Press, 2020), 459–482; 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). 2 See e.g. Michael F. Brown, “Can Culture Be Copyrighted?”, Current Anthropology 39 (1998), 193–206; 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. 3 See in particular Chapters 1, 2, 4, 5 and 6; see also 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. 4 See e.g. Madhavi Sunder, “Cultural Dissent”, Stanford Law Review 54 (2001), 495–567; Madhavi Sunder, “IP3”, Stanford Law Review 59 (2006), 257–332.

56

The protection of cultural heritage by trademarks  57 the emergence of the Internet as a global communication platform, can be seen as a threat to the existence and practice of traditional culture, while also offering new opportunities for both cultural preservation and cultural dissemination.5 Attempting to capture this complexity, the chapter focuses in particular on the toolbox of trademark law to map these tensions and to explore to what extent trademarks offer useful, albeit imperfect, ways to protect cultural heritage. The chapter then addresses the questions of whether some of the existing mismatches can be rectified in a viable way and whether a stronger linkage between cultural heritage and the intellectual property regime brings about the desired effects. The chapter takes into consideration the international legal framework for trademarks, in particular the TRIPS Agreement,6 which incorporated the 1883 Paris Convention,7 and created a set of global minimal standards for IP protection, linking them also to the WTO’s dispute settlement system.8 The chapter also looks at developments in the national regimes, where relevant and useful for the discussion. Building upon the enquiries into the definitional problems of cultural heritage and the difficulties of incorporating such definitions into the intellectual property discourse,9 the chapter subscribes to a broad understanding of cultural heritage in line with the suggestion of the Special Rapporteur in the field of cultural rights that traditional knowledge (TK) and traditional cultural expressions (TCE) do provide useful guidance for defining what is usually understood as cultural heritage10 5 See e.g. Christoph Beat Graber and Mira Burri (eds), Intellectual Property and Traditional Cultural Expressions in a Digital Environment (Cheltenham: Edward Elgar, 2008); Mira Burri, “Digital Technologies and Traditional Cultural Expressions: A Positive Look at a Difficult Relationship”, International Journal of Cultural Property 17 (2010), 33–63. 6 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 [hereinafter TRIPS or TRIPS Agreement]. 7 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 [hereinafter Paris Convention]. 8 Article 64 TRIPS; see also Understanding on Rules and Procedures Governing the Settlement of Disputes, 15 April 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 21869 U.N.T.S. 401, 33 I.L.M. 1226 [1994] [hereinafter DSU]. For analysis of the links between IP protection and international trade law, see e.g. 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; 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. 9 See Chapter 1 of this volume; also 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), 1–28; See also 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; UNESCO, Final Report, International Round Table on “Intangible Cultural Heritage – Working Definitions”, Turin, 14-17 March 2001; Lucas Lixinski, Intangible Cultural Heritage in International Law (Oxford: Oxford University Press, 2013), 1–25. 10 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. This permits us also to link to the work under the World Intellectual Property Organization on the protection of TK/TCE. See in particular 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

58  Research handbook on intellectual property and cultural heritage and 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.11 In the context of indigenous peoples’ rights, it should be noted that this link between cultural heritage and IP protection has been reinforced, as Article 31 of the Declaration on the Rights of Indigenous Peoples clearly states that: “[Indigenous peoples] have the right to maintain, control, protect and develop their intellectual property over such cultural heritage, traditional knowledge, and traditional cultural expressions.”12 In this line, the chapter will also specifically take into account the interests of indigenous peoples to protect their cultures and the underlying complexities that may or may not be adequately reflected in existing trademark law. The chapter starts with a brief primer on trademark law (Section 2) and then explores the possibilities it offers for the defensive and offensive protection of cultural heritage (Section 3). The following section (4) entails a critical appraisal of the status quo and concludes the enquiry into the (mis)matches between trademark law and cultural heritage protection.

2.

TRADEMARK LAW

“Intellectual property” is a general term that refers to a variety of legal mechanisms that protect intangible property rights.13 Unlike real property, which can be protected by certain physical

Draft Outline of Policy Options and Legal Mechanisms, WIPO/GRTKF/IC/9/INF/4, 27 March 2006; WIPO, The Protection of Traditional Cultural Expressions: Draft Gap Analysis, WIPO/GRTKF/ IC/13/4(b) Rev., 11 October 2008; 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; WIPO, The Protection of Traditional Cultural Expressions: Draft Articles, WIPO/GRTKF/IC/34/8, 7 June 2017; WIPO, The Protection of Traditional Knowledge: Draft Articles Facilitators’ Review 2, 2 December 2016. 11 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. 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.” 12 United Nations, Declaration on the Rights of Indigenous Peoples, G.A. Res. 61/295, U.N. Doc. A/RES/47/1 (2007) (emphases added). See also 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), 299–327; 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 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: (1) “copyright and related (or neighbouring) rights” for literary and artistic works and (2) “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

The protection of cultural heritage by trademarks  59 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.14 It is argued that creative artefacts resemble public goods and as such are non-rivalrous and non-exclusive, which generates for rational consumers a tendency to free ride,15 and consequently the danger of lacking incentives to create these public goods. The intellectual property right, in particular in the domains of patent and copyright, is there to remedy this situation by giving its holder a temporary and limited monopoly over their creations, so that they can reap the benefits of this exclusive right and be so incentivized to create new works.16 Unlike patent and copyright, the purpose of trademark as a distinctive sign is quite different. On the one hand, since the sign is associated with certain products and services from a certain origin, 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 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.17 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 a certain competitive advantage.18 The international framework for trademark protection was created early on with the 1883 Paris Convention but was in important ways strengthened and clarified through the 1995 TRIPS Agreement, which sought to reconcile the existing different domestic traditions of trademark law and endorse minimum standards of protection.19 The TRIPS Agreement

Kluwer, 2015); Tanya Aplin and Jennifer Davis, Intellectual Property Law: Text, Cases, and Materials (Oxford: Oxford University Press, 2016). 14 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); Sunder (2006), supra note 4; 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). 15 Mark Lemley, “Property, Intellectual Property, and Free Riding”, Texas Law Review 83 (2005), 1031–1075. 16 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. 17 Burk, supra note 16, at 409; also William M. Landes and Richard A. Posner, The Economic Structure of Intellectual Property Law (Cambridge, MA: Belknap Press of Harvard University, 2003), at 166–208; Mark P. McKenna, ‘The Normative Foundations of Trademark Law’, Notre Dame Law Review 82 (2007), 1839–1916, at 1849–1862. 18 Ibid.; also Teresa da Silva Lopes and Paul Duguid (eds), Trademarks, Brands, and Competitiveness (London: Routledge, 2010). 19 Irene Calboli and Christine Haight Farley, ‘The Trademark Provisions in the TRIPS Agreement’, in Carlos M. Correa and Adulqawi A. Yusuf (eds), Intellectual Property and International Trade: The TRIPS Agreement (Alphen aan den Rijn: Kluwer Law International, 2016), 157–192, referring to Daniel Gervais, The TRIPS Agreement: Drafting History and Analysis, 4th edn. (London: Sweet & Maxwell, 2021), 311–356.

60  Research handbook on intellectual property and cultural heritage provides also the first comprehensive definition of trademarks. Article 15(1) TRIPS states in particular that: [a]ny sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks. Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible.20

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. In recent years, there has been an increased use of the so-called “non-conventional” or “non-traditional” marks, which may include appearance, shape, sound, smell, taste and texture, and expand the scope of trademark protection.21 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, the likelihood of confusion being the test for infringement.22 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;

20 The US law under Section 45 of the Lanham Act (5 U.S.C. § 1127 (2000)) includes an even broader definition of trademarks, stating that any sign capable of distinguishing the source of the products can be protected as a mark. Under EU law, Article 3 of the current Trademark Law Directive (OJ L [2015] 336/1) uses a very similar language and requires that the signs are capable of “(a) distinguishing the goods or services of one undertaking from those of other undertakings; and (b) being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.” 21 This trend has been enabled also by post-TRIPS Agreements, notably bilateral or regional free trade agreements but also on the global level through more flexible registration requirements as endorsed in particular by the 2004 Singapore Treaty of Trade Marks. This development is not without controversies. See e.g. Mark A. Lemley, “The Modern Lanham Act and the Death of Common Sense”, Yale Law Journal 108 (1999), 1687–1715; Irene Calboli and Martin Senftleben (eds), The Protection of Non- Traditional Marks: Critical Perspectives (Oxford: Oxford University Press, 2018). 22 Article 16(1) TRIPS. Article 16(1) specifies further that: “In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. The rights described above shall not prejudice any existing prior rights, nor shall they affect the possibility of Members making rights available on the basis of use.” Article 16(3) includes an anti-dilution provision for well-known trademarks, in that it secures the application of Article 6bis of the Paris Convention to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.

The protection of cultural heritage by trademarks  61 (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.23 In some countries, following the common law tradition, the registrability of a mark can be dependent on use.24 Trademarks, as other IP forms, are not absolute rights, and Article 17 TRIPS sets out the limitations and exceptions that WTO members may provide with regard to the trademark holders’ rights. Such limited exceptions can include fair use or descriptive terms, provided that the exception takes account of the legitimate interests of the owner of the trademark and of third parties. WTO members remain free to expand the list of limitations and enjoy flexibilities in this regard.25 Finally and in contrast to copyright or patent protection, the TRIPS Agreement specifies that initial trademark registration, and each subsequent renewal of the registration, should be “for a term of no less than seven years”26 but the “registration of a trademark shall be renewable indefinitely”.27 Pursuant to Article 21 TRIPS, while WTO members may determine conditions on the licensing and assignment of trademarks,28 compulsory licensing of trademarks shall not be permitted and trademark owners have the right to assign the trademark with or without the transfer of the business to which the trademark belongs.29 See Articles 15–21 TRIPS. Article 15(3) TRIPS. But WTO Members cannot refuse a pending trademark application “solely on the ground that the intended use has not taken place before the expiry of a period of three years from the date of application” (ibid). The US has accordingly adjusted its use-based system towards an “intent-to-use” system in 1989 as requirement to file a trademark application. See Trademark Revision Act of 1988, Pub. L. No. 100-667, 102 Stat. 3935 (1988) (codified as amended at 15 U.S.C. § 1060 (1989)). 25 See e.g. WTO Panel Report, European Communities – Protection of Trademarks and Geographical Indications for Agricultural Products and Foodstuffs (European Communities – Geographical Indications), WT/DS174/R, adopted 15 March 2005. The Panel had the opportunity to compare Article 17 with the scope of patent and copyright limitations and stated that: “unlike these other provisions, Article 17 contains no reference to ‘conflict with a [or the] normal exploitation’ [of the work or patent], no reference to ‘unreasonable prejudice’ to the ‘legitimate interests’ of the right holder or owner, and it not only refers to the legitimate interests of third parties but treats them on par with those of the right holder” (see ibid., at para. 7.649). For an overview of defences implemented in domestic laws, see e.g. Graeme B. Dinwoodie, “Developing Defenses in Trademark Law”, Lewis and Clark Law Review 13 (2009), 99–153. 26 Article 18(1) TRIPS. The standard duration of the term for trademark registration is now 10 years in most jurisdictions; this term is also set out in 1999 Trademark Law Treaty (2034 U.N.T.S. 298) and the 1989 Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol). 27 Article 18(1) TRIPS. Certain requirements of use apply (Article 19 TRIPS) but there is a strong protection given to trademark holders. See e.g. Calboli and Haight Farley, supra note 19, at 175–176. 28 These trademark licensing agreements (or trademark licences) are contracts that can cover different clauses, such as exclusiveness, territorial scope, advertising, product quality and royalties. There has been an increasing trend of licensing beyond the production of the same or similar products to collateral and promotional products with the intent of using the initial brand. For a great discussion, see e.g. Irene Calboli, “The Sunset of ‘Quality Control’ In Modern Trademark Licensing”, American University Law Review 57 (2007), 341–407. 29 For a commentary of Article 21 TRIPS, see Calboli and Haight Farley, supra note 19, at 179–182; UNCTAD-ICTSD, Resource Book on TRIPS and Development (Cambridge: Cambridge University Press, 2005), at 247–249. 23 24

62  Research handbook on intellectual property and cultural heritage While there are many intricacies involved in the application of these rules and variations across jurisdictions,30 the chapter is genuinely interested in how this works for the protection of cultural heritage.

3.

CULTURAL HERITAGE PROTECTION UNDER TRADEMARKS

The demands for protecting and promoting TCE/TK have been of heterogeneous nature, and intellectual property protection is only one of these.31 It is important to highlight in this context that IP protection should be distinguished 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”.32 Indigenous peoples do also acknowledge that many of their aspirations may be addressed by non-IP measures targeted at the preservation and promotion of cultural heritage, as well as by other tools, such as those developed under communities’ customary laws.33 The concrete goals pursued through IP protection, and trademarks in particular, may also differ. On the one hand, some communities wish to claim and exercise IP in their TCE/TK to enable them to exploit them commercially as a contribution to economic development (“offensive protection”). On the other hand, some communities wish to exercise IP rights in order to prevent the use and commercialization of their cultural heritage 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 heritage. 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.34 We explore these two types of protection of cultural heritage and how these may be enabled through trademark law. 3.1

Defensive Mechanisms of Protection

Defensive protection of cultural heritage is critically 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

For a great overview, see Calboli and Haight Farley, supra note 19. 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 12. 32 WIPO, TCE Gap Analysis, Annex 1, at 7. 33 Ibid.; see also Angela Riley, “‘Straight Stealing’: Towards an Indigenous System of Cultural Property Protection”, Washington Law Review 80 (2005), 69–164. 34 WIPO TCE Gap Analysis, Annex 1, at 8. 30 31

The protection of cultural heritage by trademarks  63 cases, making use of Māori imagery.35 The registration of a trademark provides for a procedure for its examination and 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, and New Zealand’s trademark law offers some specific mechanisms in this context. In particular, while New Zealand’s trademark law does not ban the possibility to register Māori words, symbols, sounds or smells, as this may assist the recognition of Māori culture and foster Māori economic development, the law does refuse to register any trademark which may “offend a significant section of the community, including Māori”.36 The Commissioner of Trade Marks has appointed an advisory committee, including members who share the Māori worldview and have an understanding of Māori protocol and culture,37 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.38 This is a unique empowerment approach of the indigenous communities, as “the affected group’s identity is always a consideration of the [registration] process”.39 In the United States, a trademark may be refused, if it “comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute”.40 Many of these grounds may include cultural heritage considerations and provide a shield for indigenous communities against signs, names or other marks placed on products and services in commerce that harm or in other ways affect their cultural heritage and practices. Yet, the objections to disparaging and scandalous marks occur only after their publishing, shifting the responsibility from the trademark registry to the communities, which places a burden on indigenous peoples to monitor trademark registers and to use their resources

35 See e.g. 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 8 (2005), 83–98; Sari Sharoni, “The Mark of a Culture: The Efficacy and Propriety of Using Trademark Law to Deter Cultural Appropriation”, Federal Circuit Bar Journal 26 (2017), 407–446. 36 Trade Marks Act 2002 (NZ), 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 37 Trade Marks Act 2002 (NZ), section 179(2). 38 The number of applications found to have a Māori cultural element that would be offensive to Māori is generally below 3%. 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 trademark 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 New Zealand Intellectual Property Office, supra, note 36, at 19 and 21. 39 Rochelle Dreyfuss and Susy Frankel, “Trade Marks and Cultural Identity”, in Graeme W. Austin et al. (eds), Interconnected Intellectual Property (Cambridge: Cambridge University Press, 2019), 227–239. 40 Lanham Act 1946, 15 USC 1052(a).

64  Research handbook on intellectual property and cultural heritage to challenge them.41 Furthermore, the objection process is not without contentions and may not provide full consideration of indigenous peoples’ claims. So, for instance, in the famous cases where indigenous communities sought to remove the registrations relating to “Redskins”,42 the US Trademark Trial and Appeal Board held that the “Redskins” trademarks were disparaging to a substantial number of Native Americans but not scandalous, as this must affect “a substantial composite of the general public”.43 The finding of disparagement was reversed on appeal for lack of substantial evidence and later appeals were denied on the basis of laches, meaning the Native American petitioners waited too long to pursue their rights. In the later 2017 US Supreme Court decision in the Matal v Tam case,44 the statutory bar on disparaging marks was invalidated based on the protection of free speech under the First Amendment, and their use in commerce was thus facilitated.45 This ruling has had multiple implications, including remanding a newer case regarding the use of “Redskins” by the NFL team Washington Redskins.46 In Europe, Article 7(1)(f) of the EU Trade Mark Regulation (EUTMR)47 and Article 4(1)(f) of the Trade Mark Directive (TMD)48 prohibit the registration of trademarks “which are contrary to public policy or to accepted principles of morality”, but the practice of the courts has not been clear and often registration of cultural heritage materials was permitted or denied only due to the lack of distinctiveness.49 A 2017 decision by the EFTA Court in the Vigeland case50 provides, however, a new and broad interpretation of these grounds for refusal. With regard to morality, the EFTA Court provided two key arguments for an exclusion: (1) the relevant

41 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, 2008), 433–463. 42 Harjo v. Pro­Football, Inc., 30 U.S.P.Q. 2d 1828 (T.T.A.B. 1994); Harjo v. Pro­Football, Inc., 50 U.S.P.Q. 2d 1705, 1748 (1999); Pro­Football, Inc. v. Harjo, 284 F. Supp. 2d 96 (D.C. Cir. 2003); Pro­Football, Inc. v. Harjo, 2006 WL 2092637 (D.C. Cir 2006). For a discussion of the early cases, see e.g. Rachel Clark Hughey, “The Impact of Pro­Football Inc. v. Harjo on Trademark Protection of Other Marks”, Fordham Intellectual Property, Media and Entertainment Law Journal 14 (2004), 327–367. 43 Harjo v. Pro­Football, Inc., 50 U.S.P.Q. 2d 1705, 1736 (1999). 44 137 S Ct 1744 (2017). Simon Tam, the front man of an Asian rock band, wished to reclaim racial slurs targeted at Asians, chose “The Slants” as the band’s name, and applied for a trademark registration of this name. The registration was denied because of the bar on registering marks that “may disparage […] persons, living or dead […] or bring them into contempt, or disrepute”. On appeal, the Court found that refusing to register constitutes a burden on speech. As the statute was not viewpoint neutral and did not serve a “substantial interest”. The Court also rejected the notion that trademark registration is government speech, which is not subject to a requirement of viewpoint neutrality. 45 In Iancu v. Brunetti, 139 S. Ct. 2294 (2019), a case that concerned the mark FUCT for clothing, the Supreme Court similarly held that trademarks cannot be barred on the ground that they are immoral or scandalous. 46 Blackhorse v. Pro-Football, Inc., 112 F. Supp.3d 439 (2015). 47 Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark OJ L [2017] 154/1. 48 Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks OJ L [2015] 336/1. 49 For a full analysis of the cases, see Martin Senftleben, “No Trademark Protection for Artworks in the Public Domain – A Practical Guide to the Application of Public Order and Morality as Grounds for Refusal”, GRUR International (2021), https://​doi​.org/​10​.1093/​grurint/​ikab107 50 EFTA Court, case E-5/16, Municipality of Oslo (“Vigeland”), decision of 6 April 2017. The case dealt with an attempt to register artworks of the Norwegian sculptor Gustav Vigeland as trademarks after the expired term of copyright protection.

The protection of cultural heritage by trademarks  65 public may perceive the registration as a trademark as offensive because certain pieces of art enjoy a “particular status as prominent parts of a nation’s cultural heritage, an emblem of sovereignty or of the nation’s foundations and values”; and (2) the relevant public may perceive the registration as a trademark as offensive because it would lead to a “misappropriation or a desecration of the artist’s work, in particular if it is granted for goods or services that contradict values of the artist or the message communicated through the artwork in question”.51 With regard to the public order ground for refusal, which the Court noted should be judged based on objective criteria rather than subjective ones as applied to the public morality test,52 the EFTA judges gave again two key arguments for excluding cultural signs from trademark protection: (1) the registration as a trademark would pose a genuine and sufficiently serious threat to “certain fundamental values”, “a fundamental interest of society” or “a fundamental concern to the State and the whole of society”; and (2) the registration as a trademark would be against the need to safeguard the public domain, which amounts to a genuine and serious threat if this need “itself, is considered a fundamental interest of society”.53 The Vigeland case opens in this sense new opportunities to refuse trademark registration of cultural heritage, taking into account fundamental values and interests in a particular societal context; it remains to be seen how the practice of the courts will apply these tests.54 Another avenue of defensive protection through trademark registration procedures is to prevent false or misleading claims as to the authenticity or origin of TCE.55 The risk of deception must, however, be real, and fanciful trademarks will be accepted even though they might be deceptive.56 Databases can be particularly useful in this context and assist trademark offices. The US Patent and Trademark Office (USPTO) has for instance 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.57 A more robust protection may be provided through specific legislation. In the US, for instance,

Senftleben, supra note 49, citing EFTA Court, ibid., at para. 92. EFTA Court, ibid., at paras. 84–86. 53 Senftleben, supra note 49, citing EFTA Court, ibid., at paras. 94–96. 54 For a discussion of the implications of the case, see Senftleben, supra note 49; Martin Senftleben, “A Clash of Culture and Commerce”, in Irene Calboli and Martin Senftleben (eds), The Protection of Non-Traditional Marks: Critical Perspectives (Oxford: Oxford University Press, 2018), 310–336; Martin Senftleben, “Vigeland and the Status of Cultural Concerns in Trade Mark Law – The EFTA Court Develops More Effective Tools for the Preservation of the Public Domain”, International Review of Intellectual Property and Competition Law 48 (2017), 683–720; for a critique of the EFTA Court’s decision, see Rochelle C Dreyfuss, “Cultural Heritage and the Public Domain: What the US’s Myriad and Mayo Can Teach Oslo’s Angry Boy”, in Niklas Bruun et al. (eds), Transition and Coherence in Intellectual Property Law: Essays in Honour of Annette Kur (Cambridge: Cambridge University Press, 2020), 322–331. 55 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 Elgar, 2008), 123–159; Frankel, supra note 41. 56 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. 57 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 51 52

66  Research handbook on intellectual property and cultural heritage the Indian Arts and Crafts Act58 is a truth-in-advertising law that prohibits misrepresentation in the marketing of Indian art and craft products within the United States and makes it illegal to offer or display for sale, or sell any art or craft product in a manner that falsely suggests it is Indian produced, an Indian product, or the product of a particular Indian or Indian tribe or Indian arts and crafts organization.59 Overall, the trademark registration does offer a well-timed opportunity to defend the interests of indigenous communities and their heritage, especially as the case of New Zealand illustrates, and there are a variety of ways in which the existing mechanisms can be improved to render the procedures more inclusive and aware of the concerns of the source communities.60 It should be also added in this context that trademark registers have important communication functions, and signal to other traders, as well as to the public at large, the marks that have been registered and that are considered registrable.61 While the cultural functions of trademarks have been so far largely ignored,62 and there is a worrying history of trademark registration that has marginalized or indeed outright harmed certain groups including indigenous communities,63 the registration process does offer a useful path to correct such failures and consider the broader cultural and societal functions of trademarks. So, for instance, while the Redskins judicial saga was left without a satisfactory decision, the Washington Redskins decided to change the name of the football team.64

Containing the Official Insignia of Federally and State Recognized Native American Tribes, 60 Fed. Reg. 44,603 (20 August 2001). 58 Indian Arts and Crafts Act (Act) of 1990 (P.L. 101-644). 59 The law covers all Indian and Indian-style traditional and contemporary arts and crafts produced after 1934. The Act broadly applies to the marketing of arts and crafts by any person in the United States. Some traditional items frequently copied by non-Indians include Indian-style jewellery, pottery, baskets, carved stone fetishes, woven rugs, kachina dolls, and clothing. For a first-time violation of the Act, an individual can face civil or criminal penalties up to a $250,000 fine or a five-year prison term, or both. If a business violates the Act, it can face civil penalties or can be prosecuted and fined up to $1,000,000. The Indian Arts and Crafts Enforcement Act of 2000 amended the 1990 Act to strengthen the cause of action for misrepresentation of Indian arts and crafts. 60 Janke suggests for instance amending the Trade Marks Examiners Manual to protect indigenous knowledge, as well as employing more indigenous people. See Terri Janke, Indigenous Knowledge: Issues for Protection and Management, Discussion Paper commissioned by IP Australia and the Department of Industry, Innovation and Science, 2018, at 59–60. 61 Fady JG Aoun, “Whitewashing Australia’s History of Stigmatising Trade Marks and Commercial Imagery”, Melbourne University Law Review 62 (2019), 671–736, at 682; also Robert Burrell and Michael Handler, “The Intersection between Registered and Unregistered Trade Marks”, Federal Law Review 35 (2007), 375–397; Robert Burrell, “Rethinking the Relationship between Registered and Unregistered Trade Marks”, in Graeme W. Austin et al. (eds), Interconnected Intellectual Property (Cambridge: Cambridge University Press, 2019), 38–50. 62 See e.g. Aoun, ibid., referring to Patricia Loughlan, “The Campomar Model of Competing Interests in Australian Trade Mark Law”, European Intellectual Property Review 27 (2005), 289–293. See also Patricia Loughlan, “Protecting Culturally Significant Uses of Trade Marks (Without a First Amendment)”, European Intellectual Property Review 27 (2000), 328; Jason Bosland, “The Culture of Trade Marks: An Alternative Cultural Theory Perspective”, Media and Arts Law Review 10 (2005), 99; Sonia K. Katyal, “Trademark Intersectionality”, UCLA Law Review 57 (2010), 1601–1699. 63 For a powerful account of this in the Australian context, see Aoun, supra note 61. 64 See e.g. Les Carpenter, “Washington’s NFL Team to Retire Redskins Name, Following Sponsor Pressure and Calls for Change”, The Washington Post, 13 July 2020; see also Hughey, supra note 42.

The protection of cultural heritage by trademarks  67 Digitization may have also provided new avenues of defensive protection, which reflect better the different and sometimes conflicting demands of indigenous peoples (such as for openness and secrecy, or for different levels of access according to privileges or skills of different community members) and addresses some of the failures of conventional databases, where “indigenous voices have had little impact in shaping the information architectures that underlie how cultural heritage is organized and disseminated online”.65 Digital tools may enable authorized members to define and control the rights, accessibility and reuse of their digital resources; uphold traditional laws pertaining to secret/sacred knowledge or objects; prevent the misuse of indigenous heritage in culturally inappropriate or insensitive ways; ensure proper attribution to the traditional owners; and enable indigenous communities to describe their resources in their own words.66

3.2

Offensive Mechanisms of Protection

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.67 It can give them control over their culture, as it evolves, and empower them.68 While trademark law is fairly flexible, as earlier discussed, existing trademark systems do not provide mechanisms through which indigenous peoples can claim exclusive rights to all signs and symbols relating to their culture, and communities must satisfy the conventional conditions for trademark registration, as set out in domestic legal regimes. Distinctiveness is absolutely key in this process. Trademark registration systems do not recognize distinctiveness as simply arising from cultural heritage69 and cultural heritage does not benefit from the protection of the sacred that state emblems, official hallmarks and emblems of intergovernmental organizations enjoy.70 Still, elements of cultural heritage and indigenous communities’ culture would in most situations readily meet the distinctiveness criterion as a recognition of an association between a sign and a particular source. This threshold is less demanding than the requirements under copyright for originality and under patent law for novelty.71 Yet, as Janke points out, while [t]here has been an increase in the number of Indigenous businesses and organizations attempting to make use of trade mark laws in an effort to register their own trade marks for the protection of their artistic works and other Indigenous knowledge […] [i]n most cases, the trade marks have not proceeded to registration. It is hypothesized that this is because often the proposed trade mark con65 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 Brown, supra note 2. 66 WIPO, Consolidated Analysis of the Legal Protection of Traditional Cultural Expressions, WIPO/ GRTKF/IC/5/3, Annex, 2 May 2003, at para. 245. For the experience with some concrete projects, see Kimberley Christen, “Tracking Properness: Repackaging Culture in a Remote Australian Town”. Cultural Anthropology 21 (2006), 416–446. 67 Zografos Johnsson, supra note 56, at 155. 68 See e.g. Sunder (2006), supra note 4. 69 Frankel (2008), supra note 41. 70 Ibid. 71 See e.g. Burri (2020), supra note 1.

68  Research handbook on intellectual property and cultural heritage sists entirely of words that are purely descriptive […] on receipt of an adverse report, the Indigenous application often does not reply to clarify the application.72

There is in this sense a distinct concern “… that Indigenous people need to know much more about the system, namely how to apply and overcome descriptiveness of marks and other issues raised in adverse reports”.73 Trademark law does also require that signs and symbols are used in commerce in relation to the class of goods or services in which the trademark is registered, and in this sense “existing trademark registration procedures to protect indigenous peoples’ interests requires squeezing indigenous interests into a system designed for interests in trade and commerce”.74 The “use in commerce” criterion has often been an impediment to registration of cultural heritage. The example of the unsuccessful Māori attempts to register the “Kamate Kamate” haka, best known from the performances of New Zealand’s national rugby team the All Blacks, as a trademark and consequently control its commercialization, are illustrative in this context, as the Intellectual Property Office of New Zealand (IPONZ) took the stance that the haka is not associated with one particular trader, but with New Zealand.75 The predicament was resolved after proceedings before the Waitangi Tribunal through specific legislation, the 2014 Haka Ka Mate Attribution Act, which provides a right of attribution to Ngāti Toa in respect to the haka “Ka Mate”, so any person who publishes, broadcasts or shows a film in public featuring “Ka Mate” must attribute it to the source community.76 Some trademark systems may also prescribe the graphic representation of signs, although this is optional under the TRIPS Agreement77 and the requirement has been in recent years relaxed with the growing recognition of non-traditional trademarks.78 While it is in general possible to graphically represent indigenous symbols, the requirement to register variations may be too burdensome, and even inappropriate, if it is contrary to the customs of the source community.79 There is one distinct feature of trademarks which may be critical for cultural heritage protection and that is, that although there is a requirement for the payment of renewal fees, trademark protection can last indefinitely – this again is very different from the limited duration of the Terri Janke, “Minding Culture: Case Studies on Intellectual Property and Traditional Cultural Expressions”, WIPO Publication No. 781 (2004), at 43. 73 Janke, ibid. 74 Frankel (2008), supra note 41. 75 For a detailed analysis, see Susy Frankel, “‘Ka Mate Ka Mate’ and the Protection of Traditional Knowledge”, in Rochelle Cooper Dreyfuss and Jane C. Ginsburg (eds), Intellectual Property at the Edge: The Contested Contours of IP (Cambridge: Cambridge University Press, 2014), 193–214. 76 See New Zealand Intellectual Property Office, supra note 36; also Frankel (2014), ibid. 77 See Article 15 TRIPS. 78 So, for instance, in EU trademark law, the graphical representation requirement no longer applies when submitting a trademark from 1 October 2017. Signs can be represented in any appropriate form using generally available technology, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. The result is a “what you see is what you get” system, which aspires to make the trademark entries on the EUTM Register clearer, more accessible and easier to search for. Article 3 of the EU Trade Mark Implementing Regulation (EUTMIR, OJ L [2018] 104/37) lays down specific rules and requirements for the representation of some of the most popular types of trade mark, including some technical requirements, in accordance with the specific nature and attributes of the trade mark in question. 79 Frankel (2008), supra note 41. 72

The protection of cultural heritage by trademarks  69 term of protection under copyright and patent and does bring with it certain advantages, provided that there are sufficient resources in the communities to properly manage the trademark. 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. Certification and collective marks can be a particularly suitable path to do so.80 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,81 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).82 When applying for a certification mark, it is necessary to 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, which may call for adequate rules within the source community to define its boundaries.83 There have been successful and less successful indigenous certification marks. In the former category, New Zealand’s Māori Arts Board, Te Waka Toi, manages the Toi Iho Māori Made Mark,84 which protects against the misuse of Māori concepts, styles and imagery (although 80 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 56, at 161. 81 Article 83 EUTMR. 82 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. 83 See e.g. Sharoni, supra note 35, at 419. 84 The Toi Iho Māori Made Mark was designed and created by Māori artists and has two companion marks, namely, the Mainly Māori Mark and the Māori Co-production Mark. The first one is for groups of artists, most of Māori descent, who work together to produce, present or perform works across art forms, whereas the co-production mark is for Māori artists, who create works with persons not of Māori descent to produce, present or perform works across art forms.

70  Research handbook on intellectual property and cultural heritage “copycat” products remain possible), denotes authenticity and quality, and ensures that the commercial benefits go back to the Māori. Top-down, government-led approaches without a proper representation of the indigenous communities, such as the Australian scheme, have been in contrast less successful.85 Unlike the certification mark, the collective mark 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. In this context, the rules applicable to different source communities may be critical, as only certain persons may designate items of cultural significance and this right is unlikely to be delegable to a non-qualified person.86 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 usually be shared among the members of the association and is therefore overall lower in comparison with conventional trademarks.87 There are various examples of successful collective marks of indigenous communities – 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 and 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.88 Having a registered trademark also offers a more robust protection against infringement and challenges for cancellation – so, for instance, in the case of Navajo Nation v. Urban Outfitters, the Navajo Nation could use the registered status of the name “Navajo” to argue that it owns a valid, incontestable trademark and as such could not be cancelled for being “merely descriptive”.89 Registration can also be used to stop the importation of infringing articles. It can be summed up that:

85 Graber and Lai have identified the reasons for the 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. 86 Frankel (2008), supra note 41, referring to Daniel Gervais, “Spiritual but not Intellectual? The Protection of Sacred Intangible Traditional Knowledge”, Cardozo Journal of International and Comparative Law 11 (2003), 467–495. 87 Zografos Johnsson, supra note 56, at 160. 88 See 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. 89 935 F. Supp. 2d 1147 (D.N.M. 2013), at 1153. In Navajo Nation v. Urban Outfitters, the Navajo Nation, which holds 86 registered trademarks in names, words, and symbols of the Navajo people, sued the clothing retailer Urban Outfitters for trademark infringement due to consumer confusion, dilution by blurring and dilution by tarnishment. The case was settled in 2016.

The protection of cultural heritage by trademarks  71 [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 maximize consumer certainty as to the authenticity of the goods marketed under the mark.90

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, certification 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.91

4.

CONCLUDING REMARKS

The relationship between cultural heritage and intellectual property evolves in a profoundly complex setting – with many actors involved, often with very different or even divergent interests, and within a fragmented legal regime, which fails to connect existing institutions of international and national economic law and indigenous peoples’ rights.92 This chapter revealed only a small part of this complexity and the tensions on both sides in the context of trademark law. It showed that although trademarks offer viable defensive and offensive mechanisms for source communities to protect elements of their culture, this match is not perfect. As Frankel points out, “the utility of trademark law as a tool for indigenous peoples to use to protect their signs is largely a matter of coincidence”,93 as it fails to protect the knowledge and values underlying a certain sign or symbol.94 Expressions of cultural heritage may “fail” the legal tests in trademark 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. Defensive mechanisms are far from perfect either, as they provide only a rather limited toolkit to protect cultural heritage and deter cultural appropriation – “[o]f the hundreds of registered trademarks that use the name ‘Cherokee’, ‘Navajo’, and ‘Sioux’, some may be owned by Native Americans, but many are not”.95 Given the imperfections of the system, there has also been a broader underlying debate about whether the use of IP law in general, and trademarks in particular, should be employed to protect cultural heritage, and whether this mercantilist, property-oriented regime would help or rather harm source communities and the sustainability of their cultural heritage. While Zografos Johnsson, supra note 56, at 161–162. See e.g. Graber and Lai, supra note 85. 92 Sergio Puig, “International Indigenous Economic Law”, UC Davis Law Review 57 (2019), 1243–1306; John Borrows and Risa Schwartz (eds), Indigenous Peoples and International Trade: Building Equitable and Inclusive International Trade and Investment Agreements (Cambridge: Cambridge University Press, 2020); Sergio Puig, At the Margins of Globalization: Indigenous Peoples and International Economic Law (Cambridge: Cambridge University Press, 2021). 93 Frankel (2008), supra note 41. 94 Ibid. 95 Sharoni, supra note 35, at 417. 90 91

72  Research handbook on intellectual property and cultural heritage the opinions diverge,96 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 control their cultural heritage, as the examples from New Zealand illustrated.97 Such an adaptation, which is less “top-down” and more inclusive, is more likely to provide for workable pathways 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.98 Admittedly, there is a fine line between the commercialization through branding of cultural heritage and the real support of cultural identities of indigenous and other disempowered groups,99 but trademark law can be well adapted to reflect better the concerns of source communities and empower them to “claim themselves as subjects of property – that is, as autonomous individuals with constitutive personhood interests in property – rather than as mere objects, or someone else’s property”.100

96 For opinions against the use of IP protection, see e.g. 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; also Hughes, supra note 57; for opinions for IP protection, see e.g. Sharoni, supra note 35; Sunder (2006), supra note 4; Anupam Chander and Madhavi Sunder, “The Romance of the Public Domain”, California Law Review 92 (2004), 1331–1373. 97 See also 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 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 36. 98 Frankel (2015), 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 University Press, 2007), 385–416. 99 Susy Frankel, “Branding Indigenous Peoples’ Traditional Knowledge”, in Andrew T. Kenyon, Ng-Loy Wee Loon and Megan Richardson (eds), The Law of Reputation and Brands in the Asia Pacific (Cambridge: Cambridge University Press, 2012), 253–267. 100 Chander and Sunder, supra note 96, at 1335, referring also to Margaret Jane Radin and Madhavi Sunder, “Foreword: The Subject and Object of Commodification”, in Martha M. Ertman and Joan C. Williams (eds), Rethinking Commodification (New York: New York University Press, 2005), 8–32.

4. Cultural heritage and patent law: Alternatives for the protection of traditional knowledge and genetic resources Pedro Henrique D. Batista

1. INTRODUCTION Broadly interpreted, cultural heritage comprises tangible assets (such as paintings, sculptures and archaeological objects), intangible assets (such as oral traditions, performing arts, knowledge) and also elements of the natural environment that promote the identification of the community with the natural landscape.1 The protection and preservation of some of these assets and elements may have relevant intersections with patent law. From the perspective of intangible attributes of a group or society, the traditional knowledge (TK) of indigenous and local communities,2 especially those related to genetic resources (GR), deserves special consideration. Its technical character and its special protection at the international level through the Convention on Biological Diversity (CBD) and the Nagoya Protocol led to its approximation with patent law. Not surprisingly, discussions about the use of the patent law to ensure an adequate protection of the communities’ rights have occurred in different contexts in recent years. First, in the context of so-called positive protection, the possibility for communities to obtain TK protection by means of patent law is addressed. Second, defensive protection seeks to avoid the misappropriation of this knowledge by impeding third parties from patenting inventions based on it that do not fulfill the substantive requirements for protection. Third, the adoption of a disclosure requirement in the patent application regarding the utilization of TK in an invention is expected to contribute to an effective protection of the rights guaranteed by the CBD and the Nagoya Protocol through such instruments as prior

1 United Nations Educational, Scientific and Cultural Organization, ‘What is meant by “cultural heritage”?’ . See also Elena Franchi, ‘What is Cultural Heritage?’ (2015) Khan Academy . All webpages referred to in this chapter were lastly accessed on 20 July 2021. 2 With due recognition of the important discussion on the classification of indigenous and local populations as peoples for the purpose of attributing rights in international law, this chapter, due to its relationship with TK associated with GR, uses the term communities, as envisaged by the Convention on Biological Diversity and in the Nagoya Protocol. On this topic, see: Elisa Morgera, Elsa Tsioumani and Matthias Buck, Unraveling the Nagoya Protocol: A Commentary on the Nagoya Protocol on Access and Benefit-Sharing to the Convention on Biological Diversity (Brill 2014) 32.

73

74  Research handbook on intellectual property and cultural heritage informed consent (PIC)3 and mutually agreed terms (MAT) between users and rightsholders4 as a condition to access as well as the sharing of benefits arising from the use of TK. Further, from the perspective of the natural environment, massive access to GR, especially those of great cultural value to humanity and specific communities, can harm the environment and cause significant damage to cultural heritage. As a way to promote an access that is not only sustainable, but also adequate to the cultural reality of the interested parties, the CBD and the Nagoya Protocol also require PIC for access to GR – which, depending on the circumstances, must be granted by indigenous and traditional communities – and MAT among users and right holders. Thus, the implementation of the abovementioned disclosure requirement in patent applications also applies to cases of access and use of GR. Although not new, these topics still have great political and academic relevance for both developed and developing countries. This is not only because countries differ on the scope of protection of GR and TK provided by the international law, but also because the economic relevance of this knowledge and these resources is enhanced by the increasing use of GR in the field of biotechnology. Against this background, this chapter offers an overview of these three main contexts of the relationship between cultural heritage and patent law and critically analyzes them in view of the objective of the protection of GR and TK as elements of cultural heritage. Through this, it aims to indicate effective and balanced ways to – at least partially – protect cultural heritage through mechanisms related to the patent law. For these purposes, Section 2 deals with the positive protection of TK through patents. In turn, Section 3 analyzes the defensive function of TK as a means of preventing the patenting of this knowledge by third parties. Finally, Section 4 addresses the disclosure requirement in patent applications and possible sanctions arising from its non-compliance as a way to promote a more effective protection of TK and GR. For different reasons, the latter section deserves special attention. First, due to its social and economic relevance, the disclosure requirement has been more intensely discussed at the international level in recent years. Second, this protection mechanism has a greater complexity due to the different possibilities of its legal design. Third, the compatibility of the disclosure requirement with international patent law is still a very controversial issue, whose main contours will be duly explained. In addition to the three different contexts mentioned above, there are still other potential points of convergence between patent law and cultural heritage that go beyond the scope of this chapter. ​​ On the one hand, the possibility of patenting inventions in the area of biotechnology, including elements of nature and microorganisms, and the consequent chance of obtaining commercial benefits, may encourage an excessive exploitation of GR, causing environmental imbalance, threatening the natural heritage and increasing the probability of misappropriation of TK by third parties.5 Especially in the agricultural sector, it further leads to an increased market concentration that may affect not only economic activity and the livelihood of small

Art. 15 (5) CBD; Art. 6 (1) and (2) and Art. 7 of the Nagoya Protocol. Art. 15 (4) CBD; Art. 5 (1), (2) and (5) and Art. 7 of the Nagoya Protocol. 5 Anil K. Gupta, WIPO-UNEP Study on the Role of Intellectual Property Rights in the Sharing of Benefits Arising from the Use of Biological Resources and Associated Traditional Knowledge (WIPO-UNEP 2004) 29; Aykut Çoban, ‘Caught between State-Sovereign Rights and Property Rights: Regulating Biodiversity’ (2004) 11 Review of International Political Economy (4) 743; Suman Sahai, ‘TRIPS and Biodiversity: A Gender Perspective’ (2004) 12 Gender and Development (2) 62-63. 3 4

Cultural heritage and patent law  75 plant producers (including indigenous and local communities), but also reduce biodiversity, food security and regional food sovereignty.6 Notwithstanding the question of whether the mere isolation of natural elements, such as compounds or genes, fulfills the patentability requirements,7 this is why the availability of patents without discrimination as to the field of technology regulated in Art. 27(1) TRIPS has been partially criticized. At least with regard to protection against the overexploitation of GR, the option of implementing a disclosure requirement in the patent applications in order to achieve the objectives of the CBD and the Nagoya Protocol will be duly addressed in Section 4 below. Despite its great relevance, the remaining topics are too broad to be analyzed in the short overview offered by this chapter. In addition, it addresses issues that, despite their importance, go beyond the mere protection of cultural heritage. On the other hand, some authors emphasize that the exclusive rights arising from patent protection can damage the science and cultural evolution due to the restriction of access to new technologies.8 In this case, however, and beyond the question of whether this exclusivity limited to a period of time is justified in view of the incentive to innovation, the main question posed by those authors focuses on future cultural evolution, and not necessarily on cultural heritage as the expression of already developed cultural aspects. For this reason, this discussion will not be considered for the purposes of this chapter.

2.

PATENT PROTECTION OF TRADITIONAL KNOWLEDGE

One of the alternatives considered for a better protection of TK is its protection through patents. Through exclusivity rights, indigenous and traditional communities could prevent third parties from using the knowledge without their prior authorization. Thus, they could completely restrict access to it or allow its use only under the certain conditions.9 The content of the respective licenses may vary according to the interests of the community, and may address confidentiality, remuneration, transfer of technology, form of use, restrictions regard6 See, for instance, Unknown, ‘What is the problem?’ No Patent on Seeds ; Yiching Song, Jingsong Li and Ronnie Vernooy, ‘China – Designing policies and laws to ensure fair access and benefit sharing of genetic resources and participatory plant breeding products’ in Manuel Ruiz and Ronnie Vernooy (eds), The Custodians of Biodiversity – Sharing Access to and Benefit of Genetic Resources, (Earthscan IDRC New York 2012) 95; Hugo De Groote, ‘Crop biotechnology in developing countries’ in Arie Altman and Paul Michael Hasegawa (eds), Plant Biotechnology and Agriculture – Prospects for the 21st Century (Elsevier London 2012) 574; Ruth Tippe, Johanna Eckhardt and Christoph Then, Stop patents on our food plants! – Research into patent applications conducted in 2020 shows how the industry is escaping prohibitions in patent law (No Patent on Seeds! 2021) 8 ff. 7 On this topic, see Rochelle C Dreyfuss, Jane Nielsen and Dianne Nicol, ‘Patenting nature—a comparative perspective’ (2018) 5 Journal of Law and the Biosciences (3) 550 ff.; Alice Yuen-Ting Wong and Albert Wai-Kit Chan, ‘Myriad and its implications for patent protection of isolated natural products in the United States’ (2014) Chin Med (9) 17. 8 Amanda Budde-Sung, ‘The Invisible Meets the Intangible: Culture’s Impact on Intellectual Property Protection’ (2013) 17 J Bus Ethics (1) 345 ff.; Bhaven Sampat and Heidi L. Williams, ‘How Do Patents Affect Follow-on Innovation? Evidence from the Human Genome’ (2019) 109 Econ Rev. (1) 203 ff.; Unknown, (n 6). 9 Jay Erstling, ‘Using Patents to Protect Traditional Knowledge’ (2009) 295 Texas Wesleyan Law Review (15) 287 f.

76  Research handbook on intellectual property and cultural heritage ing enforcement, etc. However, for the positive protection to succeed, the TK would have to be considered as a patentable invention and serve the general interests of the communities. 2.1

International Law

In international law, there are no specific legal provisions that refer to the patenting of TK. Thus, the general patent law regulation concerning inventions in any area of technology apply to them. Article 27(1) TRIPS states that “patents shall be available for any inventions (…), provided that they are new, involve an inventive step and are capable of industrial application.” Further, the conditions regarding the sufficient disclosure of the invention to enable a person skilled in the art to carry it out established by Art. 29 (1) TRIPS have also to be fulfilled in case of a patent application related to TK. In the case of international patent applications within the scope of the Patent Cooperation Treaty (PCT), the specific formal requirements provided for in Arts. 4 ff. regarding request, description, claims, drawings and abstract must also be observed. 2.2

Limits of Effectiveness

Specific characteristics of the TK can make it difficult to fulfill the formal and material requirements for its patenting required by international law and the national law of certain countries. Moreover, some limitations of patent protection could be contrary to the interests of indigenous and traditional communities. First, despite the lack of definition at international level and the consequent flexibility for national regulation, the novelty of an invention within the scope of Art. 27 TRIPS is usually associated with the fact that it is not encompassed by the prior art.10 In turn, the prior art usually comprises knowledge and information that are publicly accessible at the legally relevant point in time of its consideration, such as patent application or specific priority dates determined by patent law.11 Therefore, if TK is publicly accessible – for example, through publications, because it belongs to public knowledge or even because it is accessible to third parties in the communities that hold it – it will not be considered to be novel.12 Thus, only TK kept secret by the community or shared with a restricted number of people under the duty of confidentiality 10 United Nations Conference on Trade and Development, ‘Dispute Settlement’ (2003) 24. 11 Brice C Lynch, ‘International Patent Harmonization: Creating a Binding Prior Art Search within the Patent Cooperation Treaty Note’ (2012) 44 George Washington International Law Review 403, 419; Virgil E. Woodcock, ‘What Is Prior Art’ (1958) 3 Vll. L. Rev. 255, 268; Sangeeta Udgaonkar, ‘The Recording of Traditional Knowledge: Will It Prevent “Bio-Piracy”?’ (2002) 82 Current Science 414; World Intellectual Property Organization, ‘The World Intellectual Property Organization Traditional Knowledge Documentation Toolkit’ (2012); Justin Malbon, Charles Lawson and Mark Davison, The WTO Agreement on Trade-Related Aspects of Intellectual Property Rights: A Commentary (Edward Elgar 2014) 419 Recital 27.24; Philip M Webber, ‘Priority Patent Applications’ (2005) 4 Nature Reviews Drug Discovery 877. 12 María Julia Ochoa Jiménez, ‘Conocimientos tradicionales – Sobre su protecciónjurídica y la capacitación de sus poseedores – Referencia al caso de Venezuela’ (2010) 43 Boletín Mexicano de Derecho Comparado (127) 6; Suchi Rai, ‘Traditional Knowledge and Scope for Patent Protection Intellectual Property - India’ (2018) mondaq .

Cultural heritage and patent law  77 could be patentable. Further, the requirement of an inventive step is usually fulfilled when the invention is not obvious to a person skilled in the art. In this case, the prior art is an important aspect to be considered in determining obviousness. Thus, if the TK – even if not publicly accessible – does not exceed the threshold of non-obviousness in view of existing and publicly available knowledge (traditional or not), it will not be patentable according to the usual rules of the right to patents. Second, from a formal point of view, the entitlement of indigenous and local communities or their representatives to own a patent would have to be recognized by the national law of the relevant countries. This can be particularly challenging in cases where communities are not recognized as legal persons, but only as specific groups subject to public policy.13 In addition, some national laws require that the inventor’s name be disclosed in the patent application.14 Considering that TK is usually related to long-standing knowledge passed down through generations within the community, it is unlikely that a specific inventor can be properly identified. Third, the patent applications, as a rule, must be designed in a technical way. In the case of medicines, for example, technical information about properties, dosage, application and efficacy has to be provided to enable the proper reproduction of the technical effect patented by third parties when the patent expires or for the purposes of the exceptions and limitations to the exclusivity rights. Fulfilling these requirements can be challenging due to the fact that TK results from a gradual transmission – often oral – and historical evolution in which specific technical information is not precisely disclosed.15 Fourth, the patenting of the invention, the maintenance of the patent – which normally depends on the payment of annual fees – and its enforcement against third parties have attendant costs. Communities or their representatives may have difficulties to afford such costs, especially if they do not make commercial use of the invention.16 Fifth, it is worth noting that the purely defensive use of the patent – aimed only at preventing third parties from using the technology and paying compensation in case of unauthorized use, but without the technology being properly made available on the market – may justify the granting of a compulsory license17 or, when considered abusive, even prevent the enforcement of exclusivity rights against third parties.18 Thus, in cases where the community holding

13 On this topic, see Richard A. Falk and others, ‘Are Indigenous Populations Entitled to International Juridical Personality? Proceedings of the Annual Meeting’ (1985) 79 American Society of International Law 190 ff. 14 Government of Canada, ‘Introduction to Intellectual Property Rights and the Protection of Indigenous Knowledge and Cultural Expressions in Canada’ (2020) ; see also European Patent Office, ‘European Patent Guide’ Guidelines No. 4.1.014 to 4.1.016 – Designation of inventor; US Patent and Trademark Office, ‘Manual of Patent Examining Procedure’ Chapter 2100 – Section 2157. 15 Stephanie Bucher, Der Schutz von genetischen Ressourcen und indigenen Wissen in Lateinamerika – Eine Untersuchung am Beispiel der Andengemeinschaften, Brasiliens und Costa Ricas (Nomos Munich 2007) 81 f. 16 Adam Andrzejewski, ‘Traditional Knowledge and Patent Protection: Conflicting Views on International Patent Standards’ (2010) 13 Potchefstroom Electronic Law Journal (4); Government of Canada (n 14). 17 Art. 31(f) TRIPS. 18 Krista Rantasaari, ‘Abuse of Patent Enforcement in Europe – How Can Start-Ups and Growth Companies Fight Back?’ (2020) 11 JIPITEC (3) .

78  Research handbook on intellectual property and cultural heritage patented TK is not interested in sharing it with third parties, but only in guaranteeing the exclusivity of its use for the group of people belonging to it, measures can be taken to prevent the exercise of its exclusivity rights. Sixth, patents have a fixed term of protection. According to Art. 33 TRIPS, “the term of protection available shall not end before the expiration of a period of twenty years counted from the filing date”. Although a longer period of protection is allowed, countries usually adopt the term of 20 years in their legal systems. Even countries that opt for ​​ a longer period of protection or allow the temporal extension of the patent in specific situations, such as in the cases of pharmaceutical patents whose commercialization is delayed due to the obligation to obtain a marketing authorization,19 the period of protection is never indeterminate. As a result, after the expiry of this legal term of protection, the TK will no longer be subject to protection, and may be used by third parties without any authorization.20 This temporal limitation, justified by the specific purpose of patent law for the promotion of innovation through the correction of market failures that threaten investments,21 does not necessarily coincide with the interest of indigenous and traditional communities in maintaining a certain discretion regarding the knowledge originated and evolved within it for several generations. This is why – for instance – the abovementioned rights of communities to PIC and MAT in case of accessing and using TK within the scope of the Nagoya Protocol does not have any temporal limitation. Therefore, patent law, as conceived in international law and designed to the incentive of inventive activities in general, is not suitable for the positive protection of TK as a way to meet the interests of indigenous and traditional communities. It should be noted cum grano salis that these limits of effectiveness apply also when the patent application is supported by a legal fiction of novelty after an abusive behavior by a third party. Most countries have mechanisms that prevent an undue patent application made by a third party or other forms of improper insertion of information in the prior art from harming the interests of the inventor – or a person authorized by them – in obtaining a patent. To this end, these countries provide in their national law that a disclosure carried out through an evident abuse in relation to the patent applicant or their legal predecessor or after a breach of trust or contract will not to be taken into account in determining novelty if it occurred within some months (usually 6 or 12) before the filing date.22 Thus, even if a third party has improperly filed a patent application or inserted the relevant information in the prior art, the legitimate holder of the information can obtain the patent if the respective application is filed within the period of time established by law. An example of this is Art. 55 EPC, which provides that a disclosure shall not be considered for the purposes of novelty “if it occurred no earlier than six months preceding the filing of the European patent application and if it was due to (…) an evident abuse in relation to the 19 This is the case, for instance, in the European Union. See Regulation (EC) No 469/2009 concerning the supplementary protection certificate for medicinal products. See also Omkar Joshi, Archna Roy and Manthan Janodia, ‘Supplementary Protection Certificate Provisions for Pharmaceutical and Biotechnological Products in Europe: An Era after Medeva and Georgetown Decisions’ (2014) 19 JIPR 378 ff. 20 Government of Canada (n 14); Bucher (n 15) 81 f. 21 Corinne Langinier and GianCarlo Moschini, ‘The Economics of Patents: An Overview’ (2002) CARD Working Papers (335) 2 ff. 22 See WIPO’s comparative table on the grace period in national and regional laws (2020) .

Cultural heritage and patent law  79 applicant or his legal predecessor.” An evident abuse requires that the person disclosing the invention had “either actual intent to cause harm or actual or constructive knowledge that harm would or could ensue from this disclosure.”23 This rule is of great importance for companies whose trade secrets were improperly disclosed and who are interested in becoming the respective patent holders, but it can also conceivably be applied to indigenous and traditional communities that hold TK. If TK duly fulfills the patentability requirements, its patenting by third parties may be a priori prevented in case of evidence of an improper disclosing behavior. This notwithstanding, the patent applications and granting as well as their effects may meet the relevant limitations indicated above. 2.3

Sui Generis Protection of TK

Certain limitations of the patent law for an effective positive protection of TK could be circumvented by national norms that assign a special patent regime for this kind of information. For instance, the lawmaker could expressly provide (i) the entitlement of indigenous and local communities to hold a patent, (ii) the non-requirement of information on the name of the inventor, (iii) the reduction or exemption of costs for applying for or maintaining a patent, (iv) the restriction of measures that weaken the exclusive rights of communities if they opt not to allow the use of TK by third parties, and (v) a considerable extension or even the indeterminacy of the term of patent protection. In addition, communities could receive support from the state or private entities to describe TK in the technical way required by patent law. Regardless of the question of whether these alterations restricted to inventions from indigenous and local communities violate Art. 27(1) TRIPS – which prohibits the discrimination of patent rights based on the place of invention – they would deeply intervene in the patent system and in its fundamental aim to promote and disseminate innovation. Further, such amendments would not be able to solve some problems, such as the potential failure to fulfill the requirements of novelty and inventive activity. Therefore, although such legal modifications are possible and could be even compatible with international law, they have not usually been adopted by countries. Conversely, sui generis protection mechanisms that ensure exclusive rights of a collective nature to communities over their respective TK are more frequently implemented. For instance, Art. 124 of the Venezuelan Constitution assigns collective intellectual property rights to communities over their TK.24 Although the scope of this protection – in particular its differentiation of rights usually arising from the CBD and the Nagoya Protocol – is not well defined by infra-constitutional legislation, it prevents third parties from obtaining industrial property rights based on this knowledge.25

23 See European Patent Office, ‘Guidelines for Examination’ Chapter IV – Non-prejudicial disclosures – 3. Evident abuse . See also European Patent Office, Boards of Appeal (T-0585/92), date of judgment 9 February 1995 . 24 See Constitution of the Bolivarian Republic of Venezuela from 1999 . 25 Luis Andrés Guillén, ‘Estudio de la Legislación Venezolana Respecto a La Protección de los Conocimientos Tradicionales Asociados a Los Recursos Genéticos’ (2010) Universidad Bolivariana de Venezuela 26 f.

80  Research handbook on intellectual property and cultural heritage An even more interesting example is provided by Portuguese legislation. According to Decree-Law No. 118/2002, TK may be protected against its unauthorized reproduction and/or commercial or industrial use. To this end, it must be registered in the Plant Genetic Resources Registry (Registo de Recursos Genéticos Vegetais) and be described in such a way that third parties can use or reproduce it and obtain identical results to those obtained by the knowledge holder.26 The registered TK can be kept confidential at the request of its holders.27 Further, the registration of TK which has not been used in industrial activities at the time of application or is not the subject of public knowledge outside the local population or community provides the respective holders with both the right to prevent its unauthorized reproduction, imitation and use for commercial purposes and the right to dispose of this knowledge, provided that it is not already the subject matter of a granted industrial property good.28 The term of TK protection is 50 years from the date of the application for the registration, and can be extended once for 50 additional years.29 As can be observed, the Portuguese sui generis protection mechanism has significant similarities with most patent law systems with regard to the need for registration and description of knowledge, but considers specific interests of its holders such as confidentiality, a longer term of protection and the unnecessity of evidence of novelty and inventive step.30 As it is detached from the patent system, there is no ground for concerns regarding its compatibility with international patent law. Finally, it should be regarded that most sui generis TK protection mechanisms around the world derive from the CBD and the Nagoya Protocol, which – as mentioned above – condition the access and use of TK to the PIC of the communities and to the MAT between communities and users. In this case, the scope of protection may considerably differ from the one of the patent law, since the protection usually neither depends on registration nor has a temporal limitation. In these cases, any eventual intersection between TK and patent law will occur in the context of the disclosure requirement of information related to access to knowledge in the patent application. This topic will be duly considered in Section 4 below.

3.

DEFENSIVE USE OF TK AGAINST UNDUE PATENTING31

TK can also be used to prevent the patenting of inventions that do not meet the minimum patentability requirements. In this case, there arises the concept of the defensive function of TK.32 As in the case of indigenous and traditional communities,33 the patenting of TK by third Art. 3 (2) of the Decree-Law no. 118/2002. Art. 3 (3) of the Decree-Law no. 118/2002. 28 Art. 3 (4) of the Decree-Law no. 118/2002. 29 Art. 3 (6) of the Decree-Law no. 118/2002. 30 For details of the Portuguese sui generis system for TK protection, see World Intellectual Property Organization, ‘The Protection of Traditional Knowledge: Revised Outline of Policy Options and Legal Mechanisms (WIPO/GRTKF/IC/9/INF/5)’ (2006) 15 ff. 31 Since Chapter 7 of this book addresses this aspect of the relationship between TK and patent law in detail, the analysis of the defensive function of TK in this chapter is made in a more brief and objective manner. 32 World Intellectual Property Organization, ‘Defensive Protection Measures Relating to Intellectual Property, Genetic Resources and Traditional Knowledge: An Update (WIPO/GRTKF/IC/6/8)’ (2003) 1 ff. 33 See Section 2.2 above. 26 27

Cultural heritage and patent law  81 parties – which is often referred to as a form of misappropriation – can be prevented by the fact that it is included in the prior art and, therefore, does not meet the requirements of novelty and inventive step. As a rule, this impediment occurs regardless of the way in which the third party obtained this knowledge, such as direct access in the community, access to publications or even independent development of knowledge. The defensive function of TK in the context of patent law gained special relevance in the 1990s. In 1995, a patent was granted in the USA for a wound-healing process through the application of an effective amount of turmeric powder.34 However, the properties of turmeric for the purpose of treating infections were already known in the field of traditional medicine in South Asian countries.35 This fact led to great criticisms from Indian communities that hold this traditional knowledge. After a request from the Council of Scientific & Industrial Research of India, the USPTO re-examined the patent and rejected the claims based on the subject matter’s lack of novelty and inventive step.36 Similarly, in 1994, the European Patent Office (EPO) granted a patent related to a process for combating fungi in plants through the use of fungicides that had in their composition a percentage of oil extracted from neem tree leaves.37 However, the use of neem oil as a fungicide was already part of TK widespread in the Indian community at this time. After an opposition procedure brought by the Green Group of the European Parliament, the nullity of the patent was declared by the EPO due to the absence of novelty and inventive step.38 After cases like these, communities and their countries of origin became aware of the importance of promoting the inclusion of the TK in the prior art and the diffusion of this information in order to prevent misappropriation. 3.1

Public Accessibility of the TK

For its defensive function to be successful, TK must be recognized by the patent office as an element of the prior art. For this, it must be publicly accessible at the time of the patent application or at the reference date for the priority. This accessibility can occur in different forms, such as the possibility of obtaining the TK directly from indigenous and local communities, its public knowledge or use, or written and accessible publications that describe its content. Despite this variety of possibilities, promoting TK accessibility through written publications is recommended for two different reasons. First, it has to be considered that patent examiners – particularly the foreign ones – are not aware of all existing TK elements, nor of the respective forms of access. As a rule, their prior art searches are based on written documents available in different databases used by the patent office.39 Thus, the publication of the TK description – preferably in a language that is also accessible to examiners of foreign patent offices, such as English – can be important for its due consideration as prior art in the context of patent prosecution. Thereby, expensive and 34 US Patent and Trademark Office, Patent No. 5,401,504. See also Christina Federle, Biopiraterie und Patentrecht (Nomos 2005) 63. 35 Federle (n 34) 96. 36 The USPTO documents related to ‘Use of Turmeric in Wound Healing’ application are available at https://​patents​.google​.com/​patent/​US5401504A/​en. 37 European Patent Office, Patent No. EP 0436257 B1. 38 For details of the patent application, see https://​register​.epo​.org/​application​?lng​=​en​&​number​=​ EP90250319. See also Federle (n 34) 65. 39 Horst-Peter Götting, ‘Biodiversität Und Patentrecht’ (2004) GRUR Int. 735.

82  Research handbook on intellectual property and cultural heritage time-consuming opposition procedures or nullity actions by the interested parties in case of undue patent granting can be avoided. The abovementioned process of application of neem tree oil as a fungicide is an example of a patent that was initially granted because TK was not identified by the examiners during the patent prosecution. Second, certain countries or international institutions can rule that only written documents may be considered for the purposes of determining the prior art. According to Rule 33.1 of the Regulations under the Patent Cooperation Treaty (PCT), the relevant prior art for international search consists of “everything which has been made available to the public anywhere in the world by means of written disclosure.”40 Although this does not prevent contracting states from applying their own criteria for determining prior art during the national phase of the PCT,41 the prior art of the international phase – which is an important support for the subsequent national phase – is restricted to information and knowledge published in written form. Similarly, the former wording of the US Patent Act established that the prior art comprises information and knowledge “known and used by others in this country [i.e., the USA], or [that] was patented or described in a printed publication in this or a foreign country.” Thus, information merely known and used in other countries, but which was not properly published or patented, was not considered the prior art for the purposes of the US patent law. In the abovementioned turmeric case, even if the healing properties of turmeric powder were already subject to wide knowledge and public use in India, the rejection of the patent claims by the USPTO was based on only a few documents published in Sanskrit, Urdu and Hindi that described the TK and thus proved the absence of novelty and inventive step of the invention. Although – after the amendment of the US Patent Act in 2013 – the publication or patenting of knowledge and information in foreign countries is no longer a requirement for its consideration as an element of the prior art,42 there is no impediment for the USA or other countries to adopt similar requirements in the future. 3.2

TK Databases

The defensive function of TK can also be enhanced by the creation of databases containing its description and that are made available to the public or at least to the patent offices of interest. Through them, it is possible to provide more information to national and foreign patent offices about existing TKs and facilitate their correct assessment of the novelty and the inventive step of the inventions. The creation of these databases was promoted in different countries in the late 1990s and early 2000s, after some cases of patenting of inventions related to TK, such as the abovementioned turmeric and neem cases.

40 See Regulations under the Patent Cooperation Treaty. Available at https://​www​.wipo​.int/​pct/​en/​ texts/​rules/​rtoc1​.html. 41 Art. 27(5) PCT. 42 Robert P Merges, ‘Priority and Novelty Under the AIA’ (2012) 27 Berkeley Technology Law Journal 1023, 1020; Dylan O Adams, ‘Patents Demystified: An Insider’s Guide to Protecting Ideas and Inventions’ (American Bar Association 2015) 67; Rebecca Goldman Rudich, ‘Novelty and Grace under the AIA’ in John M White (ed), Patent Eligibility, Prior Art and Obviousness 2017: Current Trends in Sections 101, 102 and 103 (Practising Law Institute 2017) 41.

Cultural heritage and patent law  83 These TK databases can be open to the public or restricted. An example of open databases is the Korean Journal of Traditional Knowledge,43 whose online portal contains documented information on traditional and local food, literature techniques and other intangible cultural heritage elements. As a rule, the information in this database is described in a technical way and translated into English to a large extent, which is also important for its consideration as a prior art by the examiner. Among the restricted databases (i.e., those that are not available to the general public), the promotion of the TK defensive function requires them to be shared at least with the patent offices considered to be relevant. The most famous example is the Indian Traditional Knowledge Digital Library (TKDL), which contains an extensive and systematized description of existing TKs in different areas of knowledge in different languages, including English.44 Designed to allow prompt and effective use by examiners, it is licensed to patent offices in nine different countries and organizations, namely Australia, Canada, Chile, the EPO, Germany, India, Japan, the UK and the USA. As a restricted database is not publicly accessible, it is important to note that the mere inclusion of a TK in it is not sufficient to qualify the knowledge as an element of prior art. In order to effectively implement the defensive function, the database has to expressly refer to elements that prove the public accessibility of the TK included therein, such as publications. 3.3

Limits of Effectiveness

The exercise of the defensive function of the TK is essentially aimed at the proper functioning of patent law through due consideration of the information already contained in prior art. Thus, an important limitation of this function is that it does not prevent the unauthorized use of TK, e.g., without the observation of PIC, MAT or specific requirements determined by the national law. It is true that the impossibility of obtaining a patent may reduce the commercial interest of third parties in using TK. However, if the costs of accessing and using information are lower than the prospect of commercial gain, such as through the commercialization of a product or service based on TK, an unauthorized exploitation that is completely disconnected from patent law may occur. Furthermore, the existence of a previous TK, as a rule, does not prevent the patenting of inventions based on it, as long as they are complemented by or associated with other information in a sufficient way to fulfill the requirements of novelty and inventive activity.45 This can be particularly sensitive in cases where the publicly accessible TK is not technically described or known as a solution to a particular technical problem. A third-party patent application referring to an invention described in a sufficiently technical manner, including references to the 43 KTKP: Korean Traditional Knowledge Portal. Accessible at . See also Jin-Seop Shin, Yu-Seon Lee and Myung-Sun Lee, ‘Protection and Utilization of Traditional Knowledge Resources through Korean Traditional Knowledge Portal (KTKP)’ (2010) 10 The Journal of the Korea Contents Association 422; R Lakshmi Poorna, M Mymoon and A Hariharan, ‘Preservation and Protection of Traditional Knowledge – Diverse Documentation Initiatives across the Globe’ (2014) 107 Current Science 1242–1243. 44 For details, see CSIR, ‘Traditional Knowledge Digital Library’ Council of Scientific & Industrial Research |CSIR| GoI . 45 John Reid, ‘Biopiracy: The Struggle for Traditional Knowledge Rights’ (2009) 34 American Indian Law Review 416.

84  Research handbook on intellectual property and cultural heritage properties of the resources used, application, specific effects, contraindications, dosage, etc., may meet the patentability requirements even if it is based on a previous TK that abstractly encompasses the relationship between a certain biological resource and the achievement of a certain effect (e.g., cure of a disease, protection of plants against pests). The technical description of TKs in publications can mitigate this problem, although it is not always enough to avoid the patenting of follow-on innovation. TK databases can in fact contribute to a faster and more effective identification of TK for the purposes of patent examination and to avoid costly opposition proceedings and nullity actions. However, the systematized documentation of the whole relevant TK existing in a country on a technical platform that is suitable for use by foreign patent offices can not only be challenging and require a long time for implementation, but may also be accompanied by relevant costs. From an economic perspective, a country interested in implementing a TK-related database in its communities should consider whether the costs of creating and maintaining the TK databases are lower than those of controlling patents and possible litigation costs in case of litigation involving the patenting of TK. At least with regard to the TKDL, some authors argue that its high costs are not justified by its success in preventing the patenting of a few dozen patents around the world since its creation.46

4.

THE DISCLOSURE REQUIREMENT IN PATENT APPLICATIONS

The relationship between cultural heritage and patent law is also discussed in the context of the introduction of a duty to disclose certain information relating to GR and TK in patent applications. This aims to protect the rights to these resources and knowledge guaranteed by the international law. As mentioned above, the CBD and the Nagoya Protocol provide member states with the right to express the PIC and to mutually agree the terms of access to GR within their jurisdictions.47 Likewise, these treaties guarantee the same rights to indigenous and local communities with respect to GR present in their territories and to TK related to GR in general. Since the biotechnological use of these resources and knowledge is not rarely technical and results in patentable inventions, the introduction of a disclosure requirement in patent applications could contribute to greater transparency regarding this use and enable a more effective enforcement of rights related to GR and TK. This can be important to promote mutual supportiveness48 between patent law, the CBD and the Nagoya Protocol, since a factual control of GR access is hampered by its wide distribution throughout the countries’ and communities’ territory and by

46 Prashant Reddy Thikkavarapu and Sumathi Chandrashekaran, ‘Why the Traditional Knowledge Digital Library’s Existence Deserves a Thorough Relook’ (2017) The Wire . In regard to the number of patent application processes in which the use of the TKDL proved to be relevant, see Anand Chaudhary and Neetu Singh, ‘Intellectual Property Rights and Patents in Perspective of Ayurveda’ (2012) 33 AYU (An International Quarterly Journal of Research in Ayurveda) 20, 33. 47 See Section 1 above. 48 The mutual supportiveness between intellectual property rights and rights on genetic resources and traditional knowledge is required by Art. 16 (5) CBD and Art. 4 (3) of the Nagoya Protocol.

Cultural heritage and patent law  85 the national and international trade of commodities, which allows third parties – such as the biotechnological industry – to access GR without major difficulties. This topic has had a great political relevance in the international scenario in recent years, especially after some countries implemented the disclosure obligation in their national law. In addition, there are proposals for its regulation at the international level. Despite this, there are not only diverging opinions about the ideal scope of the disclosure and the consequences of non-compliance, but also legitimate concerns about its effectiveness in guaranteeing the rights arising from the CBD and the Nagoya Protocol. These aspects will be analyzed below. 4.1

Scope of the Disclosure

The first relevant question regarding this mechanism is what kind of information should be disclosed in the patent application. Considering that the most important element for the purposes of determining the rights and duties related to GR and TK is the place where they were accessed, the initial discussions on the disclosure requirement dealt primarily with disclosure of the country of origin of these resources and knowledge in case of inventions based on them. Some regulations at the national and regional levels followed this idea. An example of this is the European Union. According to Recital 27 of Directive 98/44/EC (Biotech-Directive), “the patent application [related to inventions based on biological material of plant or animal origin] should, where appropriate, include information on the geographical origin of such material, if known.” Some European countries, such as Belgium, Denmark, Germany, Romania, Sweden and Switzerland, have adopted a similar requirement.49 The disclosure of origin was also implemented in China. According to Art. 26(5) of the Chinese Patent Act, the patent applicant shall “indicate the direct and original source of the genetic resources.” The mere disclosure of origin, however, has relevant limitations. Considering that the same GR can be found in different countries, the mere indication of origin in the patent application without any additional documentation does not provide sufficient assurance that the information presented is correct. Thus, depending on the circumstances, the patent applicant may indicate as its origin a country that it considers more advantageous from a strategic perspective (e.g., where the duties regarding the access and use of GR and TK are less strict), even if it has actually obtained the resources from another country. Furthermore, the mere mention of origin does not indicate that access to GR and TK was carried out in accordance with national law implemented on the basis of the CBD and the Nagoya Protocol. Regarding the TK and GR located in the territory of indigenous and local communities, if the disclosure obligation involves only the country of origin, the indication of origin in the patent application would not be sufficient to identify the community. As a result, some countries opted for a broader scope of disclosure in the patent application, including not only the origin, but also evidence that the GR or TK have been accessed in observance of the PIC and – in some cases – also of the MAT, when applicable. According to Art. 26 (h) and (i) of Decision No. 486 of the Andean Community, the number and copy of the GR access contract or the copy of the authorization of the community in case of access to TK shall be required by the patent offices as a condition for patent granting. Another example is Norway. In accordance with Sec. 8(b) of the Norwegian Patent Act: 49 For an overview, see Radadiana Alexandra Taric-Koch, Genetische Ressourcen und die Angabe ihrer Herkunft als Problem des modernen Patentrechts (Herbert Utz Verlag Munich 2016) 339 ff.

86  Research handbook on intellectual property and cultural heritage the patent application shall include information on the country from which the inventor collected or received the material or the knowledge (…). If it follows from the national law in the providing country that access to biological material or use of traditional knowledge shall be subject to prior consent, the application shall state whether such consent has been obtained.

Considering the rights and duties of countries based on the CBD and the Nagoya Protocol, this scope of disclosure is recommended for an effective protection of cultural heritage. A relevant criticism of this broad scope of information to be provided is that patent offices, as a rule, would hardly be able to check whether the PIC and MAT were in fact observed in accordance with the provisions of national law in the countries in which they are located.50 This is because each country can set different conditions and requirements for GR and TK access. Without sufficient specialization and exchange of updated information between patent offices and each country that is a signatory to the CBD and the Nagoya Protocol, examiners would hardly be able to check whether the access requirements were properly fulfilled. As a consequence, the implementation of the disclosure requirement would require not only a considerable adaptation of the workflow of patent examiners and investment in further appropriate tools, but possibly also hiring new examiners, since the examination time could be significantly increased. These concerns, however, lost relevance with the entry into force of the Nagoya Protocol. According to its Art. 17, parties must issue an internationally recognized certificate of compliance that serves as evidence that the GR which it covers has been accessed in accordance with PIC and that MAT was established. This certificate must contain minimum information, such as issuing authority, date of issuance, the provider country, the user, etc. Thus, it would be enough for the patent office to require this certificate from the patent applicant for the disclosure requirement to be fulfilled.51 Although the certificate regulated by Art. 17 is not applicable to TK, the parties could, with the participation of the communities, introduce a similar certification system for cases of access of their knowledge. This would enable a disclosure requirement with an extended scope also for TK. The same applies to the recognition of due access to GR and TK in countries that, although parties of the CBD, are not signatories of the Nagoya Protocol. 4.2

Consequences of Non-compliance

Another relevant topic is the consequence of non-compliance with the disclosure requirement in patent applications. By understanding that patent law has its own system aimed at pursuing specific objectives related to innovation, some of the literature supports the idea that it should not be used to serve other purposes, 52 such as the effective protection of cultural heritage. As

50 See statements from Japan, the Republic of Korea and the United States of America in World Intellectual Property Organization, ‘Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore – Twenty-Ninth Session – Report (WIPO/GRTKF/ IC/29/8)’ (2016) 11, 54, 94. 51 Similarly, World Intellectual Property Organization, ‘Key Questions on Patent Disclosure Requirements for Genetic Resources and Traditional Knowledge’ (2nd ed 2010) 23. 52 For an overview, see Marvin Bartels, Ethik und Patentrecht – Verhältnisse und Wechselwirkungen zwischen Ethik und Patentrecht vor dem Hintergrund innovativer Biotechnologien (Mohr Siebeck Berlin 2020) 86 f.

Cultural heritage and patent law  87 a result, the non-compliance with the disclosure requirement should not entail any type of sanctions at all or entail only consequences outside of patent law, such as further civil, criminal or administrative measures. An example of a legal disclosure requirement without sanctions in case of non-compliance is provided by EU legislation. According to Recital 27 of the Biotech Directive, non-compliance with the disclosure requirement shall not hinder the processing of patent applications or the validity of rights arising from granted patents. A similar rule is provided by § 34a of the German Patent Act. However, this mere symbolic duty assigned to patent applicants, which turns out to be a form of soft law, is unable to adequately protect the interests of countries and communities that hold GR and TK.53 In addition to the possibility that market players in the field of biotechnology will have no interest in assuming charges to have access to this information and resources and to share benefits arising from their use, companies that choose to observe the duties related to PIC and MAT may lose competitive power in the market compared with other companies that fail to comply with these duties and are not effectively sanctioned for such conduct. Thus, there would be no incentives to fulfill the duties related to PIC, MAT and, consequently, benefit-sharing. Other jurisdictions that have introduced the disclosure requirement have opted to establish sanctions outside of patent law. For instance, according to Sec. 8 (b) of the Norwegian Patent Act, non-compliance with the disclosure requirement is subject to penalty according to Sec. 166 of the Norwegian Penal Code, but should not affect the processing of the patent application or the validity of the patent rights. However, the effectiveness of this type of measure is also questionable. The application of appropriate sanctions in the area of civil law, such as compensation for damages, may encounter difficulties regarding the quantification of damages and the burden of proof. The imposition of fines as instruments of civil or administrative law would only constitute an adequate measure of protection if they were applicable to all situations in which the information referring to the origin, PIC and MAT was not disclosed and if its amount were sufficient to economically inhibit the unauthorized access to and use of GR and TK. Finally, the application of criminal law sanctions could also be hampered by issues related to the burden of proof. Furthermore, these sanctions could be insufficient depending on the amount of the fine assigned to the conduct. Since there are no international minimum standards regarding the consequences of non-compliance, these conditions of effectiveness would hardly be met in all countries around the world. Even if an interested country establishes sanctions that may be considered adequate, its ability to influence the behavior of users would depend on relevant factual aspects, such as the existence of users’ assets within the country’s jurisdiction. In its absence, the sanction could lose much of its effectiveness. In view of this, a mandatory disclosure requirement whose non-compliance results in the rejection of the patent application may be a more effective measure of protection for GR and TK. The effectiveness of this sanction relies not only on the fact that it assigns the burden of proof regarding the authorized access to the patent applicant, but also on its being independent of the recognition of the country of origin’s law by a foreign court and of the sanctions assigned by the country in which the resources and knowledge are used. Since the patent applicant’s 53 Fritz Dolder ‘Patente auf der Grundlage traditioneller Kenntnisse indigener Gemeinschaften’ in Christoph Ann and others (eds), Materielles Patentrecht – Festschrift für Reimar König (Carl Heymanns Verlag München 2003) 93 f.

88  Research handbook on intellectual property and cultural heritage commercial interest in obtaining exclusive rights will be harmed if it fails to comply with the duties established by national law, this sanction contributes to creating an incentive to comply with access requirements even without effective solutions at the international level. A mandatory disclosure requirement regarding GR and in some cases also TK has been adopted by various countries, such as Belgium, China, Costa Rica, Egypt, Italy and Switzerland.54 Although the exclusion of exclusive rights can reduce the benefit received by the patent applicant that could be later shared with the country of origin and the communities,55 it is noteworthy that the final objective of the mandatory disclosure requirement is not the rejection of the patent application per se, but rather to avoid infringements of the CBD and of the Nagoya Protocol. In the impossibility of a more effective sanction at the national level and in the absence of a legal framework in international law that can duly guarantee the protection of the rights of the countries of origin and communities, the imposition of a mandatory disclosure can at least contribute to a behavioral control that would otherwise probably not be achieved. 4.3

Limits of Effectiveness

Even in its most effective configuration, that is, with an expanded scope and mandatory character, the disclosure requirement has relevant limitations regarding the protection of cultural heritage, which will be discussed below. 4.3.1 Geographical limitations In view of the principle of territoriality, the effects of patent sanctions granted by the national legislature in case of undue access to GR and TK are restricted to countries that have adopted this measure. Thus, the non-disclosure of origin and access pursuant to PIC and MAT will not have per se any defensive implications for the granting of patents in other countries. If the patent applicant expects the amortization of investments and earning of profit through the exercise of exclusive rights obtained in other countries, the sanction will not affect their decision to access and use GR and TK without authorization and benefit-sharing. Since most countries – especially developed countries – have not introduced a mandatory disclosure requirement in their legal system, the practical effects of this sanction are considerably reduced. The risk of restrictions of patent rights in countries with small economies will hardly be enough to guide the behavior of market players acting at an international level. Although the joint and coordinated adoption of this sanction in its most effective design by countries with small and emerging economies may increase the effectiveness of this measure, this is still a politically distant reality. 4.3.2 Use outside the scope of patent law Further, the mandatory disclosure requirement is only able to inhibit the access and misuse of GR and TK in cases that result in a patentable invention and in which the inventor or their legal successor in fact carries out the patent application. In all other cases – such as the mere

For an overview, see Taric-Koch (n 49) 339 ff. Joseph Straus, ‘The Rio Biodiversity Convention and Intellectual Property’ (1993) IIC 611; see also Pedro Roffe and others, ICTSD-UNCTAD Capacity Building Project on IPRs and Sustainable Development – Resource Book on TRIPS and Development (Cambridge University Press Cambridge 2005) 120. 54 55

Cultural heritage and patent law  89 commercialization of non-patented products and processes or the maintenance of secrecy regarding the use of protected resources and knowledge – the patent sanction will have no effect. Although the uncertainty regarding the concrete outcome of the biotechnological use of a GR or TK in certain circumstances may contribute to the search for authorized access – so that the possibility of patenting will not be a priori excluded – it is possible that this will not be enough to ensure the PIC and MAT at the frequency expected by the countries of origin and respective communities. 4.3.3 Evidence of undue use of TK Due to its materiality, the use of a genetic resource in a patent application referring to an invention in the biotechnological field can usually be identified by the patent examiner. If the disclosure requirement comprises the origin and duties related to any GR (and not just those under the national jurisdiction of the country in which the sanction is implemented), the patent sanction may achieve some effectiveness by assigning to the patent applicant the burden of proof of having legal access to it. However, this effectiveness is considerably mitigated in the case of TK. Under the terms of the CBD and the Nagoya Protocol, only the access to indigenous and local communities’ TK must be subject to a PIC and MAT. A contrario, if an inventor independently obtains this knowledge, they may use it without the consent of or a contract with the respective community. If the invention based on this independently obtained knowledge meets the requirements of novelty, inventive activity and industrial application, the existence of a mandatory disclosure requirement cannot per se prevent its being patented.56 If the patent applicant claims that certain knowledge applied in the invention, even if it is similar to a previous TK, was obtained independently, the burden of proving that the patent applicant obtained this knowledge only after having accessed a previously existing TK will be borne by the communities or other interested parties.57 Since obtaining this evidence can be very difficult and under certain circumstances even impossible, patent applicants who are not interested in obtaining the PIC and MAT could strategically declare that they obtained the knowledge independently, even if this has not actually occurred. Beyond the fact that patent offices are not the most appropriate bodies to mediate and solve such conflicts, patent sanctions would not be able to satisfactorily guarantee communities the rights arising from the CBD and the Nagoya Protocol. 4.3.4 Compatibility with international patent law The compatibility of the mandatory disclosure requirement with international patent law – especially TRIPS and PCT – is a very controversial issue. Critical authors argue that the national law, when ruling that the patenting of an invention based on the use of GR or TK also depends on the legality of the access to them, unduly creates a fourth patentability requirement and therefore violates Art. 27(1) TRIPS.58 Further,

See Sections 2.2 and 3 above. On this topic, see Dolder (n 53) 904. 58 Reto M Hilty, ‘Rationales for the Legal Protection of Intangible Goods and Cultural Heritage’ (2009) IIC 904; Nuno Pires de Carvalho, ‘Requiring Disclosure of the Origin of Genetic Resources and Prior Informed Consent in Patent Applications Without Infringing the TRIPS Agreement: The Problem and The Solution’ (2000) Washington University Journal of Law and Policy 379 f. 56 57

90  Research handbook on intellectual property and cultural heritage this provision prohibits any discrimination between patents within the field of technology. Considering that the disclosure requirement would mainly affect inventions in the biotechnological sector, which have a greater relationship with GR and TK associated with them, the duty of non-discrimination would be infringed.59 The disclosure-related duties established in Art. 29(1) TRIPS are restricted to information related to the ability to carry out the invention and could not justify the duty of compliance with the CBD and the Nagoya Protocol.60 Finally, the adoption of reasonable procedures and formalities allowed by Art. 62 (1) TRIPS must be consistent with the other provisions of TRIPS, and thus cannot be aimed at protecting rights and interests outside the agreement to the detriment of the acquisition or maintenance of patent rights.61 In fact, although this interpretation of the abovementioned articles is disputed,62 a very flexible interpretation of these TRIPS provisions could significantly restrict the scope of the duties assigned to the countries and threaten the achievement of their innovation-related objectives. However, it should be noted that, although controversial,63 Arts. 7 and 8(1) TRIPS provide its member states with some flexibility to configure patent law at the national level in order to meet relevant public interests concerning socio-economic development,64 provided that there is due proportionality between the restriction of the intellectual property rights protected by the Agreement and the protection of the interests whose protection is intended.65 Considering that the protection of cultural heritage, the exercise of the countries’ sovereign rights over their GR and the guarantee of self-determination of indigenous and local communities are relevant public interests, the proportionality of the disclosure requirement could be verified if there is no alternative regulation with comparable effectiveness that is less intrusive to the rights guaranteed by TRIPS. This could be the affirmed if it is verified that there is no feasible and adequate civil, criminal or administrative measure that inhibits the violation of rights to GR and TK and promotes due compensation to affected countries and communities. Despite this, there is no case law or concrete indication from the WTO Dispute Settlement Body that could provide greater legal certainty to this issue. As a consequence, the risk that Straus (n 55) 607. Carvalho (n 58) 380 f.; Federle (n 34) 150; Joseph Straus, ‘Angabe des Ursprungs genetischen Ressourcen als Problem des Patentrechts’ (2004) GRUR Int. 795 f. 61 Carvalho (n 58) 382; Straus (n 60) 795 f.; Federle (n 34) 150. 62 Joshua D Sarnoff and Carlos M Correa, Analysis of Options for Implementing Disclosure of Origin Requirements in IP Applications (UNCTAD 2005) 21 ff. 63 For a contrary opinion, see: Malbon, Lawson and Davison (n 11) 236. Recital 8.70; Daniel Gervais, The TRIPS Agreement: Drafting History and Analysis (Sweet & Maxwell/Thomson Reuters 2012) 238. Recital 2.123; Eric M Solovy and Pavan Krishnamurthy, ‘TRIPS Agreement Flexibilities and Their Limitations: A Response to the UN Secretary-General’s High-Level Panel Report on Access to Medicines (June 12, 2017)’ (2017) 50 George Washington International Law Review 91; Joseph Straus, ‘Patentschutz Durch TRIPS-Abkommen - Ausnahmeregelungen Und -Praktiken Und Ihre Bedeutungen, Insbesondere Hinsichtlich Pharmazeutischer Produkte’ (2003) Bitburger Gespräche. 64 Carlos M Correa, Trade Related Aspects of Intellectual Property Rights: A Commentary on the TRIPS Agreement (Oxford University Press 2007) 95; Peter Yu, ‘The Objectives and Principles of the TRIPS Agreement’ (2009) 46 Houston Law Review 1000; Reto M Hilty and Matthias Lamping, ‘Declaration on Patent Protection – Regulatory Sovereignty under TRIPS’ (2016) 13. Recital 1.2, 1.3. 65 Max Wallot, ‘The Proportionality Principle in the TRIPS Agreement’ in Hanns Ullrich and others (eds), TRIPS plus 20 (Springer Berlin Heidelberg 2016) 221; Yu (n 64) 1004; Alison Slade, ‘Articles 7 and 8 of the TRIPS Agreement: A Force for Convergence within the International IP System’ (2011) 14 The Journal of World Intellectual Property n/a, 420. 59 60

Cultural heritage and patent law  91 the mandatory disclosure requirement is considered to be an infringement and, therefore, that economic sanctions are applied by the WTO against countries that have implemented it is not totally excluded. As to the PCT, which regulates the international patent applications and their formal requirements, Art. 27(1) rules that “no national law shall require compliance with requirements relating to the form or contents of the international application different from or additional to those which are provided for in this Treaty and the Regulations.” Since information regarding access to GR and TK is not required under the PCT, their requirement under the international application for the granting of the patent would not be possible.66 However, considering that Art. 27(5) and (6) PCT rules that the contracting parties are free to determine the substantive conditions of patentability and require the necessary evidence to fulfill these conditions, some authors argue that the international application may be rejected if the national law of a contracting state deems access to resources and knowledge in compliance with the CBD and the Nagoya Protocol to be a substantive requirement of an invention.67 In such a case, the mandatory disclosure requirement could be compatible not only with TRIPS, but also with the CBD. In any case, this issue also remains controversial in international law. 4.3.5 Proposals of amendment of TRIPS and PCT In order to ensure the compatibility of the mandatory disclosure requirement with international law and to provide greater effectiveness to this measure in relation to its objectives, some proposals to amend TRIPS and PCT have been made at the WTO and WIPO, respectively. The most prominent will be considered below. In 2006, Norway proposed at the WTO to amend TRIPS so as to oblige countries to include the duty of disclosure of origin of GR and TK in patent applications.68 Understanding this disclosure not to be a substantive patent criterion, but a formal one, the Norwegian delegation considered that the amendment should not affect Art. 27, but Art. 29 TRIPS. The inclusion of Art. 29 bis with a specific regulation of the disclosure requirement would be the appropriate solution. According to the proposal, if a patent applicant does not comply with the disclosure requirement, the patent application would not be processed and could even be rejected. However, if a patent is granted based on incorrect or incomplete information given by the patent applicant, it could not be declared invalid. In this case, only sanctions outside of the patent law should apply. In 2011, in a joint communication, Brazil, China, Colombia, Ecuador, India, Indonesia, Peru, Thailand, the ACP Group and the African Group proposed at the WTO the introduction of a binding disclosure requirement through the creation of Art. 27 bis TRIPS.69 In addition to considering disclosure as a substantive patent criterion, this proposal differs from the Straus (n 60) 795 f. Bucher (n 15) 107; see also Tobias Lochen, Die völkerrechtlichen Regelungen über den Zugang zu genetischen Ressourcen (Mohr Siebeck Tübingen 2007) 51. 68 World Trade Organization, ‘The Relationship between the Trips Agreement, the Convention on Biological Diversity and the Protection of Traditional Knowledge – Amending the Trips Agreement to Introduce an Obligation to Disclose the Origin of Genetic Resources and Traditional Knowledge in Patent Applications – Communication from Norway (WT/GC/W/566)’ (2006). 69 World Trade Organization, ‘Draft Decision to Enhance Mutual Supportiveness Between the Trips Agreement and The Convention on Biological Diversity – Communication from Brazil, China, Colombia, Ecuador, India, Indonesia, Peru, Thailand, the ACP Group, and the African Group (TN/C/W/59)’ (2011). 66 67

92  Research handbook on intellectual property and cultural heritage Norwegian one in two relevant points. First, the scope of disclosure covers not only the origin of GRs and TKs, but also the internationally recognized certificate of compliance that confirms that the access occurred with due observance of national law based on the CBD and the Nagoya Protocol. Second, if a patent was granted on the basis of incorrect or incomplete information, the consequences could encompass not only sanctions outside of patent law, such as administrative and criminal sanctions, fines and adequate compensation for damages, but also the revocation of the patent. Regarding the PCT, Switzerland proposed in 2003 at the WIPO amendments to Rules 51 bis.1 and 4.17 of the Regulations under the PCT to explicitly enable the national patent legislation to require the declaration of the source of GR and TK in international patent applications.70 However, in addition to restricting the scope of disclosure to the mere origin of the GR and TK, an important limitation of this proposal lies in the fact that the disclosure requirement would only apply to inventions that are directly based on such resource or knowledge. Although these inventions were defined by the Swiss delegation as those that “make immediate use of the GR and/or the knowledge, innovations and practices,” this wording is quite abstract and does not bring enough legal certainty in relation to the cases in which disclosure can be actually required. Further, non-compliance with this provision would not lead to the rejection of the patent application, but would simply impede its processing until the due disclosure occurs. Moreover, the proposal further provides that if the origin of the resource and knowledge is unknown, this shall be declared accordingly and does not constitute an impediment to the further processing of the patent application. This provision considerably detracts from the effectiveness of the measure, as it allows patent applicants who acquired the resource or knowledge in violation of the CBD and the Nagoya Protocol to simply declare ignorance of the origin without any defensive consequences regarding the patenting of the invention. Regardless of the specific advantages and disadvantages of each measure, none of them was actually approved or implemented at the international level. Thus, the limitations regarding the disclosure requirement at the national level remain a current topic.

5. CONCLUSION In a nutshell, the intersection between cultural heritage and patent law for the protection of TK and GR occurs at three distinct levels. Each of them can contribute to the due consideration of the rights and interests of indigenous and traditional communities and hosting countries to some extent. However, they also have important limitations. By assigning exclusive rights to indigenous and traditional communities over their TK, the positive protection of traditional knowledge through patents could prevent the undue appropriation of this knowledge by third parties. However, the fulfillment of the requirements of novelty and inventive activity, the entitlement of indigenous and local communities as patent holders, the need for a technical description of knowledge, the costs of obtaining and maintaining the patent, limitations regarding its merely defensive use and a limited term of protection may represent obstacles to the effective use of this mechanism. As a result, some countries 70 World Intellectual Property Organization, ‘Proposals by Switzerland Regarding the Declaration of the Source of Genetic Resources and Traditional Knowledge in Patent Applications (PCT/R/WG/4/13)’ (2003).

Cultural heritage and patent law  93 have opted to use sui generis mechanisms for the protection of TK that often coincide with those established by the CBD and the Nagoya Protocol. The exercise of TK’s defensive function can prevent its patenting by third parties and, thus, prevent forms of misappropriation of this knowledge. In this case, the novelty and inventive step of inventions by third parties could be significantly harmed due to the inclusion of the TK in the prior art and the disclosure of this prior art to national and foreign patent offices. The publication of the TK description, especially in languages ​​accessible to foreign patent offices (e.g., English), and the creation of TK databases suitable for an efficient use by patent examiners can increase the effectiveness of this protection. Nevertheless, this mechanism does not prevent the unauthorized use of TK under the terms established by the CBD and the Nagoya Protocol. Furthermore, it does not prevent the patenting of inventions which, although based on TK, make use of complementary information and knowledge in a sufficient way to fulfill the requirements of novelty and inventive step. Moreover, the costs related to creating and maintaining appropriate TK databases can be quite high. In turn, the implementation of a mandatory disclosure requirement on patent applications related to GR and TK-based inventions can encourage access to and use of cultural heritage in compliance with the CBD and the Nagoya Protocol. However, the geographic limitation of this measure to countries that adopt it and the limitation of its scope only to cases involving patent applications can considerably reduce its effects. Furthermore, due to the difficulty of obtaining evidence about its undue use, this mechanism is less effective in protecting the rights and interests of indigenous and local communities regarding legal access to TK. Finally, although the compatibility of the mandatory disclosure requirement with international patent law can be supported by good arguments, it is still uncertain. A possible decision by the WTO Dispute Settlement Body against this compatibility could have relevant economic consequences for countries that have adopted this form of patent sanction. Thus, despite the contribution of measures related to patent law to a better protection of cultural heritage, their relevant limitations make them insufficient to prevent the undue appropriation of GR and TK as well as the unauthorized access to them in violation of the rights guaranteed by the CBD, the Nagoya Protocol and the respective national law of the countries of origin. Since the factual control of the circulation of elements and information belonging to the cultural heritage is very difficult and because other forms of sanctions at the national level may not be effective, complementary measures under international law are necessary to guarantee the due protection of these elements of cultural heritage. The harmonization of standards related to the disclosure requirement in patent applications in TRIPS and PCT, as suggested by some countries, can be a good starting point, although its effectiveness depends concretely on the scope and consequence of disclosure. However, if there is enough political synergy at the international level to effectively implement an adequate protection of cultural heritage elements, the search for common solutions in areas outside patent law – such as access and use control, civil law and administrative law measures – could result in even more effective protection measures and lesser risks to innovation. Due reflection on these points is the task of further fundamental research in the area of cultural heritage and patent law.

5. The protection of cultural heritage by designs Bernd Justin Jütte and Alina Trapova

This chapter examines the (potential) role of design law for the protection of cultural heritage (CH). While the intersection of CH with other intellectual property rights (IPRs) is relatively well researched,1 the literature on the usefulness (or its lack) of design law for protecting CH has not been thoroughly explored.2 This chapter seeks to partially close this gap. One difficulty in exploring the relation between design law and CH as a protective regime is that both, designs and CH, are broad notions that encompass a variety of subject matter. An initial definition should therefore serve to limit the scope of our analysis. The term ‘cultural heritage’ is as loaded as it is broad.3 Its definition depends on the circumstances and the context in which it is being used. Nonetheless, for the purposes of the discussion in the present chapter, we will limit ourselves, in order to sharpen the focus, on ‘intangible cultural heritage’ (ICH) as one important aspect of the larger field of CH. The notion of ICH is quite far-reaching in itself – it encompasses elements of folklore, traditional knowledge, and indigenous cultural expressions.4 These concepts can be distinguished from ‘cultural 1 See for example the relevant chapters in Heath & Sanders (eds) New Frontiers of Intellectual Property Law. IP and Cultural Heritage – Geographical Indications – Enforcement – Overprotection (Hart Publishing 2005); the topic has also found attention in general collections on cultural heritage, see e.g., Mira Burri, ‘Cultural Heritage and Intellectual Property’, in: Francesco Francioni & Ana Filipa Vrdoljak (eds), The Oxford Handbook of International Cultural Heritage Law (Oxford University Press 2020), specific copyright-related aspects have been addressed comprehensively in Derclaye (ed) Copyright and Cultural Heritage (Edward Elgar 2010) and Michal Koščík & Matěj Myška, ‘Copyright law challenges of preservation of “born-digital” digital content as cultural heritage’ [2019] European Journal of Law and Technology 48; see on the propertization of indigenous cultural heritage: Kristen A. Carpenter, Sonia K. Katyal, & Angela R. Riley, ‘In Defense of Property’ [2009] Yale Law Journal 1022, replying is Michael F. Brown, ‘Culture, Property, and Peoplehood: A Comment on Carpenter, Katyal, and Riley’s “In Defense of Property”‘ [2010] International Journal of Cultural Property 569. 2 Writing mainly from an Australian perspective, Sainsbury makes an important contribution, see Maree Sainsbury, ‘Indigenous cultural expression and registered designs’, in: Matthew Rimmer (ed), Indigenous Intellectual Property (Edward Elgar 2015); see further covering developments at international level: Margo A Bagley, Illegal Designs? Enhancing Cultural and Genetic Resource Protection through Design Law, (2017) CIGI Paper No. 155, available at: https://​www​.cigionline​.org/​publications/​ illegal​-designs​-enhancing​-cultural​-and​-genetic​-resource​-protection​-through​-design​-law/​. 3 See on the complex nature of the term: ‘Introduction’, in: Francesco Francioni & Ana Filipa Vrdoljak (eds), The Oxford Handbook of International Cultural Heritage Law (Oxford University Press 2020). 4 These concepts that constitute a definition of ICH are not defined at international level (see e.g., with a brief overview and an attempt to define ‘traditional cultural expressions’ as part of intangible cultural heritage: Lily Martinet, ‘Traditional Cultural Expressions and International Intellectual Property Law’ [2019] International Journal of Legal Information 6, 6–9, see also Burri (n 1), 460 et seq.; Fiona Macmillan, ‘Contemporary Intangible Cultural Heritage: Between Community and Market’, in: Charlotte Waelde, Catherine Cummings, Mathilde Pavis, & Helena Enright (eds), Research Handbook on Contemporary Intangible Cultural Heritage (Edward Elgar 2018). Some of the terms are used interchangeably in the relevant literature, see for further examples of definitory delimitations e.g., Patricia

94

The protection of cultural heritage by designs  95 heritage’, as defined in the 1972 Convention Concerning the Protection of the World Cultural and Natural Heritage (WHC)5 by their lack of physicality. While the former considers cultural heritage to cover monuments, groups of buildings and sites,6 or natural features, geological, any physiographical formations and natural sites,7 the 2003 Convention for the Safeguarding of the Intangible Cultural Heritage (ICHC)8 defines ICH as “the practices, representations, expressions, knowledge, skills (…) that communities, groups and, in some cases, individuals recognize as part of their cultural heritage.”9 ICH is characterized by its intergenerational transmission, constant contextual re-creation and its importance for the identity of groups and communities.10 Examples of ICH provided in the Convention are oral traditions and expressions, performing arts, social practices, rituals and festive events, knowledge and practices concerning nature and the universe, and traditional craftsmanship.11 The other object of our examination are industrial designs. Industrial designs are part of the larger family of intellectual property rights, which are exclusive rights granted to individuals, usually the inventor, author or creator. Design rights protect “the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials”12 of a product. The design must therefore be part of a product, which is itself a broad notion, including handicraft items.13 Examples of cultural heritage that will most likely qualify, in principle, for design rights are rug pattern of the Navajo Nation,14 jewelry designs,15 or Māori tattoo patterns.16 These fall squarely into the definition of ‘intangible cultural heritage’ as per Article 2 ICHC. The Convention expressly recognized traditional craftsmanship as a domain in which intellectual cultural heritage manifest itself.17

L. Judd, ‘The Difficulties of Harmonizing Legal Protections for Traditional Knowledge and Intellectual Property’ [2019] Washburn Law Journal 249, 252–255. 5 UN Educational, Scientific and Cultural Organisation (UNESCO), Convention Concerning the Protection of the World Cultural and Natural Heritage, 16 November 1972. 6 Article 1 WHC. 7 Article 2 WHC. 8 UNESCO, Convention for the Safeguarding of the Intangible Cultural Heritage, 17 October 2003. 9 Article 2 ICHC. 10 Cf Article 1 ICHC, cf. also the definition of Martinet, who identifies three key characteristics that define traditional cultural expressions: (i) a cultural content, (ii) a collective essence, and (iii) intergenerational transmission (Martinet (n 4), 9). 11 Article 2 (a)–(e) ICH Convention. 12 Article 3(a) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs, OJ L 3, 5.1.2002, p. 1–24 (CDR); although the Regulation has been updated in 2006 to reflect changes due to the EU’s accession to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs, other than for trademarks, the European design tile has not been renamed into EU design, see Council Regulation (EC) No 1891/2006 of 18 December 2006 amending Regulations (EC) No 6/2002 and (EC) No 40/94 to give effect to the accession of the European Community to the Geneva Act of the Hague Agreement concerning the international registration of industrial designs, OJ L 386, 29.12.2006, p. 14–16. 13 The term ‘product’ is defined in Article 3(b) of the CDR as “any industrial or handicraft item, including inter alia parts intended to be assembled into a complex product, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs.” 14 Brown (n 1), 573. 15 Sainsbury (n 2), 236. 16 Martinet (n 4), 9. 17 Article 2(2)(e).

96  Research handbook on intellectual property and cultural heritage Although specific intellectual property rights could protect larger groups,18 traditionally protection is granted to individuals or smaller teams.19 Even when rights are provided for a larger group of individuals, protection is not granted because of the individual effort of individual members of a community, but, for example in the case of geographic indications, because specific individuals produce in a specifically defined manner and/or in a specific region and are therefore allowed to market their products under a specific sign or name.20 The protection offered under industrial design law could, in principle, be particularly relevant for traditional craftsmanship, but also to elements of social practices, festive events and artistic expressions that include some sort of physical representation of shapes, forms and patterns. This is due to the fact that design law protects the appearance of ‘products’ or items in their aesthetic dimension.21 The basic tension in design law exists between the rightholder and third parties. On the one side, the rightholder enjoys an area of exclusivity in relation to a specific design and, on the other side, the public (domain) has an interest in developing new designs free from restraints.22 Besides, there is a further layer of complexity stemming from the specific nature of CH – usually, CH and the interests it reflects are rather detached from the largely economic interests that drive intellectual property rights.23 Indeed, CH triggers communal, societal and cultural, possibly religious and spiritual, interests that are representative of communal identities, which are interests that are not supported by the major IPRs, and certainly design rights do not serve to promote communal interests of a non-commercial nature.24 As a result, clear difficulties emerge when analyzing the design/ICH intersection. On the one hand, protection can be difficult to obtain for the communities concerned. The requirements for protection, as will be demonstrated below, are difficult to fulfill in relation to subject matter that lacks a clear creator (or designer in this case) and which ‘has been around’ for centuries. ICH is usually the outcome of an intergenerational process attached to the membership of a group or community in which no single individual has contributed to the creation of a specific cultural expression.25 On the other hand, cultural heritage should be protected against misappropriation for commercial or other purposes that could offend or in other ways

18 For example, the EU certification and collective marks safeguard the interests of larger groups. The former indicate that goods and services meet certain specific characteristics listed in a regulation of use, while the latter ensures that goods and services protected by the mark in question originate from members of an association. 19 Cf. The Protection of Traditional Knowledge: Updated Draft Gap Analysis, WIPO/GRTKF/ IC/39/6, 16 January 2019, 24. 20 See the definition of EU certification marks in Article 83 and of collective marks in Article 74 of Regulation (EU) 2017/1001 on the European Union trademark, OJ L 154, 16.6.2017, p. 1–99. 21 Cf. Graham Dutfield & Uma Suthersanen, Dutfield and Suthersanen on Global Intellectual Property Law (Edward Elgar Publishing 2020), 250. 22 Cf. Bernard Volken, ‘Requirements for Design Protection: Global Commonalities’, in: Henning Hartwig (ed), Research Handbook on Design Law (Edward Elgar Publishing 2021), 4. 23 Cf. Burri (n 1), 481. 24 See Justin Hughes, ‘Traditional Knowledge, Cultural Expression, and the Siren’s Call of Property’ [2012] San Diego Law Review 1215 on justifications for TK and TCE in relation to intellectual property justifications. 25 Cf. The Protection of Traditional Knowledge: Updated Draft Gap Analysis, WIPO/GRTKF/ IC/39/6, 16 January 2019, 24–25.

The protection of cultural heritage by designs  97 create a feeling of discomfort among the members of the community that claim rights, of whatever nature, over the cultural heritage concerned. In this chapter, we seek to highlight the central problems stemming from the intersection between ICT and design law, but also explore potential ways forward. We will rely on the EU legal framework for design protection, in particular the Community Design Regulation. The first part of this chapter introduces two central notions – ‘defensive and positive protection of ICH.’ These will serve as stepping-stones for the analysis in the next sections, both in terms of protecting ICH with design law, but also with respect to preventing others from appropriating ICH in design applications. We then turn to the international and EU legal frameworks behind design law by focusing on the scope of design protection by reference to its main requirements – novelty and individual character. The analysis here is tied to the implications for ICH. One crucial aspect is the assessment of designs against public policy and morality grounds. While this has received little attention, by drawing parallels to trademark law, we make the argument that national and EU offices should make better use of the public policy ground in order to safeguard the interest of ICH communities. This way forward becomes even more pertinent in view of the problems of protecting ICH with design rights, i.e., protecting collective expression is not the aim of design law, which reflects economic end goals.

DEFENSIVE AND POSITIVE PROTECTION OF ICH ‘Protecting’ ICH through design law can take two forms – a positive and a negative one.26 On the one side, traditional cultural expressions that fulfill the relevant subsistence requirements could come within the scope of protection of national or regional design rights. Through positive protection, a particular ICH can be granted a design right and the owners of this right or title would then be able to enforce this right against third parties using the protected subject matter (e.g., a specific tattoo design). On the other side, indigenous communities can be protected against the abuse of ICH if cultural expressions are denied design law protection. While such communities would not directly benefit from denying protection to cultural expressions that are considered part of ICH, the danger of facing legal claims based on design rights by third parties for the use of their cultural heritage can cause significant inconvenience. Defensive protection can be exercised by a registering body when a design right is initially applied for, or in invalidity proceedings after a design has already been registered. In principle, ICH can be protected by intellectual property regimes, provided that the relevant conditions for protection are fulfilled. However, the specific nature of ICH makes it difficult to obtain protection, especially since most IPRs, such as the Community design right, require as one of their protection requirements some form of novelty, or, in other words, they must be different in relation to prior creations. Cultural heritage, its protection and its conservation pursue somewhat different goals as compared to IPRs. Protecting ICH does not mean granting exclusivity to incentivize new creativity or inventions, but the (perpetual) protection of old, even ancient creations and expressions against use and abuse.27 An aspiration to protect 26 This distinction is equally applicable for other IPRs, see e.g., Xanthaki, Valkonen, Heinämäki, & Nuorgam (eds) Indigenous Peoples’ Cultural Heritage (Brill–Nijhoff 2017), 220–221. 27 See on this differentiation Stephen R. Munzer & Kai Raustiala, ‘The Uneasy Case for Intellectual Property Rights in Traditional Knowledge’ [2009] Cardozo Arts & Entertainment Law Journal 37, 47; Judd (n 4), 255–256.

98  Research handbook on intellectual property and cultural heritage ICH through traditional IPRs would therefore likely fail because existing cultural expressions, practiced and conserved over generations, would most likely not meet the relevant subsistence criteria and protection under the relevant IP regime and would be limited by the applicable term of protection. International conventions do not envisage any specific IPR for ICH or one of its related sub-concepts. The United Nations Declaration on the Rights of Indigenous Peoples28 merely provides that indigenous people have the right to “maintain, control, protect and develop their intellectual property over such cultural heritage, traditional knowledge, and traditional cultural expressions.”29 The right to protect and develop intellectual property reflects an active approach to IP protection of ICH that provides indigenous or other cultural communities and societies with exclusive rights over their cultural heritage. Attempts at international level to develop an effective legal instrument in this respect have, so far, been unsuccessful.30 To avoid that the protection of ICH is undermined by third parties that are not members of indigenous communities, the 2019 Draft Articles on the Protection of Traditional Cultural Expression (TCE)31 foresee that the erroneous grant of intellectual property over TCEs should be avoided.32 In regards to TCEs, at WIPO’s 37th session it was suggested to investigate an option for their defensive protection, without, however, making concrete proposals.33 The WIPO Gap Analysis on the Protection of Traditional Cultural Expressions acknowledges that parallels exist in relation to the active protection of TCEs, and therefore also ICH, between literary and artistic productions34 and industrial designs. While more recent creations can, in principle, be protected as long as the substantive protection requirements are fulfilled, older designs “from the distant past” would not qualify for protection.35 Similar concerns have been raised in the Gap Analysis on the Protection of Traditional Knowledge, though design protection is deemed less relevant in this regard.36 Both documents refer to discussion in the context of the draft Design Law Treaty to require “disclosure of the origin or source of TCEs, TK or biological/genetic resources utilized or incorporated in an industrial design.”

United Nations Declaration on the Rights of Indigenous Peoples, 13 September 2007 (UNDRIP). Article 31(1) United Nations Declaration on the Rights of Indigenous Peoples. 30 Cf. Johanna Gibson & Bernd Justin Jütte, ‘The EU Stance in International Matters’, in: Irini Stamatoudi & Paul Torremans (eds), EU Copyright Law (Edward Elgar 2021), paras. 26.49–26.56. 31 WIPO, The Protection of Traditional Cultural Expressions: Draft Articles, WIPO/GRTKF/ IC/40/5, 9 April 2019 (hereinafter the TCE Draft Articles). 32 The 2019 TCE Draft Articles list three alternative formulations for “Article 2 Objectives”. Alternatives 1 and 3 expressly state that the erroneous grant of IPRs over TCE traditional cultural expressions should be prevented, merely proposes “to support the appropriate use and effective, balanced and adequate protection of traditional cultural expressions within the intellectual property system.” 33 WIPO, The Protection of Traditional Cultural Expressions: Updated Draft Gap Analysis, WIPO/ GRTKF/IC/37/7, 6 July 2018. WIPO, The Protection of Traditional Cultural Expressions: Updated Daft Gap Analysis, WIPO/GRTKF/IC/37/7, 6 July 2018. 34 See to that effect The Protection of Traditional Knowledge: Updated Draft Gap Analysis, WIPO/ GRTKF/IC/39/6, 16 January 2019, 25. 35 See to that effect The Protection of Traditional Knowledge: Updated Draft Gap Analysis, WIPO/ GRTKF/IC/39/6, 16 January 2019, 4. 36 WIPO, The Protection of Traditional Cultural Expressions: Updated Draft Gap Analysis, WIPO/ GRTKF/IC/40/7, 9 April 2019, however the analysis states that “international standards on design protection may provide some indirect protection for some TK, particularly when designs are closely associated with a particular TK system, such as a way of producing tools, musical instruments or handicrafts.” 28 29

The protection of cultural heritage by designs  99 Considering these preliminary points, it appears that IP law is ill-suited to protect a systematically different subject matter such as cultural heritage through traditional exclusive rights like patents, copyright and trademarks. Unsurprisingly, design rights are not much different, meaning that the protection of cultural heritage with design rights will certainly experience difficulties.37

LEGAL FRAMEWORK International Compared with other IPRs, designs have received little attention at international level. Article 5quinquies of the 1883 Paris Convention (as amended) merely states that “[i]ndustrial designs shall be protected in all the countries of the Union.” It does not however prescribe a specific protection regime, nor does it mandate that designs must be protected by a specific design title.38 Similarly, Article 25 of the TRIPS Agreements merely states that “Member States shall provide for the protection of independently created industrial designs that are new or original,” without determining the form such protection should take.39 Article 25(2) TRIPS serves to ensure that all member states protect textile designs but expressly leaves the choice to member states to provide this protection “through industrial design or through copyright law.” However, the TRIPS Agreement defines the basic conditions for protection, which require that designs must be “new or original,” and leaves room for discretion to the member states to exclude from protection designs that “do not significantly differ from known designs or combinations of known design features.”40 Similar to the Madrid System for trademarks and the Patent Cooperation Treaty, the Hague System for the International Registration of Industrial Designs was established to provide support for the registration and management of designs across multiple jurisdictions. At WIPO level the discussions on the Design Law Treaty seem to have stalled. In December 2019, at its 51st Session, the WIPO General Assembly considered a proposal by the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) to convene a diplomatic conference for the adoption of a Design Law Treaty at the end of the first half of 2020.41 As no consensus could be reached to convene a diplomatic conference, it was postponed to the next session, which took place in September 2020.42 No progress has been made since, but it is worth noting that one of the remaining aspects that needed clarification is the national policy space for substantive requirements pertaining to the protection of TK and TCEs.43

37 Michael Blakeney, ‘The protection of traditional knowledge under intellectual property law’ [2000] European Intellectual Property Review 251, 252. 38 See Dutfield & Suthersanen (n 21), 239, states are therefore free to provide protection to designs under copyright law (see Article 2(7) Berne Convention). 39 TRIPS Commentary, para. 25.01. 40 Article 25(1) TRIPS. 41 WIPO General Assembly, WO/GA/51/18, 13 December 2019, at 151. 42 Ibid at 155. 43 Ibid at 150.

100  Research handbook on intellectual property and cultural heritage European Union Turning to the European Union, one can clearly identify a much more structured and elaborated legal framework. The discourse revolves around two central legal texts – the 1998 Directive on the legal protection of designs44 and the 2002 Regulation on Community designs. The former seeks to harmonize the laws in the different member states as far as national registered design law is concerned, while the latter introduced a unitary design title, similar to the EU Trademark – the so-called Registered Community Design (RCD). Registration for the RCD is managed by the European Union Intellectual Property Office (EUIPO). The Directive’s main goal is to ensure the well functioning of the internal market and to that end rendering identical the conditions for obtaining a registered design in all member states is central.45 This would then facilitate the free movement of goods among the member states.46 Equally, the Regulation seeks to overcome the territoriality issue of national designs by introducing a unitary title, as the alternative could lead to a possible division of the internal market and hence could constitute an obstacle to the free movement of goods.47 Thus, it becomes clear from the outset that the justification of the Designs Directive as well as the Regulation is economic. Indeed, designs’ main function is that of protecting and incentivizing investment.48 In addition to the RCD, the European Union introduced a second layer of design protection – the Unregistered Community Design (UCD). This specific type of right lasts for three years from the moment in which the design is first made available to the public.49 It is ideal for industries where the designs have a short market life and registration formalities would unnecessarily burden the stakeholders.50 One such area is fashion, where EU unregistered designs have been used very effectively. EU law does not envisage, however, a national harmonized unregistered design. Consequently, as EU law currently stands, there are several instruments to protect designs, and some do not even require formalities such as registration. This puts the EU design law system in the spotlight, which is in fact currently undergoing a public consultation with a view of being reformed.51

44 Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs, OJ L 289, 28.10.1998, p. 28–35. 45 Recital 9 Directive 98/71/EC. 46 Recital 1 Directive 98/71/EC. 47 Recital 4 CDR. 48 Recital CDR, see also as well as Case C‑395/16, DOCERAM GmbH v CeramTec GmbH, EU:​C:​ 2018:​172, para. 28. 49 Article 11 CDR. 50 Recital 16 CDR. 51 European Commission ‘Commission seeks public opinion on protection of industrial designs and EU-wide geographical indications for products (29 April 2021) accessed 31 August 2021.

The protection of cultural heritage by designs  101

SCOPE OF DESIGN PROTECTION When assessing the requirements for a design, it appears that the protection is broad and narrow at the same time. While the subject matter within the scope is broadly defined, the specific conditions triggering protection certainly appear very restrictive. In the EU, ‘design’ is defined as “the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.”52 Such a definition would certainly include a vast variety of subject matter, including the above-mentioned examples of ICH as per the 2003 Convention for the Safeguarding of the Intangible Cultural Heritage (ICH Convention). Turning to the requirements, it transpires that the protection is carefully limited. In order to attract protection, a design must be new, it must possess an individual character, and it must be part of a product.53 The perspective from which such an assessment is made is that of the so-called ‘informed user.’54 This fictitious figure positions itself between trademark law’s ‘average consumer’ and patent law’s ‘expert skilled in the field.’55 Thus, when analyzing designs, one is expected to be familiar with the restraints in the specific field, able to spot differences in designs (thus, there is no room for imperfect recollection like the ‘average consumer’),56 but certainly far from an expert familiar with all the prior art and intricacies of the specific design field. This specific aspect will have certain implications for the positive protection of ICH with design law. We will turn to this aspect further below. Besides the scope, there is another aspect that speaks for the rather narrow design protection. The right only extends to acts of copying the protected design and acts that relate to the marketing of the design.57 It does not cover aspects akin to the protection offered under copyright’s moral rights.58 Protection Requirements To obtain protection under EU design law, a design must meet two substantive requirements: novelty and individual character.59 For the EU, novelty means that “no identical design has been made available to the public.”60 In principle, a strict application of this standard would mean that a Community design cannot be granted if an identical design already exists anywhere in the world at the relevant time.61 A global novelty standard would provide effective Article 3(1)(a) CDR. Article 4(1) CDR. 54 Article 5 Design Directive; Article 6 CDR. 55 PepsiCo Case C-281/10 P, PepsiCo, Inc. v Grupo Promer Mon Graphic SA, EU:​C:​2011:​679, para. 53. 56 PepsiCo Case C-281/10 P, PepsiCo, Inc. v Grupo Promer Mon Graphic SA, EU:​C:​2011:​679, para. 55. 57 Article 18 CDR. 58 Cf. Henning Hartwig, ‘Claiming Priority under the Community Design Scheme’, in: Henning Hartwig (ed), Research Handbook on Design Law (Edward Elgar Publishing 2021), 171. 59 Article 4 CDR. 60 Article 5(1) CDR. The term ‘identical’ is defined in Article 5(2) meaning that designs are “deemed to be identical if their features differ only in immaterial details.” 61 The CDR distinguishes between unregistered Community designs, for which the relevant time is “the date on which the design for which protection is claimed has first been made available to the public” 52 53

102  Research handbook on intellectual property and cultural heritage protection against the assertion of design rights over expressions of ICH and protect indigenous communities against claims by third parties in relation to their cultural expressions. However, EU design law seems to limit the geographical scope of the novelty standard. It considers a design to be made available for the purpose of assessing novelty and individual character if it has been published or otherwise disclosed before the relevant date, “except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community.”62 This standard of reasonableness excludes situations in which designs have been disclosed only in remote regions of the world and leaves room for independent creations. Nonetheless, Dutfield and Suthersanen argue convincingly that in a globalized and interconnected world, this exception is of limited relevance.63 Therefore, disclosures of potentially novelty-destroying designs must be considered on a worldwide basis. This was indeed the case with the famous Crocs shoes.64 Crocs held a registered EU design for their landmark shoes since 2005. Gifi Diffusion slammed the Crocs design with an application for invalidity, claiming the Crocs design was not novel as it was displayed more than 12 months before the registration on the company’s official website, at an exhibition at a boat show in Florida (United States). It also stressed the fact that the clogs to which the design had been applied were available for sale. The General Court dismissed Crocs’ appeal and held that there is no requirement that the events constituting disclosure to have taken place in the EU. To this end, the disclosure in the US, which was considered a particularly important market for the EU, destroyed the novelty of the registered design, which was then held invalid. Importantly, the General Court found that Crocs failed to demonstrate that the three disclosure events established by EUIPO could not reasonably have become known in the normal course of business to the circles specialized in the sector concerned, operating within the EU (that is to say, professionals in the trade and manufacture of footwear).65 Similarly, in the US, design patent law does not exclude obscure designs pre-existing in remote and secluded places and instead applies a worldwide novelty standard.66 As a result of the relatively strict novelty requirement, it will prove difficult for an indigenous community or other cultural group to register a design that exists already for generations in various permutations and evolutions. Any record of the design would automatically compromise the novelty and thus make it challengeable by a third party in invalidity procedures. An active protection of cultural heritage by design law would therefore already fail because cultural heritage by default will not fulfill the novelty criterion. As the above example demonstrates, prior art can be taken into consideration worldwide as long as this has become known in the EU.67

and registered Community designs, for which the relevant time is “the date of filing of the application for registration of the design for which protection is claimed, or, if priority is claimed, the date of priority” (Article 5(1)(a) and (b)). 62 Article 7 CDR. 63 Dutfield & Suthersanen (n 21), p. 254. 64 Case T-651/16, Crocs, Inc. v EUIPO, EU:​T:​2018:​137, further under appeal before the CJEU (C‑320/18 P), but was eventually settled. Crocs lost at the General Court. 65 Case T-651/16, Crocs, Inc. v EUIPO, EU:​T:​2018:​137, para, 63. 66 Dutfield & Suthersanen (n 21), 255. See for other approaches: Volken (n 22), 12–14. 67 Cf. also Commission Staff Working Document. Evaluation of EU legislation on design protection, SWD(2020) 264 final, Brussels, 6.11.2020. p. 28.

The protection of cultural heritage by designs  103 In relation to the UCD, the requirement of novelty is also relevant in the same way as it applies to registered designs, but disclosure must occur within the EU.68 This may appear favorable for indigenous communities seeking to protect their designs due to the fact that most indigenous communities are situated outside of the EU; the overall utility of the UCD is very limited. Conversely, the restriction of the act of disclosure of prior art to the EU enables designers to rely on a UCD although an identical or similar design has already been disclosed elsewhere outside the EU. This potential threat to indigenous communities is somewhat mitigated by the duration of the UCD, which is limited to three years starting from the moment of disclosure.69 The second requirement for a design is that of individual character. While the novelty requirement is an objective standard in the sense that the analysis lies on the notion of disclosure, the requirement that the design displays an individual character is not entirely void of subjectivity. To assess whether design for which registration is sought – or for unregistered sign simply protection – a court will look at the overall impression of the contested design from the perspective of an informed user and compare it with the prior designs.70 A design displays an individual character if “the overall impression which that design produces on the informed user [is] different from that produced on such a user not by a combination of features taken in isolation and drawn from a number of earlier designs, but by one or more earlier designs, taken individually.”71 In the course of this analysis, the freedom of a designer developing the design must be taken into consideration. In this respect, some designs require certain specific features to be always present – a shoe design would always have a sole to step on. Consequently, the more limited the design freedom is, the smaller the differences will be that are likely to create a different overall impression, and vice versa. However, this can never be a mathematical calculation and should always consider the overall impression of the informed user.72 Turning briefly to the US, the protection standards differ slightly from those in the EU, and applications for design patents are dealt with in the same way as applications for utility patents. Registration can be sought for “any new, original and ornamental” design.73 The first two requirements are nominally identical to those that apply equally to utility patents, while the latter is unique to design patents. However, only a small proportion of applications for design patents is rejected, most of these for formal reasons and not because they are pre-empted by the prior art.74 The novelty standard that applies for utility patents also applies to design patents. A design that is anticipated by an earlier design would fail at the novelty stage. The US courts, in order to determine whether a design possesses novelty, will compare the new design against the prior art through the eyes of an ordinary observer with specific attention to the differences between

Article 11 Design Regulation 6/2002. Article 11 Design Regulation 6/2002. 70 See for a definition of an informed user, laying out her specific characteristics: Samsung v Apple UK Court of Appeal [2012] EWCA 133, paras 39–51, see also Dutfield & Suthersanen (n 21), 253 and Volken (n 22), 15. 71 Case C-345/13, Karen Millen Fashions Ltd. v. Dunnes Stores, EU:​C:​2014:​213, para. 35. 72 David Stone and Philip Davies, ‘Another case of handbags at dawn: General Court rules out mathematical approach to assessment of overall impression’ [2016] JIPLP 11(1) 14–16, 16. 73 Cf. 35 U.S.C. §§ 171(a)–(b) (Supp. I 2013)., see Dutfield & Suthersanen (n 21), 255–256. 74 See Sarah Burstein, ‘Is Design Patent Examination Too Lax?’ [2018] Berkeley Technology Law Journal 607, 610, with further references. 68 69

104  Research handbook on intellectual property and cultural heritage the prior art and the design as it is being claimed.75 As a result, unless almost completely identical, a design based on a design which is part of a community’s ICH will not struggle at the hurdle of novelty. But even at the non-obvious stage, the US courts tend to require a relatively high level of identity.76 Excluded Subject Matter The Community Design Regulation only excludes such designs from registration that are solely dictated by their function77 or which are “contrary to public policy or to accepted principles of morality.”78 We discuss below why the current examination procedure in the EU is unsuited to prevent registration of designs based on ICH ab initio. This is because the substantive examination of design applications in theory would bar designs contrary to public policy or to accepted principles of morality as per Article 9 CDR, but in practice this ground has not been relied on. The public policy argument, if understood broadly, could be particularly helpful to prevent the registration of designs that are offensive to indigenous communities, even if such designs were to meet the novelty and individual character requirements. However, the EU Courts and the EUIPO interpret public policy and morality strictly, and to date no design has been refused registration on these grounds. In fact, in its Guidelines the EUIPO stresses explicitly that the Office will apply the concepts of public policy and morality as explained in the Guidelines on trademarks following the case law of Article 7(1)(f) EUTMR. In relation to trademarks, ‘public policy’ and ‘accepted principles of morality’ are two separate concepts that often overlap. The CJEU established that the concept of ‘accepted principles of morality’ refers “to the fundamental moral values and standards to which a society adheres at a given time.”79 When assessing this standard, regard must be had to “the cultural, religious or philosophical diversities that characterise” the relevant social context.80 The relevant social context is one of “that society at the time of the assessment,” and therefore seems to be limited to the country of registration. As much as the registration might injure or offend an indigenous community at the other end of the globe, it is unlikely that ‘remote’ cultural sensitivities would cause moral offense in a member state of the European Union. An objection based on ‘public policy’ must be based on objective criteria. ‘Public policy’ is the body of all legal rules that are necessary for the functioning of a democratic society and the state of law. In the context of Article 7(1)(f) EUTMR, ‘public policy’ refers to the body of EU law applicable in a certain area, as well as to the legal order and the state of law as defined by the Treaties and secondary EU legislation, which reflect a common understanding of certain basic principles and values, such as human rights. 75 The test is the same for novelty as it is for infringements, see Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1239, 1238. 76 Cf. Burstein (n 74), 617; the author provides the example of a design application for a “Pocket Key Organizer” in Key-Bar, LLC v. Curv Brands, LLC, 2017 WL 1096586, at *1 (Mar. 22, 2017). 77 Article 8 CDR; the provision also excludes features that requires a certain form and dimension to interoperate with another product, the so-called ‘Must-Fit’ Exception, cf. Justine Pila & Paul Torremans, European Intellectual Property Law (2nd edn, Oxford University Press 2019), 469–470. 78 Article 9 CDR. 79 Case C-240/18 P, Constantin Film Produktion GmbH v. EUIPO, EU:​C:​2020:​118, para. 39. 80 Ibid.

The protection of cultural heritage by designs  105 The standard of public policy is equally subject to a strict interpretation.81 These provisions have been relied on in the past years by reference to extending the IP protection of cultural works in which copyright has expired by virtue of trademark applications. Several years ago, the EFTA court considered the registrability as trademarks of many visual works and sculptures of the Norwegian sculptor Gustav Vigeland.82 At stake here was a potential trademark protection for the famous ‘Angry Boy’ sculpture in which copyright had expired. The Municipality of the city of Oslo had sought trademark registration of approximately 90 of Vigeland’s works and the applications were rejected. The grounds included not only the well-known descriptiveness and non-distinctiveness, but also an additional objection on the grounds of public policy and morality. Eventually, the case went all the way up to the EFTA court. The final decision concludes that it may be contrary to public policy in certain circumstances, to proceed to register a trademark in respect of a well-known copyright work of art, where the copyright protection in that work has expired or is about to expire. The status of that well known work of art including the cultural status in the perception of the general public for that work of art may be taken into account.

Such a reasoning is certainly sound in view of the specific features of trademark protection – different from other IPRs, trademarks protection can be renewed potentially forever. An objection of this kind also considers the dangers of re-appropriation of cultural expression. It is indeed an aggressive technique of artificially prolonging IP protection, which the late US Supreme Court Justice Scalia has labelled as “mutant copyright.”83 Despite these considerations, the absence of design cases tackling public policy and morality grounds suggests, however, that the ground has not been of much use.

THE LIMITS TO PROTECTING CULTURAL HERITAGE WITH DESIGN LAW Protecting ICH with design law is problematic and of little utility. The inherent restrictions of the scope of design law and the conditions that must be fulfilled to obtain protection under modern design law leave little room for a protective regime that could fulfill the needs of indigenous communities more generally. In this regard, the barriers to effective protection are similar to those of the other classic intellectual property rights.84 Fisher highlights the problems associated with protecting traditional knowledge with intellectual property rights. Such knowledge, including traditional expressions as part of ICH, is produced by groups instead of individuals, it has been created a long time ago, and the

81 See Luminița Olteanu, ‘Riding on the Coat-tails of Traditional Cultural Expressions’ [2021] International Journal for the Semiotics of Law 861, 880, who argues for a broad interpretation of public policy as an absolute ground for refusal in European trademark law, interpreting Article 7(f) CDR together with the provisions of the TFEU on the protection of Europe cultural heritage e.g., Article 167(2) TFEU; but also Article 13 TFEU and Article 3(3) TEU. 82 Case E-5/15 Municipality of Oslo, 6 April 2017. 83 Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003), at 34. 84 See e.g., Naomi Palosaari, ‘Intellectual Property Rights and Informed Consent in American Indian Communities: Legal and Ethical Issues’ [2016] American Indian Law Review 125,137–139.

106  Research handbook on intellectual property and cultural heritage initial creators are not in control of its ‘management’ in the present time.85 Put differently, the creations of individuals in the distant past, today serve as important elements of a community identity, which this community desires to protect and control. Fisher also highlights why the differences in justifying protection for ‘normal’ intellectual property fail to provide arguments for a greater protection of traditional knowledge.86 It is these differences that partially explain why design protection does not provide an efficient framework for the protection of ICH against abuse and misappropriation of ICH, or why it fails to provide indigenous communities with legal mechanisms that could ensure and safeguard their control over their traditional expressions. Duration and Ownership The problems that stem from the rules governing ownership of industrial design rights are inherently linked to the duration of such titles. Although it is possible to transfer the title to an industrial design right,87 a continuous ownership over generations is not possible.88 The ICH Convention defines ICH as being “transmitted from generation to generation” and that it “is constantly recreated by communities and groups in response to their environment, their interaction with nature and their history.”89 ICH therefore does not belong to an individual. Instead, TCEs as part of ICH belong to a community, the members of which identify themselves with such expression.90 The process of creation and conservation through recreation lets individual designers fade into a group with an indefinite number of designers, which are impossible to identify, and which all participate or have participated in these processes. Although there might be a common plan to maintain cultural heritage, such a common plan, a prerequisite for joint ownership, 91 does not exist in relation to the ICH. The nature of ICH is inherently dynamic.

85 Cf. William Fisher, ‘Why Is Traditional Knowledge Different from All Other Intellectual Property’ [2019] Washburn Law Journal 365, 365–366, see also Hughes (n 24), 1243–1253 and Munzer & Raustiala (n 27), 63–65. 86 Fisher (n 85), 366–377, while classical intellectual property rights are granted and protected to guarantee fair rewards for authors and inventors, incentivize innovation through the temporal suppression of competition and to protect the strong bonds between artists and inventers and their creations, arguments to protect traditional knowledge are different: its protection serves to protect the identities of communities against unauthorized use of traditional knowledge by outsiders, which could “corrode those identities”; protection of traditional knowledge promotes distributive justice in relation to communities that are often at a significant economic disadvantage in the countries they are located; and protection of traditional knowledge reduces global cultural homogenization by giving indigenous communities control over their heritage. 87 Article 28 CDR. 88 See Article 12 CDR for registered designs, which are protected for initially five years and which can be extended in their term for additional periods of five years up to a maximum of 25 years, and Article 11 CDR for unregistered designs, which enjoy a term of protection of three years. 89 Article 2(1). 90 Martinet (n 4), 11. 91 Anna Tischner, ‘Design Rights and Designer’s Rights in the EU’, in: Henning Hartwig (ed), Research Handbook on Design Law (Edward Elgar Publishing 2021), 180.

The protection of cultural heritage by designs  107 This stands in contrast to the static nature of design rights. Their term of protection is limited to a total of 25 years in the EU for registered design92 and three years for unregistered designs.93 EU design law also limits the original beneficiary of a design rights. Ownership of an industrial design rests in the designer, i.e., the creator of a design.94 While Article 14(2) CDR considers the possibility that two or more persons can jointly develop a design, it does not foresee a gradual development of designs through a community-driven process that would entitle larger groups of indeterminate persons to own a design right; and this disregards the aspect of fluctuating or morphing subject matter in the definition of ICH in the Convention.95 The limitation in ownership and duration reflects the inherently economic nature of the design right, which systematically sits oddly between trademarks and copyright. The economic justification and the balance of interests underlying design rights is also reflected in the relatively limited temporal scope.96 Similarly, limitation to the scope of protection is foreseen, inter alia, for private uses and for non-commercial uses.97 Substance A design that would infringe would not be granted its own title because it would be neither new nor would it display an individual character.98 The distance between an existing design, whether currently protected or not, and a design for which protection is sought is determinative for whether the latter can be registered or not. Article 10 CDR states that “[t]he scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.” A design that creates a different overall impression in the eyes of an informed user does not infringe and would be eligible for its own design title. Therefore, the interpretation of the notion of ‘overall impression’ and the notional ‘informed user’ are highly significant for the protection granted, positively or defensively, for ICH. In other words, a design that resembles a design that is considered a TCE, and therefore part of the ICH, can formally be registered as an independent design if its overall impression is different from the TCE. But here lies the first difficulty. A design enjoys protection in relation to designs that are not identical or which create an overall different impression. This requires defining ICH that could be compared with a design for which protection is sought. However, defining the ‘scope’ of ICH if often not that easy, or as Brown puts it: “to protect something, we must first identify it and specify its boundaries.”99 From a positive-protection perspective, a designer could apply for the protection of a TCE if the design created is different in its overall impression from the corpus of ICH that is taken

92 Article 12 CDR; the initial term of protection is five years, which can be prolonged in intervals of further five years until the total term of protection reaches 25 years after the date of filing. 93 Article 11(1) CDR. 94 Article 14(1) CDR. 95 See on the difference between traditional IP subject matter and traditional knowledge, e.g., Fisher (n 85), 369, with reference to Madhavi Sunder, ‘The Invention of Traditional Knowledge’ [2007] Law and Contemporary Problems 97. 96 Volken (n 22), 4. 97 Article 20 CDR. 98 Pila & Torremans (n 77), 471. 99 Brown (n 1), 573.

108  Research handbook on intellectual property and cultural heritage as reference as part of the prior art. Essentially, this assessment comes down to a simple infringement test. The differences between an existing design and a new design must not be obvious, but the differences must be “sufficiently marked or significant.”100 A design, in order to be registrable, must therefore merely be non-identical to an earlier design, or the prior art in general, and must further display sufficiently marked or significant differences that must not necessarily be obvious. The standard to be applied here is that of an informed user, which the CJEU has described as without being a designer or a technical expert, the user knows the various designs which exist in the sector concerned, possesses a certain degree of knowledge with regard to the features which those designs normally include, and, as a result of his interest in the products concerned, shows a relatively high degree of attention when he uses them.101

The protection of the design is not restricted to the product or class of product to which it is usually applied or incorporated into, or which might be the case, in relation to which it has been registered. It is only relevant whether a potentially infringing design produces on the informed user a different overall impression.102 The nature of the product in which the registered design is intended to be incorporated can, however, be taken into consideration when assessing whether the overall impression of the allegedly infringing design produces an “overall impression of difference or lack of ‘déjà vu’.”103 The substantive scope of protection shields the holder of a registered design against acts by others that would violate the “exclusive right to use [the design] and to prevent any third party not having his consent from using it.”104 The notion of use includes “in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.” All these examples refer to a physical use of the design in relation to the marketing of a product. Uses that do not relate to a product are not covered by design law, which therefore fails to provide protection against acts other than pure copying. Uses similar to those falling under moral rights protection under copyright law and uses detrimental to the reputation of a mark under trademark law are not protected by design law.105 In the absence of protection of acts that are considered wrong as part of the substantive scope of protection, such matters are best dealt, as we argue below, with subsistence conditions and absolute grounds of refusal.

100 Case C-821/18 P, Linak A/S v EUIPO, EU:​C:​2019:​513, paras. 19–25 confirming the judgment under appeal (Case T‑367/17, Linak A/S v EUIPO, EU:​T:​2018:​694). 101 Case C-361/15 P, Easy Sanitary Solutions BV and EUIPO, v Group Nivelles EU:​C:​2017:​720, para. 125, with reference to Case C‑281/10 P, PepsiCo v Grupo Promer Mon Graphic, EU:​C:​2011:​679, para. 59. 102 Cf. Case C-361/15 P, Easy Sanitary Solutions BV and EUIPO v Group Nivelles, EU:​C:​2017:​720, paras. 90-91. 103 Case T-353/19, Gamma-A SIA v EUIPO, EU:​T:​2020:​95, para. 39, see also para. 53. 104 Article 19 CDR. 105 Cf. Xanthaki et al. (n 26), 223.

The protection of cultural heritage by designs  109

CHALLENGING DESIGN CLAIMS FOR CULTURAL HERITAGE Challenges to the eligibility or validity of a design that reproduces a TCE can be made before it unfolds its legal effects in cases of registration, or as objection in infringement procedures. Examination In the EU, designs are registered provided that they comply with all formal requirements.106 Substantive protection requirements are not subject to prior examination, to keep the administrative burden for applicants to a minimum.107 The formal requirements are laid down in Article 36 EU Design Regulation, which requires that an application contains a “request for registration,” that it identifies the applicant, and that it contains “a representation of the design suitable for reproduction.”108 As a result of the limited examination, EU design law does not provide for any effective protection against the initial registration of designs that do not meet the substantive requirements, or the registration of which should be prevented for other reasons. This stands in stark contrast with the trademark system, where a list of absolute and relative grounds regularly act as a barrier to applications.109 Without a prior examination, designs that contain elements of or which otherwise resemble ICH could initially be registered, although they could be challenged successfully due to their lack of novelty via invalidity applications. Designs containing elements that would eventually lead to a declaration of invalidity are also likely to be registered initially because the applicant must not necessarily be the designer themselves.110 The situation is different in the US, where applications for design patents are subject to an examination against the prior art and for compliance with the other requirements for protection.111 Furthermore, the inventor of the design must submit an oath declaring that they are “the original inventor or an original joint inventor of a claimed invention.”112 However, the standard of review is extremely limited to near-identical designs,113 with the consequence that non-identical, but still similar designs would still pass the standards of both novelty and non-obviousness. It is obvious that a thorough examination of a design for which registration is sought would help to prevent the registration of ICH. However, with low standards for subsistence and the absence of an initial examination in important jurisdictions, this hurdle is easily overcome. It

Article 45 CDR. Cf. Recital 18 CDR. 108 Further optional elements of an application are contained in Article 36(3) and Article 37 CDR. 109 Article 7 EUTMR; Article 8 EUTMR. 110 Although the designer or a team of designers has the right to be cited (Article 18). 111 See 35 U.S.C. § 131, see also 37 CFR § 1.104(a)(a), which states that “the examiner shall make a thorough study thereof and shall make a thorough investigation of the available prior art relating to the subject matter of the claimed invention.” Subparagraph (3) further requires that “[a]n international-type search will be made in all national applications filed on and after June 1, 1978.” 112 37 U.S.C. § 1.63(a)(3), a false statement can lead to criminal liability, see Stephen Yeldermann, ‘The Value of Accuracy in the Patent System’ [2017] University of Chicago Law Review 1217, 1266. 113 Cf. Burstein (n 74), 613–614, 621. 106 107

110  Research handbook on intellectual property and cultural heritage does not help that the current draft of the Design Law Treaty makes a prior disclosure requirement merely optional.114 Declaration of Invalidity A design can be declared invalid based on several grounds.115 While the most often relied on are the lack of novelty and individual character, for the purposes of this chapter, it is worth stressing that should a design be contrary to public policy and morality, it would also risk an invalidity claim.116 As it was mentioned above, the public policy argument is a difficult one to make. Tied to its understanding in trademark law, the public policy/morality ground has been traditionally relied on to object to obscene expression. The central question has been whether the sign offends and not whether the appropriation of expression and thus its prolonged IPR protection, are against the interests of the general public.117 In this regard, it is fair to say that overlap between the different intellectual property rights is inevitable as the subject matter is often defined very broadly.118 Yet, following the lines of the European Copyright Society and their opinion on the Vigeland case,119 it can be convincingly argued that the registration of designs incorporating ICH may seriously offend the broader public and invade the public domain in a manner that is highly inappropriate and overly expansive. Furthermore, as Senftleben argues in the case of trademarks, “if public order and morality are not properly developed and cultivated as grounds for refusal, alternative instruments – ranging from distinctiveness and bad faith to ‘use as a mark’ – are unlikely to yield satisfactory results.”120 This becomes even more relevant in the context of designs, where the trademark grounds for lack of distinctiveness, descriptiveness and bad faith do not exist as a safety net. As a result, even though the intersection between ICH and designs seems to have been unexplored for various reasons, instrumentalizing the public policy ground in view of the defensive protection of ICH seems to be the best and most feasible option to safeguard the interests of indigenous communities.

Cf. also SWD(2020) 264 final, p. 20. Article 25 CDR. 116 Article 25(1)(b) read together with Article 9 CDR. 117 EUIPO Board of Appeal, 6 July 2006, Case R 495/2005-G, Jebaraj Kenneth trading as Screw You OHIM (SCREW YOU), para 30. See also EUIPO Board of Appeal, 25 March 2003, Case R 111/2002-4, Dick Lexic Ltd. v OHIM (DICK & FANNY). 118 Irene Calboli, ‘Overlapping Copyright and Trademark Protection: A Call for Concern and Action’ [2014] Illinois Law Review 25. 119 See European Copyright Society ‘Trademark protection of public domain works: A comment on the request for an advisory opinion of the EFTA Court’ (1 November 2016) < https://​ europeanco​pyrightsoc​ietydotorg.​ files​.wordpress​.com/​2016/​11/​ecs​-efta​-reference​-vigeland​-final​-1nov16​ .pdf> accessed 31 August 2021. 120 Martin Senftleben, ‘No Trademark Protection for Artworks in the Public Domain – A Practical Guide to the Application of Public Order and Morality as Grounds for Refusal’ [2021 forthcoming] GRUR International. 114 115

The protection of cultural heritage by designs  111

CONCLUSION AND OUTLOOK Design law seems ill-equipped to provide positive protection for ICH. The structure of design protection with its narrow scope of protection and short term does not serve the demands of indigenous communities and the intertemporal and generation-transcending nature of ICH.121 The evolutionary nature of ICH requires broader protection than that offered by contemporary design law systems. This is not to say that design law can protect specific instances of ICH expressed in a particular and specific way, created by an individual member of a community which lays claim to the ICH of which the specific sample is representative of. But a larger corpus or style of design does not fit easily in the formalistic corset of design law. A defensive approach to the protection of ICH against abuse seems to promise more success.122 Design law foresees mechanisms that could prevent the abuse of traditional designs that deserve special protection. At the registration phase, but also by way of an invalidity claim, design law has the potential to function as a protective roadblock against a misappropriation of ICH. At this point, these mechanisms still require refinement in order to develop their full effectiveness. At the registration phase, examination of a design against prior art is either non-existent (EU) or fails to scrutinize application to the extent that an effective filtering of applications that could harm indigenous communities is rendered impossible (US). Although enforcing designs that imitate traditional or indigenous designs could prove difficult, the simple fact that litigation can occur constitutes a severe nuisance for indigenous communities who lack the necessary resources or know-how to defend themselves against cultural misappropriation. A recurring argument in the literature puts indigenous communities in a particularly weak position due to their often-precarious economic situation. As a result, they are not always able to design the legal protection of their ICH, nor are they able to monitor potential abuses or effectively respond to legal challenges brought against them on the basis of registered designs incorporating their own designs.123 A way forward out of this uneasy relationship is difficult to outline. This is not made easier due to the largely unharmonized protection of designs at a global level. Although progress has been made at international level towards a Design Law Treaty, this instrument will not provide much substantive harmonization, but it will rather set minimum standards for the registration of designs. One of the more contentious issues is a disclosure requirement for TCEs, which in the current draft of the treaty has been reduced to a non-binding requirement.124 Such a requirement would help, however, to shape a more efficient examination procedure that would detect design application incorporating ICH initially and enable national and regional examination offices to reject such applications. More and better structured information on designs that form part of the world’s ICH would also help to make examination more efficient. Finally, another avenue to pursue is to reject designs on public policy grounds due to the fact that they incor-

121 See however Ruth L. Okediji, Traditional Knowledge and the Public Domain, (2018) CIGI Paper No. 176, available at: https://​www​.cigionline​.org/​publications/​traditional​-knowledge​-and​-public​ -domain/​. 122 Cf. Burri (n 1), 481–482 and Munzer & Raustiala (n 27), 40. 123 Cf. Sainsbury (n 2), 241 and Fisher (n 85), 369. 124 Cf. WIPO General Assembly, WO/GA/51/18, 13 December 2019, at 137, see also the report by the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications, SCT/43/12, 28 ay 2021, at 19.

112  Research handbook on intellectual property and cultural heritage porate ICH expression. Such registrations for designs should only be possible with the express consent of the communities concerned.125

Cf. Sainsbury (n 2), 249.

125

6. The protection of intangible cultural assets by trade secrets and unfair competition law Neethu Rajam and Jens Schovsbo

1. INTRODUCTION Every society offers to protect and preserve diverse narratives that form the foundation of its cultural identity. The shift from Culture 1.0 to Culture 3.0 lies a long path of transformation from patronage to technology, which has immensely altered the approach to production, use and sustainability of cultural end products.1 This transformation has revived concerns over protection and preservation of intangible cultural assets. The UNESCO Convention for Safeguarding Intangible Cultural Heritage (ICH Convention) defines ‘intangible cultural heritage’ as the practices, representations, expressions, knowledge, skills and cultural values associated with communities, groups or individuals and recognized as part of their cultural heritage.2 While intangible assets are transmitted from generation to generation they are constantly recreated by communities and groups in response to their socio-cultural environment.3 However, much of these knowledge and skills are in danger of disappearing due to decline in appropriate measures for their protection. The Operational Directives for the implementation of the ICH Convention notes that while commercialization may support intangible cultural assets, such activities should not, however, threaten the viability of intangible cultural heritage.4 This requires that all appropriate measures, such as the application of intellectual property rights (IPRs), privacy rights and any other forms of legal protection, must be employed to ensure that the rights of the communities, groups and individuals that create, bear and transmit their intangible cultural heritage are duly protected as well.5 In the same vein, the Convention on Biological Diversity (CBD) requires parties to “respect, preserve and maintain knowledge, innovations and practices of indigenous and local communities … and encourage the equitable sharing of the benefits arising from the utilization of such knowledge, innovations and practices.”6 This objective is furthered by the Nagoya Protocol, which also provides for the fair and equitable sharing of traditional knowledge (TK) associated with genetic resources.7 The 1 Pier Luigi Sacco, Guido Ferilli and Giorgio Tavano Bless, ‘From Culture 1.0 to Culture 3.0: Three Socio-Technical Regimes of Social and Economic Value Creation through Culture, and Their Impact on European Cohesion Policies’, Sustainability 10(11): 3923, October 2018. 2 UNESCO (2003) Convention for the safeguarding of the intangible cultural heritage. 3 Ibid, Article 2. 4 Operational Directives for the Implementation of the Convention for the Safeguarding of the Intangible Cultural Heritage, 2008 Revised Version 7.GA (2018), available at https://​ich​.unesco​.org/​en/​ directives (last accessed 11-03-2021). 5 Ibid, at para 104. 6 Article 8(j), The UN Convention on Conservation of Biological Diversity, 1992. 7 Article 1 & Article 3, The Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of Benefits Arising from their Utilization to the Convention on Biological Diversity, 2010.

113

114  Research handbook on intellectual property and cultural heritage United Nations Declaration on the Rights of Indigenous Peoples (UNDRIP) also stipulates that “Indigenous peoples have the right to maintain, control, protect and develop their traditional knowledge…, as well as the manifestations of their sciences, technologies and cultures … And have the right to maintain, control, protect and develop their intellectual property over such traditional knowledge.”8 While there is a long standing for such international instruments, the legal protection of cultural assets has often been unsubstantial and sometimes incongruous.9 IPR, for instance, cover creativity by indigenous artists, performers or inventors.10 However, IPR’s organization around utilitarian incentives and reliance on exclusivity granted for a limited time to individual authors or inventors do not fully capture the particular needs in protecting TK, such as ‘generational innovation’, i.e. the investment in time and effort over generations in the generation of knowledge.11 Secrecy is an age-old measure for protection of valuable information. Trade secrets (TS) are championed as a powerful tool for protecting the present data- and technology-driven paradigm.12 The potential of TS is very broad and since secrecy has long been used by many communities for limiting access to traditional knowledge, genetic resources and intangible cultural heritage, this type of protection prima facie sits well with TK.13 Access to and control over information originating from indigenous communities relates to human rights foundations as a means for protection of cultural identity of communities from exploitation.14 The history of indigenous cultures has shown us many instances of unfair exploitation. Therefore, the questions that arise in the context are (a) whether the legal framework for secrecy offers protection to intangible cultural assets and (b) how can confidential indigenous knowledge that has cultural significance to a community be protected from third party commercialization or misappropriation. In addressing the potential role of TS in protecting cultural assets, this chapter examines the inter-relationship between trade secrets and unfair competition law and its implication 8 The United Nations Declaration on the Rights of Indigenous Peoples (UNDRIP) was adopted by the General Assembly on Thursday, 13 September 2007. 9 Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore, Thirty Seventh Session, Geneva, 2018. 10 Okediji, Ruth, Traditional Knowledge and the Public Domain (June 26, 2018). Centre for International Governance Innovation Papers No. 176, Available at SSRN: https://​ssrn​.com/​abstract​=​ 3202976, p. 4. 11 Long, Doris Estelle, Trade Secrets and Traditional Knowledge: Strengthening International Protection of Indigenous Innovation, 200, in R.C. Dreyfuss and K.J. Strandburg (eds) The Law and Theory of Trade Secrecy – A Handbook of Contemporary Research (Cheltenham: Edward Elgar), p. 498 ff. In the same vein, see Jerome H. Reichman, “How trade secrecy law generates a natural semi-commons of innovative know-how”, 185–200, in R.C. Dreyfuss and K.J. Strandburg (eds) The Law and Theory of Trade Secrecy – A Handbook of Contemporary Research (Cheltenham: Edward Elgar) p. 187 f. (describing IPR as protecting “predefined products of intellectual creativity” whereas trade secrets protect investments as such). 12 Neethu Rajam, ‘The impact of trade secrets for publicly funded research collaborations in Europe’, 295–319, in Jens Schovsbo, Timo Minssen and Thomas Riis, The Harmonization of EU Trade Secret Law, Edward Elgar, 2020. 13 Terri Janke, Managing Indigenous Knowledge and Indigenous Cultural and Intellectual Property, Australian Academic & Research Libraries, 36:2, 95–107, 2005. 14 Bell, Catherine and Caeleigh Shier. “Control of information originating from Aboriginal communities: Legal and ethical contexts.” Études/Inuit/Studies, volume 35, number 1–2, 2011, p. 35–56.

The protection of intangible cultural assets by trade secrets law  115 for the protection of intangible cultural assets. It begins by looking at the diversity of cultural assets (Section 2) and how trade secrecy law could apply to each one of them (Section 3). Then it examines the inter-relationship of trade secrets with competition law (Section 4) and concludes by addressing the measures for enforcement and transferability of TS while safeguarding its traditional uses (Section 5).

2.

DIVERSITY OF INTANGIBLE CULTURAL ASSETS AND INNOVATION

Intangible cultural assets are diverse in the way they emanate and pose challenges for protection. 2.1

Traditional Knowledge (TK)

Traditional knowledge constitutes an incorporeal body of information, which is a part of the heritage of humanity. The UN Permanent Forum on Indigenous Issues defines TK as “developed from experience gained over the centuries and adapted to the local culture and environment […] transmitted orally […]” and is potentially a “source of wealth.”15 It takes the form of stories, songs, artistic expressions, cultural events, beliefs, rituals, laws, languages, agricultural practices, and know-how relating to architecture, textile-making, fishery, health, forestry management and may often be sacred and secret.16 Examples include: the reindeer-herding by Sami tribes who have developed a unique knowledge of their dynamic and changing landscape;17 the use of Maca plant by the Andean People in Peru as a traditional medicine for fertility;18 the use of turmeric by Indian communities for its antibacterial properties;19 the use of Ayahuasca vine native to the Amazon Rainforest, by indigenous tribes of the Amazon for treating various sicknesses;20 Lithuanian rye bread developing skills21 and farming practices of traditional Japanese farmers.22 These are but a few of the many examples of traditional

15 Working Paper for the 23rd Session of the Working Group on Indigenous Populations. United Nations Permanent Forum on Indigenous Issues, 2005. See also, “Report of the Secretariat on Indigenous Traditional Knowledge” United Nations Permanent Forum on Indigenous Issues, 2007. UN Document E/C.19/2007/10. 16 Report of the Secretariat on Indigenous Traditional Knowledge. United Nations Permanent Forum on Indigenous Issues, 2007. UN Document E/C.19/2007/10. 17 UNESCO case studies on Local and Indigenous Knowledge Systems, available at http://​ www ​ . unesco ​ . org/​ n ew/​ e n/​ n atural​ - sciences/​ p riority ​ - areas/ ​ l inks/ ​ b iodiversity/ ​ p rojects/ ​ i ndigenous​ -knowledge​-within​-the​-framework​-of​-ipbes/​tokyo​-workshop/​case​-studies/​case​-study​-20/​ (last accessed 16-03-2021). 18 Geographic Indications and International Trade (GIANT) Case Studies, available at http://​ mandalaprojects​.com/​giant​-project/​maca​.htm (last accessed 16-03-2021). 19 Intellectual Property and Traditional Knowledge, WIPO Publication No. 920(E). 20 Tupper, Kenneth (2009). Ayahuasca Healing Beyond the Amazon: The Globalization of a Traditional Indigenous Entheogenic Practice. Global Networks, Volume 9, p. 117–136. 10.1111/j.147 1-0374.2009.00245.x. 21 Traditional Knowledge as a guide to success, available at https://​www​.wipo​.int/​ipadvantage/​en/​ details​.jsp​?id​=​3620 (last accessed 17-03-2021). 22 Supra note 17.

116  Research handbook on intellectual property and cultural heritage knowledge that are recognized and protected. The WIPO definition considers only TK, which results purely from intellectual activity and creativity in industrial, scientific, literary or artistic fields.23 Thus, it excludes from its definition items, such as human remains, languages in general, and other similar elements of ‘heritage’ in the broad sense. Such a distinction between intellectual property-related forms of traditional knowledge (stricto sensu) from other forms of real or moveable property and from heritage protection enables different measures of IP protection or other forms of protection such as trade secrets.24 2.2

Protection of Genetic Resources

While TK is broad in its scope, there are more specific areas of knowledge, namely traditional medicine, biodiversity-related knowledge associated with genetic resources or relating to plant genetic resources.25 The international legal and policy framework for genetic resources are defined by the CBD, the Nagoya Protocol, the Bonn Guidelines on Access to Genetic Resources and Fair and Equitable Sharing of the Benefits by the WHO, and the International Treaty on Genetic Resources for Food and Agriculture of the UN Food and Agriculture Organization. Genetic resources themselves are not intellectual property as they are not creations of the human mind and thus cannot be directly protected as intellectual property. However, inventions based on or developed using genetic resources and associated with traditional knowledge may be protected as an intangible right.26 In addition to traditional knowledge, other genetic resources are intimately linked to the indigenous populations themselves. These may relate to genetic mutations or cell lines of indigenous populations, which have developed over centuries of genetic isolation or other environmental factors. While such genetic information may not be readily known to the indigenous population, they are still a part of their cultural identity.27 The story of the Hagahai tribe of Papua New Guinea and how their cell lines became the subject of a patent, raising ethical concerns over non-consensual patenting of indigenous genetic resources, is a glaring example of bioprospecting of cultural resources.28 Where the invention 23 Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore, Third Session, Geneva, 2002, WIPO/GRTKF/IC/3/9; “‘traditional knowledge’ … refer[s] to tradition-based literary, artistic or scientific works; performances; inventions; scientific discoveries; designs; marks, names and symbols; undisclosed information; and all other tradition-based innovations and creations resulting from intellectual activity in the industrial, scientific, literary or artistic fields.” 24 Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore, WIPO/GRTKF/IC/37/6, July 20, 2018 at paras 20, 71 and 82. See also Christopher Heath & Anselm Kamperman (eds) New Frontiers of Intellectual Property Law (2008) pp. 37 and 40–41. 25 Supra note 20. 26 Supra note 19, see also Gupta, A.K., WIPO-UNEP study on the role of intellectual property rights in the sharing of benefits arising from the use of biological resources and associated traditional knowledge, 2001. 27 Rajam, Neethu, Governing intellectual property in publicly funded biobanks (Kluwer Law International, 2019). See also Tilousi v. Arizona State University, Case No CV2004-0115 (Ariz Sup Ct, 2004); Havasupai Tribe v Arizona State University, Case No. CV2004-0146 (Ariz Sup Ct, 2004). 28 A recent patent on a Papua New Guinea tribe’s cell line prompts outrage and charges of ‘biopiracy.’ https://​www​.nytimes​.com/​1995/​11/​27/​business/​patents​-recent​-patent​-papua​-new​-guinea​ -tribe​-s​-cell​-line​-prompts​-outrage​-charges​.html (last accessed 1-19-2021); See also Jasanoff, Sheila (ed.), States of Knowledge: The co-production of science and social order (London, Routledge, 2004).

The protection of intangible cultural assets by trade secrets law  117 is connected to genetic resources that relate to traditional knowledge or to indigenous heritage, the current international legal regime requires access and benefit-sharing agreements or deposit of information regarding the said resources.29 Besides, there are internationally recognized obligations, such as those under the Nagoya Protocol, which mandate sharing of genetic resources for general good while at the same time requiring evidence that the genetic resources have been accessed in accordance with prior informed consent. Such standards also protect the confidentiality of information,30 particularly where they relate to TK.31 2.3

Protection of Indigenous Practices

TK has historically developed and has been expressed as ideas and practices, which evolved out of the traditional ways of living by indigenous communities.32 Cultural practices thus reflect values and beliefs held by members of a community for generations. The UN Declaration on the Rights of Indigenous Peoples recognizes the right of indigenous peoples “to promote, develop and maintain their institutional structures and their distinctive customs, spirituality, traditions, procedures, practices.”33 The ICH Convention also recognizes ‘social practices and rituals’ within its definition of intangible cultural heritage.34 While a precise definition of cultural practice is elusive, efforts have been made to protect cultural practices as intangible property. The WIPO intergovernmental committee protects expression of cultural practices as traditional cultural expressions (TCEs). Such expressions are the products of creative intellectual activity and may comprise pre-existing materials dating from the distant past that were once developed by ‘authors unknown’ 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.35 TCEs may include, inter alia, sacred and secret TCEs, recordings and documentation of TCEs, and indigenous words, secret or religious signs, designs, names and symbols.36 The diversity of cultural assets demonstrates that although traditional knowledge, genetic resources and TCEs are seen as an integral part of cultural heritage, each of them distinctly See e.g. Rule 31 of European Patent Convention; See also OJ EPO 2010, 498. The Nagoya Protocol provides a mechanism under Article 17(4) by which the information contained in a certificate could be declared confidential; so also under Art. 14 the words ‘without prejudice to confidentiality’ have been used. 31 The Tkarihwaiéri Code of Ethical Conduct on Respect for the Cultural and Intellectual Heritage of Indigenous and Local Communities Relevant for the Conservation and Sustainable Use of Biological Diversity, adopted by the Conference of the Parties at its tenth meeting, in October 2010. Available at https://​www​.cbd​.int/​traditional/​code/​ethicalconduct​-brochure​-en​.pdf (last accessed 5-5-2021); Art. 31 of the code reads: “Confidentiality of information and resources should be respected, subject to national law. Information imparted by the indigenous and local communities should not be used or disclosed for purposes other than those for which it was consented to and cannot be passed on to a third party without the consent of the indigenous and local community. In particular, confidentiality ought to be applied to sacred and/or secret information.” 32 Ulia Popova-Gosart, Traditional Knowledge & Indigenous Peoples, WIPO, 2010. 33 Art. 34, UN Declaration on the Rights of Indigenous Peoples, 2007. 34 Supra note 4. 35 WIPO/GRTKF/IC/37/7. 36 WIPO/GRTKF/IC/5/3; WIPO, Consolidated Analysis. TCEs include traditional music, songs, visual art, traditional musical instruments, handicrafts (including the designs and ‘styles’ embodied in them), and performances of TCEs. 29 30

118  Research handbook on intellectual property and cultural heritage raises legal and policy-based questions that seek different approaches towards its protection. IP protection, particularly patents, is core to the innovation frontier and is offered to inventions that are new, inventive and capable of industrial application.37 Such incentive for protection of individual creativity is distinguishable from the ‘safeguarding’, ‘preservation’ and ‘promotion’ of cultural heritage, which is in line with the viability of a community’s knowledge and innovation.38 In addition, long-standing experience of IPRs and traditional knowledge reveals a greater potential for appropriation and commercialization of knowledge that legitimately belongs to indigenous communities.39 Therefore, in the absence of a sui generis protection for intangible cultural assets, viability and sustainability of traditional cultural resources requires conjoint use of different legal measures that are suited to the given cultural asset.

3.

USING TRADE SECRETS FOR PROTECTING INTANGIBLE CULTURAL ASSETS

Trade secret law enables individuals or companies to prevent secret information, which is lawfully within their control from being disclosed, acquired, or used by others without their consent in a manner contrary to honest commercial practices.40 TS may take different forms, such as strategic business information (e.g., list of clientele, market plans, supplier information, etc.), technical information (e.g., formula, recipes, genetic materials, manufacturing processes, etc.), product information or a collection of valuable information.41 TRIPS obliges states to offer protection of trade secrets42 and this has boosted protection internationally, at least in developed countries. By way of example, the EU adopted a directive in 2016 which obliges the 27 EU states to adopt legislation on the protection of trade secrets.43 The EU Directive reflects how the protection for trade secrets is justified both in the incentive paradigm known from IPR and in considerations found in unfair competition law.44 This

37 The TRIPS Agreement is Annex 1C of the Marrakesh Agreement Establishing the World Trade Organization, signed in Marrakesh, Morocco, on 15 April 1994. The text of the treaty can be found, e.g., at https://​www​.wto​.org/​english/​docs​_e/​legal​_e/​27​-trips​_01​_e​.htm. 38 Supra note 36. 39 Dennis S. Karjala and Robert K. Paterson, The Case Against Property Rights in Old Intangible Indigenous Cultural Property, 15 Nw. J. Tech. & Intell. Prop. 1 (2017). 40 WIPO (World Intellectual Property Organization) (1998–9) Draft Report, Fact-Finding Missions on Intellectual Property and Traditional Knowledge. Geneva: WIPO. 41 Simon Brascoupé and Karin Endemann, Intellectual property and aboriginal people: a working paper, 1999. 42 Supra note 37. 43 Directive (EU) 2016/943 of the European Parliament and of the Council of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure OJ L 157, 15.6.2016, p. 1–18. The development in the EU to some extent is inspired by the US; see Sharon K. Sandeen, “Through the looking glass: trade secret harmonization as a reflection of US law”, p. 38–84, in Jens Schovsbo, et al., The Harmonization of EU trade secret law, Edward Elgar, 2020. 44 See Directive 2016/943, point 2 (stressing the role of trade secrets as a complement or as an alternative to intellectual property rights which allows creators and innovators to derive profit from their creation or innovation) and point 4 (stressing the protection against dishonest practices and misappropriating).

The protection of intangible cultural assets by trade secrets law  119 broadness makes trade secrets particularly apt to protect TK, which – as explained above – does not really fit under the incentive paradigm. The international base line for TS is set by TRIPS under Art. 39(1) and (2), which links Article 10bis of the Paris Convention in relation to the protection against unfair competition.45 More concretely, TRIPS Art. 39(2) obliges member states to protect such information from being “disclosed to, acquired by, or used by others without their consent in a manner contrary to honest commercial practices.”46 As per the tripartite test under TRIPS, protection is required for information which: ● is secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question; ● has commercial value because it is secret; and ● has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret. The above definition prompts the question as to what extent intangible cultural assets transmitted from one generation to the next could be regarded a secret? To answer this question, the essential conditions for protection of TS need to be considered. 3.1

Ownership and the Nature of Information

The provision under TRIPS clarifies that both natural and legal persons can benefit from protection of their undisclosed information, if the information is lawfully in their control.47 The use of ‘control’ (not ‘rights’) over secret information signifies the non-proprietary nature of the right. As stated in the EU Directive, unlike with IPRs, trade secrets do not create any exclusive right to know-how or information protected.48 The independent discovery of similar information remains legal, just like reverse engineering. Now turning to intangible cultural assets, it is not uncommon to find transitional knowledge that has been passed from one generation to the other within defined communities. Therefore, it is often the case that there exists a difficulty in determining the owner, creator or inventor of the given traditional knowledge. The fundamental differences in concepts of property, grounded in individualized ownership, and indigenous notions of property, rooted in more communal concepts, suggest a need for a collective or community approach in the control of

45 Art. 39(1) TRIPS. See on the relationship to the Paris Convention, Sam Ricketson, The Paris Convention for the Protection of Industrial Property – A Commentary (Oxford University Press 2015), §§ 13.61 ff. TRIPS in Art. 39(1) and in the headline for Sect. 7 refers to ‘undisclosed information’. This expression was used to avoid referring to an expression linked to a given legal system, see Daniel Gervais, The TRIPS Agreement – Drafting History and Analysis, 4th ed (2012) § 2.486. It thus covers what may in national law be called ‘trade secrets’ or ‘confidential information’, ibid. 46 Footnote 10, TRIPS provides: “For the purpose of this provision, ‘a manner contrary to honest commercial practices’ shall mean at least practices such as breach of contract, breach of confidence and inducement to breach, and includes the acquisition of undisclosed information by third parties who knew, or were grossly negligent in failing to know, that such practices were involved in the acquisition.” 47 Art. 39(2) TRIPS. 48 EU TS Directive, point 16.

120  Research handbook on intellectual property and cultural heritage such information.49 Customary law has long been recognized by the international community as a part of international law to fill the gaps left by treaty law, particularly in the context of indigenous communities.50 In the Australian case of Bulun Bulun v. R & T Textiles, the court held that customary law is part of the factual matrix, which characterizes the fiduciary relationship between the individual and the community, and is one of mutual trust and confidence.51 Therefore, customary law could recognize the ownership right of indigenous communities through, for instance, establishing the ‘reasonable steps to protect’ cultural assets.52 The ownership right to cultural knowledge may take different forms of custodianship, guardianship, collective ownership or cultural responsibility.53 Such co-ownership rights allow not only individual creators to protect their expression but also the community as such. Further, knowledge from an unidentified source that has been passed from generations can also be protected by such ownership models.54 One of the greater advantages of using trade secrecy over intellectual property rights lies in the fact that it accommodates communal ownership of traditional knowledge, which is difficult in a traditional intellectual property system due to its individualistic baseline.55 Thus, TS can be kept by several parties, as long as it is not known to other persons working in the field.56 3.2

‘Secrecy’ and ‘Reasonable Steps’

For the information to be ‘secret’ it must not, as a body or in the precise configuration and assembly of its components, be generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question.57 Just as no IPRs can be issued for knowledge that is already part of the public domain, no information already in the public domain deserves legal protection.58 Although cultural assets and knowledge can be passed from one generation to the next, it is still possible to keep them a secret so long as it is not ‘readily accessible’ to outsiders. To illustrate this point, Ruth Okediji divides TK into three categories depending on their level of secrecy (or not): (i) “secret or sacred (or both) traditional 49 Gelvina Rodriguez Stevenson, Trade Secrets: The Secret to Protecting Indigenous Ethnobiological (Medicinal) Knowledge, 32 N.Y.U. J. INT’l L. & POL. 1119 (2000). 50 John C. P. Goldberg, Henry E. Smith, Andrew S. Gold, Daniel B. Kelly, The Oxford Handbook of the New Private Law, 2020, at p. 433. The Legal capacity of the customary law is recognized by the Statute of the International Court of Justice, Article 38(b): “… Customs that are accepted as legal requirements or obligatory rules of conduct, practices and beliefs that are so vital and intrinsic a part of a social and economic system that they are treated as if they are laws.” 51 (1998) 41 IPR 513: See also Yumbulul v Reserve Bank of Australia [1991] FCA 332; (1991) 21 IPR 481. 52 For example, the Case of the Mayagna (Sumo) Awas Tingni Community v Nicaragua (“Awas Tingni”) (2001), Inter-Am Ct HR (Ser C) No 79, the Inter-American Court examined customary practices and possession of land could serve as evidence that an indigenous community is entitled to certain lands. 53 Supra note 24. 54 Ibid. 55 To be sure both copyright and patent law allow for co-ownership and GI protection is accorded to organizations representing, e.g., producers. Still, it seems fair to see these as exceptions to the baseline. 56 WIPO FAQ available at https://​www​.wipo​.int/​tradesecrets/​en/​tradesecrets​_faqs​.html (last accessed 30-03-2021). 57 Article 39 of TRIPS Agreement. 58 Dessemontet, ‘Protection of Trade Secrets and Confidential Information’ 349–350.

The protection of intangible cultural assets by trade secrets law  121 knowledge”; (ii) “closely held traditional knowledge”, (iii) “widely disseminated traditional knowledge”.59 Whereas the first category covers information, which is secret also in a trade secret law’s sense, the last category clearly is not. Therefore, just like in all aspects of trade secret law, an individual assessment based on the facts is needed and the mere categorization of information as ‘TK’ does not carry any weight in itself. In addition, the secrecy requirement also requires demonstration of ‘reasonable steps’ taken by communities or indigenous societies towards the protection and control of such information within the community. The ‘steps’ taken may be legal (contractual) or following from cultural or religious practices. This approach is favorable so long as such information remains protected. But where diffusion of information takes place without the free and informed consent or in violation of indigenous laws, traditions or customs, protection is lost and there is no way of ‘reclaiming’ secrecy. While secrecy may be lost, it does not absolve the community’s right to restitution and protection of their cultural rights.60 For example, a sacred, private ritual of the Zia Pueblo people of New Mexico was illicitly disclosed to the outside world, in spite of the community’s efforts to keep it secret through strict protocols regulating visitors and photography. The ritual was required to be performed in open air to enable the participants to communicate with the Creator and tribal spirits. Photographs were taken from an airplane flying over the site, which was printed in a local newspaper, thus disclosing the community’s rituals. While the secrecy of the practice and the symbols were lost, the Zia have since raised awareness among the New Mexican government and have formed distinct protocols for users of their sun symbol, which seeks acknowledging the community.61 In Dupont. v. Rolfe Christopher, a US Court of Appeal found that a similar aerial adventure leading to the exposure of knowledge about the construction of a plant for production of chemical products constituted a violation of trade secret law.62 Registers, inventories and databases containing TK and TCEs are valuable resources aimed at safeguarding cultural heritage. However, these can unwittingly make such resources vulnerable to exploitation. Therefore, strategic management of secrecy and confidentiality measures must be ensured during digitization, storage and dissemination of traditional information.63 The WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore in its draft model law on protection of TK notes that

59 Ruth L. Okediji, Traditional Knowledge and the Public Domain, CIGI Papers No. 176, June 2018, p. 14. See also “The Protection of Traditional Cultural Expressions/Expressions of Folklore: Revised Objectives and Principles” (WIPO/GRTKF/IC/9/4), where the idea of a tiered approach to protecting secret TECs was introduced at the WIPO IGC discussions. 60 Article 11(2) of UNDRIP. 61 Brigitte Vézina, Ensuring Respect for Indigenous Cultures: A Moral Rights Approach, CIGI Paper No. 243. 62 E. I. Dupont de Nemours & Company, Inc. v. Rolfe Christopher et al., 431 F.2d 1012 (5th Cir. 1970). See Jeanne C. Fromer, Trade secrecy in Willy Wonka’s Chocolate Factory, 3–17, in R.C. Dreyfuss and K.J. Strandburg (eds) The Law and Theory of Trade Secrecy – A Handbook of Contemporary Research (Cheltenham: Edward Elgar Publishing), p. 14 f. See also Lemley, p. 124 in The Law and Theory of Trade Secrecy – A Handbook of Contemporary Research, points out that the information to be gained from seeing the site was protected even though the owner of the plant (Dupont) could have built a temporary roof over the site but only at “enormous expense”. In this way, Lemley argues trade secrets law reduced the costs of protecting the information. 63 WIPO/GRTKF/IC/37/7.

122  Research handbook on intellectual property and cultural heritage while databases must be improved to protect TK, they may not be used to store secret TK.64 Further, states are obliged to keep confidential information pertaining to TK a secret with adequate protection. 3.3

Commercial Value

‘Commercial value’ in general terms is the economic worth of the good, the process, practice, methods or service in the production, consumption, and transaction process.65 The reference to commercial value makes it clear that information that has just private, emotional or sacred value falls outside of the scope of protection. It would seem, however, that it does not take much for information to cross the line from an unprotected sphere to the commercial one. The TRIPS Agreement only offers a minimum requirement that the information ought to have a “commercial value arising from the fact that such knowledge is being kept a secret.”66 This in turn implies that the commercial value of a TS may be actual or potential.67 In this way, information which may be assumed to come into value is covered. In the same vein, information which has commercial value to third parties is covered even if the information has no direct economic value in the community itself in which it was developed. Still, in the context of traditional cultural assets, commercial value may be hard to assess as the community may keep the knowledge secret solely for sacred, spiritual and non-commercial purposes.68 So, also, they often may not know the commercial value of the knowledge or not be in a position where the information can be turned into a commercial asset. Some countries like Australia have proposed a production function approach to assess commercial value of identifiable traditional knowledge by using criteria like identifiability, control, future economic benefits, associated costs, etc.69 However, the value of non-identifiable traditional knowledge, such as that subject to secrecy, is difficult to assess.70 Even in the context of a commercial concern, it is often difficult to assess the actual impact brought about by certain knowledge to the concern.71 Hence a realistic approach often adopted by courts of law is to equate value and the loss suffered by the party concerned. It has been noted by indigenous communities that TK may possess potential commercial value apart from deeper religious, ethnographic or existential significance, the illegitimate exploitation of which may cause harm to such com-

WIPO/GRTKF/IC/40/6, April 2019. Law insider legal dictionary. 66 Art. 39 (2)(b), TRIPS, 1994. 67 Similarly also the EU Directive, see point 14. See also Long, supra note 11, p. 522 f. and see also Carlos M. Correa, Trade Related Aspects of Intellectual Property Rights. A Commentary on the TRIPS Agreement (Oxford University Press 2007) 373; Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470 (1974), the US Supreme Court observed: “Trade secret offers trade secret holder an opportunity to obtain an advantage over competitors who do not know or use it,” thus suggesting a potential or hidden value of the trade secret. 68 In University of Connecticut v. Freedom of Information Commission, HHBCV094021320S, 2010, the Connecticut Supreme Court held that a public university is capable of creating and maintaining trade secrets even if it does not engage in a ‘trade.’ 69 Methods for estimating the market value of Indigenous Knowledge final report, 2019, https://​www​ .ipaustralia​.gov​.au/​about​-us/​news​-and​-community/​news/​methods​-estimating​-market​-value​-indigenous​ -knowledge. 70 Ibid. 71 Ibid. 64 65

The protection of intangible cultural assets by trade secrets law  123 munities.72 For instance, in Foster v. Mountford, an injunction was granted against a researcher who sought to publish information of deep religious and cultural significance belonging to the indigenous community; the Central Land Council representing the Central Australian Aboriginal Peoples successfully argued that publishing this information would inflict cultural damage upon a minority group.73 On the other hand, US courts have found that religious material is only protected if the plaintiff can point to some commercial harm or economic advantage of the defendant.74

4.

TRADE SECRETS, UNFAIR COMPETITION AND CULTURAL ASSETS

Trade secrets only make sense to information which can be kept secret. If the ‘secret’ is apparent in a product or in other ways is made public as part of its use, secrecy is not an option. For information relating to processes, etc., TS protection may be easier to apply in comparison with IPRs as it is not only cost-effective but also does not have many formalities, unlike other property regimes. Also, trade secrets (‘know-how’) may have value in combination with IPR, which offers competitive advantage, e.g., to the working of an invention.75 The TRIPS Agreement is based on the premise that protection against unfair competition should include protection for undisclosed information.76 To align with this approach, the TRIPS Agreement makes reference to the protection against unfair competition as provided in the Paris Convention for the Protection of Industrial Property.77 Under the relevant provisions of the Paris Convention, any act of competition contrary to honest practices in industrial or commercial matters constitutes an act of unfair competition.78 In addition, the provision also provides: (3) The following in particular shall be prohibited: (i) all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a competitor; (ii) false allegations in the course of trade of such a nature as to discredit the establishment, the goods, or the industrial or commercial activities, of a competitor; (iii) indications or allegations the use of which in the course of trade is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods.

72 Langwick, S.A., 2017. “The Value of Secrets: Pragmatic Healers and Proprietary Knowledge.” In African Medical Pluralism, edited by W. C. Olsen and C. Sargent, 31–49. Bloomington: Indiana University Press. 73 (1977) 14 ALR 71. 74 Long, supra note 11, p. 523 f. with reference in particular to United States Court of Appeals, Ninth Circuit. Religious Technology Center v. Robin Scott, 869 F.2d 1306, 10 U.S.P.Q.2d 1379 No. 87-5766, decided Mar. 10, 1989. 75 WIPO, Protection Against Unfair Competition, Geneva, 1994. 76 Enquiries into intellectual property’s economic impact, OECD 2015. 77 Supra note 45. 78 Art. 10bis (2) Paris Convention, 1883.

124  Research handbook on intellectual property and cultural heritage Outside of these examples the scope of the obligations of Art. 10bis remain elusive and much is left to the member states.79 Unfair competition law offers remedial action against ‘dishonest commercial practices’ between commercial entities in relation to their market behavior.80 Thus, it offers the possibility of preventing certain acts of disclosure, acquisition and use of information, when such acts have been made without their consent and “in a manner contrary to honest commercial practices.”81 The nature of ‘competition’ will be determined in each country according to its own concepts.82 Likewise the concept of ‘honest’ is relative to the values of a particular society at a given point in time and may be judged in a subjective manner.83 The relationship between TS and unfair competition law is unique. In the case of industrial property rights, competition law may serve as a supplement to the exclusive rights. However, the law of TS as under the TRIPS Agreement requires it to be based in the discipline of unfair competition law.84 At the same time, it has been asserted that the law relating to unfair competition law has no purpose in protecting TS per se unless the ownership, use and/or enforcement of TS generate anti-competitive effects.85 Therefore repression of unfair competition is essential for TS to exist; however, as a tool of protection of TS, unfair competition law only becomes operational where there arises a need to address breach of confidence, misappropriation, abuse of dominant position, etc.86 Prima facie the requirements of competition within a competitive environment are often missing in the context of intangible cultural assets, which have a foundation based on customs, rituals, practices and habits that have evolved over centuries. Furthermore, as discussed above, the practical or commercial value of TK may often not be assessed, or they may have different kind of value or significance. However, this does not exclude the potential of such resources from being regarded as commercial.87 Therefore, the precise characterizations of unfair competition would apply to acts of commercializing TK-related products that falsely or confusingly suggest that they are genuine products of an indigenous or local community when they are not actually endorsed by such a community.88 Such an approach presupposes a distinction between TK that may be subjected to the standards of both secrecy and unfair competition requirements, and TK that may be a secret but not subject to the standards of commerce being information having personal value. For instance, where an indigenous group holds valuable information regarding a medicinal plant used in the treatment of the members of its community, and a pharmaceutical company comes along and obtains such information See Ricketson, supra note 45, §§ 13.33. UNCTAD-ICTSD Resource Book on TRIPS 527. 81 Ibid. 82 G.H.C. Bodenhausen, Guide to the Application of the Paris Convention for the Protection of Industrial Property (1968), at 144. 83 Höpperger, M., Senftleben, M. (2007) Protection Against Unfair Competition at the International Level – The Paris Convention, the 1996 Model Provisions and the Current Work of the World Intellectual Property Organization. In: Hilty, R.M., Henning-Bodewig, F. (eds) Law Against Unfair Competition. MPI Studies on Intellectual Property, Competition and Tax Law, Vol 1. Springer, Berlin, Heidelberg. 84 Supra note 80. 85 Study on Trade Secrets and Confidential Business Information in the Internal Market, Ref. Ares (2016)98815 – 08/01/2016. 86 Ibid. 87 Protect and promote your culture: A practical guide to intellectual property for indigenous peoples and local communities, WIPO, at page 57. 88 Supra note 21 at p. 15. 79 80

The protection of intangible cultural assets by trade secrets law  125 by illicit means, such a case conceivably comes within the purview of unfair competition. On the contrary, where a secret religious custom or practice of an indigenous group is taped or photographed secretly by an enthusiastic scholar, it may not typically fall within ‘honest practices in industrial or commercial matters’. Although such information is confidential and has personal value to the tribe, it does not possess a commercial value. So, also, the use by the researcher of such information may be in the course of their academic endeavor rather than a typical commercial trade. Regardless, in many jurisdictions ‘personal value’ of confidential information may be protected under privacy laws, as a breach of confidence, or as a tort.89 Another point to be considered in assessing the unfair competition aspect of TK is the state of value transformation of the resource either into a secret or other protective measure that the community may have taken for the protection of such TK.90 Value transformation enables greater control over the information by the indigenous community. For example, the San people of Africa, who possessed TK relating to certain medical properties of a plant, entered into a long-term benefit-sharing agreement with HGH pharmaceutical company in return for the valuable information they possessed.91 But, where such intangible cultural assets are unstructured, ‘public domain’ challenges arise due to the diffusion of such resources.92 While TRIPS forms a general standard, the legal paradigm for enforcement of TS differs substantially between different jurisdictions based on the type of legislation, the legal regime under which TS are protected and in turn the legal framework (penal or civil) under which the TS are assessed.93 The complex interdependent relationship between TS and unfair competition law poses particular challenges for TK, which may be characterized as follows. 4.1

Misappropriation of Indigenous Trade Secrets

Under the TRIPS, holders of TS have the right to prevent (1) disclosure to; (2) acquisition by; or (3) use by others without consent. Misappropriation occurs when these acts are done in a “manner contrary to honest commercial practices.” The WIPO Overview provides an elaborate list of acts which amount to misappropriation, which includes direct acts such as theft, as well as indirect acts such as unjust enrichment.94 Unfair competition rules offer remedial action against dishonest commercial practices, but they are not in themselves exclusive rights.95 For a civil action against misappropriation of undisclosed information, it is essential for the holder of information to prove that such information was under their control and that an infringement has resulted due to the breach of confidence by the defendant and that the alleged

89 Pitjantjatjara Council Inc and Peter Nganingu v John Lowe and Lyn Bender (1983) Aboriginal Law Bulletin 1, 1–16.; See also Douglas v Hello! Ltd (No. 3) [2005] EWCA Civ 595. 90 Vogel, Joseph Henry, La transformación del conocimiento tradicional en secretos comerciales, 2000. 91 Roger Chennells, ‘Traditional Knowledge and Benefit Sharing After the Nagoya Protocol: Three Cases from South Africa’, 9/2 Law, Environment and Development Journal (2013), p. 163. 92 Ruth L. Okediji, Traditional Knowledge and the Public Domain, CIGI Papers No. 176, June 2018. 93 Bengtsson H., International Report. In: Këllezi P., Kilpatrick B., Kobel P. (eds) Abuse of Dominant Position and Globalization & Protection and Disclosure of Trade Secrets and Know-How. LIDC Contributions on Antitrust Law, Intellectual Property and Unfair Competition. Springer, Cham (2017). 94 WIPO/GRTKF/IC/7/5 at p. 47. 95 Supra note 81.

126  Research handbook on intellectual property and cultural heritage infringer obtained specific benefits from the use of the secret information.96 Misappropriation of undisclosed information by third parties who knew, or were grossly negligent in failing to know, that such practices were involved in the acquisition, also amounts to a dishonest commercial practice.97 Protection against misappropriation of trade secrets may be limited where the knowledge is leaked into the public domain, or is independently discovered by another individual, or is reverse engineered. In such instances, even though the information may not remain a secret as such, traditional knowledge and cultural expressions may still seek protection from unjust enrichment in the form of acknowledgment or benefit-sharing. Internationally, there are widely divergent views as to what specific uses of TK could be considered misappropriation, unjust enrichment or other illegitimate uses, and what usage of TK by people beyond the original community (including commercial uses) could be considered fair and legitimate.98 Currently the determination of unjust or unfair uses of TK rests on the national laws of different states.99 Many legal systems are sensitive to the protection of the TK and the culture of aboriginal people and regard them as an essential part of a nation’s cultural heritage. For instance, Hoodia Gordonii is a plant that grows in southern Africa, has an appetite suppressant quality and is considered traditional knowledge belonging to the San Community. When this carefully guarded information was independently studied and patented by a scientific council, it was opposed by the community, which secured a benefit-sharing agreement along with an acknowledgement of the community’s knowledge.100 4.2

Trade Secrets Within Contractual Obligations

Despite the term misappropriation being broad, there are other acts of misappropriation within contractual relations which are contrary to honest practices. Examples include coercion, fraud, breach or inducement of breach of contract, including benefit-sharing agreements, breach or inducement of breach of confidence or confidentiality, breach of fiduciary obligations or other relations of trust, deception, misrepresentation, as well as the provision of misleading information when obtaining prior informed consent for access to traditional knowledge.101 Firms that seek access to genetic resources and related traditional knowledge aim to eventually commercialize a product developed from that resource and maintain as much of

EIPO, The baseline of trade secrets litigation in the EU Member States, 2018. Footnote of Art. 39 of TRIPS, 1994; In some jurisdictions, third parties are liable on the basis of legal theory of accessory liability, whereas in other jurisdictions, third parties are liable under statutory law (see supra note 77). 98 Supra note 24; A claim for unjust enrichment is available in some countries only, such as, Czech Republic, Netherlands, Switzerland, Belgium, Estonia, Finland, Lithuania, US and Spain (Ref. Ares (2016)98815 – 08/01/2016: Study on Trade Secrets and Confidential Business Information in the Internal Market). 99 For instance, Section 301 of the Australian Environment Protection and Biodiversity Conservation Act 1999 (EPBC Act) provides for equitable benefit-sharing for using indigenous resources. Likewise, the Portuguese Decree Law No.118, which is Europe’s first sui generis law for TK protection, creates the link between sui generis frameworks for TK on the one hand and the concept of misappropriation in unfair competition law on the other: in jurisdictions like Peru, their sui generis law for protection of TK has taken elements of existing protection in the area of repression of unfair competition and applied them to TK; see supra note 94. 100 Supra note 92. 101 Supra note 95. 96 97

The protection of intangible cultural assets by trade secrets law  127 a competitive advantage over potential rivals as possible.102 Those having access to the trade secret can share the way they use, improve this usage and co-operate on providing by-products out of such information.103 Where the trade secrets are transferred based on an access and benefit-sharing agreement, it is easier to protect the secret information, which is part of the TK. However, where TK has been obtained or disclosed to outsiders on the basis of a relationship of confidence, that, in the strict legal sense, may be sufficient to deny trade secret protection to such TK.104 In common law jurisdictions, like for example in the UK, the trade secrecy law sanctions breaches of confidence where the information was imparted in confidence, thus giving rise to a duty.105 In an action for breach of confidence, the information that is disclosed must pass a test of confidentiality i.e. it should have been communicated in circumstances giving rise to an obligation of confidence and have been misused or used in an unauthorized fashion. The extent to which the unfair competition doctrine is shaped in a legal system varies widely and so does the protection for TK resources under unfair competition law.106 4.3

Shared Confidentiality Within and Between Communities

Secret knowledge of a community may be known by the community as a whole, or few members of the community or may even be shared between communities. In such cases, it would be expected that some form of internal benefit-sharing exists to ensure there is no single, individual beneficiary.107 However, this will depend on customs and practices of such communities. When an Aboriginal community restricts access to traditional knowledge to members of that community, its action may be compared with that of a company that maintains a trade secret, even though the secret is known to a number of partners or employees.108 Under such circumstances, disclosure by one member of the tribe or by members of a similar tribe of the shared secret knowledge may pose challenges similar to unfair practices. While it is unclear as to how the disclosure of a shared secret may be dealt with amongst different communities, disclosure by a member of the same community may be treated akin to an employee owing a fiduciary duty.109 For instance, the Australian 1988 Aboriginal Heritage Act notes

102 United Nations Conference on Trade and Development, the Convention on Biological Diversity and the Nagoya Protocol: Intellectual Property Implications: A Handbook on the Interface between Global Access and Benefit Sharing Rules and Intellectual Property, 2014. 103 Portuese, Aurélien, From Non-Disclosure Agreements to Trade Secrets: Antitrust Implications, European Competition Law Review, 2018. 104 Supra note 77. 105 Ibid. 106 For instance in Australia, the Competition and Consumer Commission has been very active in dealing with issues relating to TK and cultural assets; see Australian Competition and Consumer Commission v Birubi Art Pty Ltd (in liq) (No 3) [2019] FCA 996 (26 June 2019); Australian Competition and Consumer Commission v Australian Dreamtime Creations Pty Ltd (2009) 263 ALR 487. 107 Ruiz Muller, Manuel, Protecting Shared Traditional Knowledge: Issues, Challenges and Options; ICTSD Programme on Innovation, Technology and Intellectual Property; Issue Paper No. 39; International Centre for Trade and Sustainable Development, Geneva, Switzerland, (2013). 108 Simon Brascoupé and Karin Endemann, Intellectual property and aboriginal people: a working paper, 1999. 109 Bulun Bulun & Anor v R & T Textiles Pty Ltd [1998] Indig Law B 87; (1998) 4(16) at para 14 and 18.

128  Research handbook on intellectual property and cultural heritage that people with power to gain information also have an obligation to keep it confidential and requires that a person must not, in contravention of Aboriginal tradition, divulge information relating to (a) an Aboriginal site, object or remains or (b) traditions; and failure to comply with this requirement may be met with sanctions.110 Irrespective of the fiduciary duty imposed on the employee, they do not apply to general skills and knowledge and cannot interfere with the employee’s ability to make a living.111 In the context of a community’s TK, the proficiency or knowledge of the members of the community is nurtured within the community and such skills the member possesses may not have an identity disassociated from the community and its teaching. This is often problematic in addressing the autonomy of the individual in relation to the community.112

5.

CONCLUSION AND WAY FORWARD

The convergence of trade secrets and cultural knowledge is not new. However, there exists a divergence between the system of secrecy as understood by indigenous communities and the legal system of undisclosed information under TRIPS. While indigenous secrecy focuses on protection and preservation of culturally valuable or sacred knowledge, the legal system of secrecy is defined within the limits of commercial value, unfair competition and protective mechanisms within contractual obligations. In addition, TK is often disclosed within a defined community with multiple members or communities who may share the same secret knowledge. In spite of such divergence, the legal mechanism for protection of secrecy has a greater potential for protecting various types of intangible cultural assets. Rooted in secrecy as an essential criterion, trade secrets are regarded more economical with lesser obligations (such as the need for an application procedure or registration) in comparison with other protection mechanisms such as IPRs. Further, where conscious efforts are made, it is possible to maintain the secrecy of the information forever. TS are an effective tool in the absence of a suitable mechanism for protecting the diverse TK like sacred rituals, practices, art, medicinal treatments, etc. Importantly, trade secrets enhance the role of preservation of and respect for cultural assets that are integral to indigenous communities. Private property rights are unfit to protect some aspects of TK and would most certainly accelerate the commodification, disintegration and destruction of TK.113 For the types of traditional knowledge which satisfy the tripartite test, trade secrets represent an important link between ‘traditional’ IPR and TK, which could play a critical role in the protection and encouragement of indigenous innovation by providing for immediate protection for certain indigenous innovations.114 The advantages of trade secrets to indigenous knowledge do not just lie in their ability to protect communities against misappropriation, but in the nature of protection itself. Michael Madison has highlighted how trade secrets can serve a structural

S 35, Aboriginal Heritage Act 1988. Supra note 77, at p. 141. 112 Deepa Varadarajan, A Trade Secret Approach to Protecting Traditional Knowledge, 36 Yale J. Int’l L. (2011). 113 Genetic Resource Action International (GRAIN), “The great protection racket: Imposing IPRs on traditional knowledge,” Seedling (April 2004). 114 Supra note 11, Long, at p. 500 f. and 534. 110 111

The protection of intangible cultural assets by trade secrets law  129 function in the organization of groups.115 In order to satisfy the protection criteria, the holders of the information must organize themselves to identify and preserve their secrets. Having done so, another benefit of trade secrets protection lies in its ability to clear the way for the sharing of the information, both within the group and with outsiders.116 In spite of its many merits, trade secrets have also been criticized to be less effective to the forces of diffusion unless meticulously guarded. Any action in relation to trade secrets also comes to play only after such diffusion has taken place, thus offering uncertainty in the protection of valuable knowledge. Therefore, in striking a balance and in finding a solution to the needs of indigenous tribes, it is essential to consider governance mechanisms for protecting indigenous secrets. These may include: ● Indigenous mobilization towards protection of traditional resources – This seeks active efforts from the part of the state towards creating an environment and support mechanisms for protecting indigenous innovation, including secrecy. It involves encouraging indigenous communities in developing protocols, codes of conduct, contracts and other practical tools for any kind of access to sacred and confidential knowledge. While access and benefit-sharing laws have been developed in many jurisdictions, efforts should also be made to address the conditions of use for confidential TK. ● Promoting intercultural cooperation and understanding of shared TK and secrets enables communities with shared knowledge to find effective ways to protect such secrets from outsiders in accordance with their traditions and customs. ● Addressing unfair competitive practices in relation to TK – Unfair exploitation of indigenous people and their knowledge must be addressed through regulation. Fair scientific research has the ability to bring in benefits to the community in many ways; however, there needs to be a ‘culturally safe research practice’ that ensures such fairness.117 Such practices must essentially ensure that researchers take free informed consent of communities and be bound by any non-disclosure requirements as required by such communities. In addition, support for indigenous innovation and commercialization must include measures to enable access to existing statutory mechanisms and regulatory agencies. For instance, in Australia indigenous stores and fair trade centers belonging to aboriginal communities are greatly encouraged and are supported by the Fair Trade Department and the Australian Competition Commission.118 Consequently, national competition authorities can play an active role in curbing unfair practices affecting such communities.

115 Madison, Michael J., Open Secrets (August 14, 2009). The Law and Theory of Trade Secrecy: A Handbook of Contemporary Research, Rochelle C. Dreyfuss, Katherine J. Strandburg, eds., Edward Elgar Publishing, 2010 at p. 243. 116 See Lemley, Mark A., The Surprising Virtues of Treating Trade Secrets as IP Rights (June 1, 2008). Stanford Law Review, Vol. 61, p. 311, 2008, Stanford Law and Economics Olin Working Paper No. 358, Available at SSRN: https://​ssrn​.com/​abstract​=​1155167. 117 The notion of cultural safety was developed by Māori nurses in the late 1980s in New Zealand, which requires consideration of multiple factors related to aboriginal communities in the context of medical research; See Polaschek, N.R., Cultural safety: a new concept in nursing people of different ethnicities. J Adv Nurs 1998. 118 Jon Altman and Sally Ward, Competition and consumer issues for Indigenous Australians: A report to the Australian Competition and Consumer Commission by the Centre for Aboriginal Economic Policy Research, the Australian National University, Canberra, 2002.

130  Research handbook on intellectual property and cultural heritage ● Clarifying the criteria and linking it with the normative framework – A normative guidance is also essential in addressing the level of protection offered to indigenous TS. A way forward in this regard could be to continue down the road highlighted by Ruth Okediji, who – as described above – distinguishes TK into three categories depending on their level of secrecy. The first group of ‘secret TK’ should enjoy the highest level of protection of both economic and moral rights consistent with “hybrid formulations of trade secret, patent and unfair competition law”. The protection of knowledge belonging to the other categories, namely closely held and widely disseminated, TK should be more limited. With regard to widely disseminated TK, only attribution rights would be justified.119 However, while offering different levels of protection, due regard must also be given to the nature of TK in question. Despite its many limitations in regard to TK, the law of TS offers a subtle, elaborate and traditionally familiar system that has the prospects of safeguarding indigenous cultural information in many of its forms. Constructive engagement between cultural assets and interpretational flexibilities of the legal system for indigenous communities can strengthen the protection of cultural secrets.

Supra note 59.

119

Section I.B Special Issues

7. Traditional knowledge, databases and prior art: Options for an effective defensive use of TK against undue patent granting Reto M. Hilty, Pedro Henrique D. Batista and Suelen Carls

1. INTRODUCTION In the past few decades, the international community has witnessed intense discussions on patenting inventions based on traditional knowledge (TK) from indigenous and local communities,1 especially those related to biological and genetic resources. Several alternatives have been considered to avoid this aspect of so-called biopiracy2 and protect those communities’ interests, including the defensive use of TK against attempts to patent inventions that do not fulfil the patentability requirements. Since information included in the prior art can harm the novelty and even the inventive step (or non-obviousness) of an innovation, its consideration by patent offices could suffice to achieve the objective of defensive protection. Another defensive strategy is the use of databases. Although they are not mandatory for placing TKs in the prior art, since the early 2000s, countries with a pronounced cultural heritage have established databases with written and systematised information on TK.3 They aim to facilitate the identification of the previous existence of this knowledge during the patent examination. The Indian Traditional Knowledge Digital Library (TKDL) is one significant example of this. Individual agreements between governments owning such databases and patent offices regulate the use of the indexed information they contain. The number of such agreements, usually with patent offices located in developed countries and at zero cost, has increased over the past ten years.4 However, the effectiveness of the defensive use of TK depends on two factors. First, it is essential to know if the TK is publicly accessible and, therefore, covered by the prior art. Second, regarding databases, it is important to know how likely it is that the information they contain will prevent the patenting of an invention. In this regard, a relevant question is whether 1 With due recognition of the important discussion on the classification of indigenous and local populations as peoples for the purpose of attributing rights in international law, this chapter, which deals with traditional knowledge associated with genetic resources, uses the term communities, as envisaged by the Convention on Biological Diversity and in the Nagoya Protocol. On this topic, see: Elisa Morgera, Elsa Tsioumani and Matthias Buck, Unraveling the Nagoya Protocol: A Commentary on the Nagoya Protocol on Access and Benefit-Sharing to the Convention on Biological Diversity (Brill 2014) 32. 2 Sangeeta Udgaonkar, ‘The Recording of Traditional Knowledge: Will It Prevent “Bio-Piracy”?’ (2002) 82 Current Science 414; John Reid, ‘Biopiracy: The Struggle for Traditional Knowledge Rights’ (2009) 34 American Indian Law Review 78. 3 See, for instance: Udgaonkar (n 2) 413. 4 The official TKDL official website informs that currently there are 13 access agreements currently in force. For details, see: ‘About TKDL’ accessed 17 May 2021.

132

Traditional knowledge, databases and prior art  133 the TK in the databases is in fact a part of the prior art. A presumption in this case is not advisable because part of that knowledge might not be publicly accessible, e.g., when a local or indigenous community holding the TK has neither shared it nor is willing to share it with a random number of third parties. Against this background, this chapter’s objective is to analyse in more depth under which conditions TK can be considered as part of prior art and thus contribute to the defensive use of cultural heritage to avoid the undue patenting of inventions based on it. To this end, it mainly examines the public accessibility of information and the specific configuration of the TK databases. Further, the option of extending the relevant prior art to include TK that is not publicly accessible, but only available within the relevant communities, will be addressed to determine its effectiveness as well as its compatibility with the international patent law. After addressing those questions, it will be possible to point out potential gaps in the defensive use of TK and make recommendations that can improve their effectiveness, which can also be useful both for existing databases and for that established in the future. In line with that, Section 2 starts by dealing with the definition of prior art in patent law. Section 3 addresses the accessibility of TK inside the communities, including the different forms of access, the granting competence and the use conditions. Section 4 focuses on the accessibility of TK in the most relevant international databases and the respective access conditions and points out possible consequences for patenting inventions based on the knowledge in the databases. Section 5 deals with the effectivity of the extension of the concept of prior art to TK that is not publicly accessible as well as with the compatibility of such measure with the patent law. Finally, Section 6 presents recommendations for an adequate treatment of traditional knowledge and the respective databases commensurate with their objectives.

2.

THE PRIOR ART IN PATENT LAW

Article 27.1 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) provides that “patents shall be available for any inventions (…), provided that they are new, involve an inventive step and are capable of industrial application.” However, there is no definition for each of these patentability requirements in this agreement, which leaves the countries and regional blocs with considerable flexibility to define them.5 Despite this lack of binding understandings in TRIPS, the novelty of an invention is usually associated with the fact that it is not a part of the prior art.6 This is confirmed by the references to the prior art in the Patent Cooperation Treaty (PCT),7 although even this international treaty makes clear that any contracting state is free to apply the criteria of its national law in respect of prior art.8 Given that the concept of inventive step also takes the obviousness of the invention to a person

5 Reto M Hilty and Matthias Lamping, ‘Declaration on Patent Protection – Regulatory Sovereignty under TRIPS’ (2016) 14. Recital 3.1, 3.2. 6 See, for instance: UNCTAD, ‘Dispute Settlement’ (2003) accessed June 7, 2021. 24. 7 See Arts. 15, 16, and 33 PCT. 8 Art. 27(5) PCT. See also: Brice C Lynch, ‘International Patent Harmonization: Creating a Binding Prior Art Search within the Patent Cooperation Treaty Note’ (2012) 44 George Washington International Law Review 403, 421.

134  Research handbook on intellectual property and cultural heritage skilled in the art into account, the prior art observation may also be a relevant starting point for verifying such patentability requirement. The prevalent understanding in legal scholarship is that prior art does not comprise all existing information or knowledge, but only that which is publicly accessible at the legally relevant time of its consideration,9 which may be the date of patent filing or of patent priority.10 This is the case when the information is accessible to a group of people whose size and randomness of its composition is not controlled by the inventor11 and, therefore, also available to an undetermined number of experts. It is noteworthy that the determinant element of the prior art is the accessibility of information and the possibility of access to it. It is not a requirement, though, that a certain number of people in fact access it.12 Thus, the capacity of technical use of the information by the people who have accessed it is also irrelevant for analysing the prior art.13 Based on this definition, information accessed by a small and controllable number of people following a legal or contractual – tacitly or expressly – duty of confidentiality is not understood as being in the prior art because it is not accessible by the public.14 Even in the event of a confidentiality breach or information misuse by third parties, the information will only be part of the prior art if it is accessible to third parties in good faith from whom further diffusion can be expected.15 Nevertheless, it is important to note that the prior art determination may depend on how and where the information is accessible according to national law. The former legislation in the USA, one of the most sought-after countries for filing patents, is an example.16 In the wording of 35 USC § 102 of the Patent Act from 1952, the prior art comprised information and knowledge that was “known and used by others in this country [i.e., the USA], or was patented or described in a printed publication in this [i.e., USA] or a foreign country.” According to that provision, foreign information fell under the prior art only when it was described in patents documentation or printed publications.17 Information transmitted orally, e.g., in a class or lecture, or only accessible through public use or common public knowledge, was not considered in the assessment of patentability requirements. This differentiation is no longer in place since the entry into force of the Leahy-Smith America Invents Act (AIA) in 2013, which modified the content of § 102. Subsequently, any

9 ibid 418; Virgil E. Woodcock, ‘What Is Prior Art’ (1958) 3 Vll. L. Rev. 255, 268; Udgaonkar (n 2) 414; World Intellectual Property Organization, ‘The World Intellectual Property Organization Traditional Knowledge Documentation Toolkit’ (2012). 10 Justin Malbon, Charles Lawson and Mark Davison, The WTO Agreement on Trade-Related Aspects of Intellectual Property Rights: A Commentary (Edward Elgar 2014) 419. Recital 27.24; Philip M Webber, ‘Priority Patent Applications’ (2005) 4 Nature Reviews Drug Discovery 877. 11 Rudolf Kraßer and Christoph Ann, Patentrecht: Lehrbuch zum deutschen und europäischen Patentrecht und Gebrauchsmusterrecht (CH Beck 2016), 281; Klaus-Jürgen Mellulis, ‘Art. 54 – Neuheit’ in Georg Benkard and others (eds), Europäisches Patentübereinkommen, vol 4 (CH Beck 2018), Recital 49. 12 Mora Rodríguez, ‘Engineering the Patent System in the Global ICT Market: A Critical Analysis’ (2011); Peter Mes, Patentgesetz, Gebrauchsmustergesetz: Kommentar (CH Beck 2020) § 3. Recital 49. 13 Donald Chisum, ‘Sources of Prior Art in Patent Law’ (1976) 52 Washington Law Review 1, 5. 14 See: Woodcock (n 9) 274; Mes (n 12). Recital 20; Mellulis (n 11) Recital 172. 15 Woodcock (n 9) 274; Mes (n 12) Recital 20; Kraßer and Ann (n 11) 284; Mellulis (n 11) Recital 172. 16 Kraßer and Ann (n 11) 285; Mellulis (n 11) Recital 49. 17 Chisum (n 13) 5.

Traditional knowledge, databases and prior art  135 public disclosure – including public use, sales and other forms of availability – anywhere in the world and in any language, is part of the prior art.18 However, this does not prevent other countries or institutions of international patent law from establishing criteria for prior art that take the form and place of accessibility of the information or knowledge into account. In this regard, it is noteworthy that the relevant prior art for international search within the scope of the PCT consist of “everything which has been made available to the public anywhere in the world by means of written disclosure”.19 Written disclosure is also required for the assessment of the prior art for the purposes of the PCT international preliminary examination.20 Despite this, Art. 27 (5) PCT ensures the freedom of the contracting states to apply their own criteria in respect of prior art during the national phase of the patent examination.21 In any case, the current US law comes close to the concept of prior art adopted in the European Patent Convention (EPC). According to Art. 54 EPC, “[T]he state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.” Thus, the prior art comprehends not only patent documents, printed publications or further information disclosed in written form, but also information available by public use or in any other way, and there are no restrictions related to the geographical location, the language or the way the relevant information became available to the public. 22 However, it is important to highlight that the prior art available to the examiner consists mainly of the documents listed in the search report, which contain a written description of the information.23 Likewise, patent office examiners from different countries are not expected to know all languages. For that reason, a written description has higher chances to be considered by patent examiners, especially if presented in a widely used language, such as English.24 Actually, this restriction in the patent prosecution does not prevent non-written information from being considered in further phases, e.g., during an opposition or nullity action. Still, the burden of the proof is likely to be heavier for the interested party to prove that the information belongs to the prior art. 18 Robert P Merges, ‘Priority and Novelty Under the AIA’ (2012) 27 Berkeley Technology Law Journal 1023, 1020; Dylan O Adams, ‘Patents Demystified: An Insider’s Guide to Protecting Ideas and Inventions’ (American Bar Association 2015) 67; Rebecca Goldman Rudich, ‘Novelty and Grace under the AIA’ in John M White (ed), Patent Eligibility, Prior Art and Obviousness 2017: Current Trends in Sections 101, 102 and 103 (Practising Law Institute 2017) 41. 19 World Intellectual Property Organization, Regulations under the Patent Cooperation Treaty, as in force from July 1, 2020 Rule 33.1. 20 ibid. 21 PCT. Art. 27 (5): “Nothing in this Treaty and the Regulations is intended to be construed as prescribing anything that would limit the freedom of each Contracting State to prescribe such substantive conditions of patentability as it desires. In particular, any provision in this Treaty and the Regulations concerning the definition of prior art is exclusively for the purposes of the international procedure and, consequently, any Contracting State is free to apply, when determining the patentability of an invention claimed in an international application, the criteria of its national law in respect of prior art and other conditions of patentability not constituting requirements as to the form and contents of applications.” 22 See: European Patent Office, ‘Guidelines for Examination’. Especially Chapter IV – State of the art. – 1. General remarks and definition. See also: Horst-Peter Götting, ‘Biodiversität und Patentrecht’ (2004) GRUR Int. 735. 23 Götting (n 22) 735. 24 This information results from an interview with the German Patent and Trademark Office (Deutsches Patent- und Markenamt) in March 2021.

136  Research handbook on intellectual property and cultural heritage

3.

THE ACCESSIBILITY OF TRADITIONAL KNOWLEDGE

The use of that TK for patent hindrance requires that the knowledge be in the prior art. The mere fact that the information consists of a TK and belongs to a particular community is not sufficient for that.25 The determining criterion is the public accessibility of knowledge.26 In its Report on the Status of Traditional Knowledge as Prior Art from 2001,27 the World Intellectual Property Organization Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (WIPO/GRTKF) accurately states that “the term ‘prior art’ generally refers to the entire body of knowledge that is available to the public before the filing date or, if priority is claimed, before the priority date, of an application for specific industrial property titles, principally patents, utility models, and industrial designs.”28 There are different ways to fulfil the criteria, as detailed below. 3.1 Communities First, TK may be under prior art coverage if it is publicly accessible in the indigenous or local community that owns it. In this case, third parties do not need to have previously accessed knowledge. Regardless of how evidence can be provided in specific cases, the TK is in the prior art when there is an express or tacit willingness of the community to share it in writing or oral form upon a third-party request.29 This practice usually follows the understanding of knowledge as a universal good or right, over which there are no property rights.30 Because of that, the knowledge becomes publicly available. The TK status as prior art is not affected even if it becomes available to an undetermined number of people under certain conditions, such as the obligation to share benefits arising from its use according to the Convention on Biological Diversity (CBD)31 and its Nagoya Protocol.32 However, other communities may not want to share their knowledge or only do so under secrecy.33 This happens, for example, when knowledge is considered sacred, unique or of special cultural value to the community.34 Furthermore, in view of its rights to grant a prior informed consent for TK access and to an equitable sharing of the benefits derived from its

Kraßer and Ann (n 11) 287. See Section 2 above. 27 World Intellectual Property Organization, ‘Report on the Status of Traditional Knowledge as Prior Art (WIPO/GRTKF/IC/2/6)’ (2001) 3. 28 World Intellectual Property Organization, ‘Introduction to Intellectual Property: Theory and Practice’ (Kluwer Law International BV 2008) 125. 29 Kraßer and Ann (n 11) 287. 30 For a discussion on the relation between TK and property rights, see: John T Cross, ‘Property Rights and Traditional Knowledge’ (2010) 13 Potchefstroom Electronic Law Journal (PELJ) 12. 31 Convention on Biological Diversity (CBD) 1992. 32 Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of Benefits Arising from Their Utilization to the Convention on Biological Diversity 2011. 33 Reto M Hilty. ‘Rationales for the Legal Protection of Intangible Goods and Cultural Heritage’, (2009) International Review of Intellectual Property and Competition Law (IIC) 894. 34 In this respect and for the example of the Kaska community, see: World Intellectual Property Organization, ‘The World Intellectual Property Organization Traditional Knowledge Documentation Toolkit’ (n 9). 25 26

Traditional knowledge, databases and prior art  137 use,35 the community may want to restrict access to its TK to better control the information flow and avoid its diffusion to a random number of third parties.36 In those instances, if the knowledge is only available to community members or selected persons under the duty of confidentiality but not available to the public, it is not included in the prior art.37 An example of communities unwilling to share their knowledge is the Canadian Kaska communities from northern British Columbia and the Yukon. For them, a TK is a holy trust that each family passes along, and whoever becomes aware of that TK is seen as an individual who will protect the community interests. Outsiders providing services for and in the communities, as a rule, do not need to be aware of the community’s TK to do their job. However, some of them can be ‘fortunate enough to be offered teachings’. If that is the case: it is crucial to find out what the protocols are around carrying that traditional knowledge, including whether there is permission to share it with anyone else or write it down. The best practice would be to respect it, show your respect to the person who offered the knowledge and hold it confidential. If you would like to write it down, make sure permission is sought and granted before doing so.38

The recommendation to keep the TK confidential is part of the Cultural Orientation and Protocols Toolkit Council of Yukon First Nations. If it is duly observed by the community members and third parties who exceptionally access it, the TK remains unavailable to the public and will not constitute prior art. In those cases, however, the defensive use of the TK is not possible. Third parties who achieve the knowledge and the corresponding technical solutions independently and in good faith39 will be able to patent inventions based on it. Another important aspect regarding access to TK is the internal competence in the communities to grant it. While some communities do not have any form of hierarchy, others may have formal rules that establish competence. These rules can be particularly relevant if the community chooses not to share knowledge or only share it under certain conditions, such as maintaining confidentiality and benefit-sharing. Two examples of communities with competence rules regarding the control of the TK diffusion can be found in Kenya. Mijikenda is a traditional community consisting of nine sub-communities. Each community has its settlement and a political institution called kaya, administered by a council of elders, called kambi or ngambi.40 The Mijikenda community is split into three counties, and seven of

35 Convention on Biological Diversity (CBD) Art. 8 (j); Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of Benefits Arising from Their Utilization to the Convention on Biological Diversity (n 32) Art. 7. 36 Reid (n 2) 92. 37 World Intellectual Property Organization, ‘Report on the Status of Traditional Knowledge as Prior Art (WIPO/GRTKF/IC/2/6)’ (n 27) 5. 38 Council of Yukon First Nations, ‘Cultural Orientation and Protocols Toolkit Council of Yukon First Nations’ (2010) accessed 14 May 2021. 12. 39 The legal consequences of a patent applicant’s misconduct regarding the access and use of TK is discussed below in this section. 40 Paul Ongugo and others, ‘Protecting Traditional Health Knowledge in Kenya: The Role of Customary Laws and Practices’ (2012) 14; Francis Kariuki, ‘Protecting Traditional Knowledge in Kenya: Traditional Justice Systems as Appropriate Sui Generis Systems’, WIPO-WTO Colloquium Papers (2019). 96–97.

138  Research handbook on intellectual property and cultural heritage their sub-communities are located in Kilifi County, which is also the county with the highest number of kayas listed as world heritage.41 The Mijikenda elders (kaya elders) have custody rights and obligations over TK. They decide on the access, use and control of the TK according to customary laws (including rites and taboos) and apply those laws. The access to the forests (who, when, and why), for instance, is defined in secrets, oral agreements and taboos. The transmission of healing knowledge is also regulated by the elders, kambi, using a rating process that considers the personal conduct and motivation of the request.42 An individual healer can also choose a family member or friend as a helper, meaning that the helper would have access to TK. In this situation, a payment of a predetermined fee (kadzama) is requested from the apprentice.43 In the Meru or Amîîrú community, the decisions on the access of the TK are up to the Njuri Ncheke, the supreme governing body constituted by elders. Those elders have custody of the community’s TK, culture, customs and traditions. They perform their duties by following a custom and practices system that includes community sanctions and oaths to govern the disclosure of TK. Moreover, the Njuri Ncheke, mature men of the community believed to hold the highest moral standards and have almost no faults, are the ultimate custodians of the community’s TK, and it is up to them to apply the customary laws for access to it.44 Granting access to a small and controllable number of persons under a duty of secrecy is not enough to insert a TK in the prior art. Moreover, in practice, some communities may desire secrecy. Against this backdrop, one may ask what happens if this knowledge is improperly acquired or made publicly available due to misconduct of a third party. This may be the case when someone, despite knowing the community internal competence rules for granting TK access, intentionally obtains the TK through a community member not authorised to share it or when someone who has obtained access to information under the duty of confidentiality makes it publicly accessible. In these cases, if TK is not accessed by bona fide third parties from whom further dissemination can be expected or does not become accessible to a large and random number of third parties, it will not be publicly available.45 Otherwise, it will be understood as in the prior art for the purposes of the patent law. Moreover, the information unduly available in the prior art can harm the interests of an inventor (or a person authorised by them) in obtaining a patent. For that reason, most countries’ laws do not consider abusive disclosure against the patent applicant or after a breach of trust in determining novelty if it happens within a given time before the filing date.46 This rule, however, does not prevent TK from becoming part of the prior art, even against the will of the harmed community, since the publication of the patent application makes the information invariably publicly accessible.

41 UNESCO World Heritage Centre, ‘WHC-08/32​.COM/​24Rev: 32nd Session of the World Heritage Committee’ (2008). 190–191. 42 Ongugo and others (n 40) 14. 43 Ibid; Kariuki (n 40) 97. 44 Kariuki (n 40) 97. 45 Kraßer and Ann (n 11) 285; Mellulis (n 11) Recital 174. 46 See WIPO’s comparative table on the grace period in national and regional laws: World Intellectual Property Organization, ‘Certain Aspects of National/Regional Patent Laws – Grace Period’ (2020).

Traditional knowledge, databases and prior art  139 The discussion on the adequacy of the offensive use of the patent through the attribution of exclusivity rights to indigenous and local communities and the legal possibility of these communities to be holders of patent rights is beyond the scope of this chapter. 3.2

Public Knowledge, Public Use or Offer for Sale

As a rule, when the TK is publicly used or applied by people outside the rights-holding community or incorporated into products that put into the market, it becomes part of the prior art. A good example is traditional Chinese medicine, whose elements, though not always assigned to a specific community, are often part of the structure of knowledge accessible to the public in China and other countries and are frequently used in medicines and services.47 Another well-known example refers to the knowledge of specific properties of the oil of the neem tree as a fungicide.48 In September 1994, the European Patent Office (EPO) published the patent EP 0436257 B1 related to a process for combating fungi in plants by fungicides having in their composition a percentage of oil extracted from neem tree leaves. This technique has made it possible, inter alia, to eliminate fungi and protect plants from fungicidal infection. However, the effects of oil fungicides have been proven as a subject of extensive traditional knowledge and applied in various sectors of Indian society. After the long process of opposition filed by the Parliament’s Green Group, the EPO acknowledged that the knowledge was part of the prior art and concluded that the requirements of novelty and inventive step had not been adequately met. As a result, the patent was revoked. The appeal after the opposition has failed.49 3.3 Publications Among the different forms of accessibility of information, one of the most relevant pieces of evidence of prior art is publications. That is due to possible legal and factual limitations related to the concept of prior art. As explained above, some countries and institutions of international patent law may determine that prior art covers only printed publications or written information. The defensive use of TK is intended to prevent undue patenting not only in the country of origin of the rights-holding community, but also abroad. For this purpose, the expression of the knowledge in a printed publication may be sufficient to avoid potential limitations to the recognition as prior art and, hence, to reach the objective of the communities and the national policy. The turmeric case is an illustrative example of the relevance of print publications.50 In September 1995, the United States Patent and Trademark Office (USPTO) granted patent No. 5,401,504 in favour of the University of Mississippi Medical Center. The invention referred to 47 See, for instance: Zhongdi Liu and others, ‘Application of Traditional Chinese Medicine in Medical Practice: A Survey of Community Residents in Beijing, China’ (2017) 37 Journal of Traditional Chinese Medicine = Chung i tsa chih ying wen pan 261, 106. 48 Shubha Ghosh, ‘Globalization, Patents, and Traditional Knowledge’ (2003) 17 Columbia Journal of Asian Law 93. 49 See at details for the patent application ‘EP0436257 – Method for Controlling Fungi on Plants by the Aid of a Hydrophobic Extracted Neem Oil’. See also: Christina Federle, Biopiraterie und Patentrecht (Nomos 2005) 65. 50 Ghosh (n 48) 93.

140  Research handbook on intellectual property and cultural heritage a wound healing process through the application of an effective amount of turmeric powder. The respective patent claims comprised the method of application and specifications regarding the type of wound to which to apply the medical product.51 Turmeric is a yellowish powder extracted from the curcuma plant, originally from South Asia. In India, its use is widespread not only as a food colouring, but also in traditional medicine to treat inflammation.52 Claiming that this traditional Indian knowledge was part of the prior art, the Council of Scientific and Industrial Research of India requested a re-examination of the patent in 1996. The following year, the USPTO rejected the patent claims because the invention lacked novelty and inventive step.53 The curious fact is that, under the patent law in force in the USA at that time, the information and knowledge contained in other countries were only considered part of the prior art if they were included in printed publications. As a result, the various unwritten pieces of evidence of oral transmission and diffusion of ancient knowledge about the wound-healing effects of turmeric presented by India was of little help or not useful at all. Determinant for the rejection of the patent by the USPTO was only the 32 documents published in Sanskrit, Urdu and Hindi in which the relevant applications of turmeric were presented.54 From a practical point of view, the written publication of already existing information may be relevant also for patenting in countries that do not limit prior art to printed publications. As indicated above, patent examiners usually base their search on written documents available for their search.55 Thus, the written publication of traditional knowledge in a language accessible to examiners worldwide, such as English, may facilitate the prompt and ex officio consideration of TK in the prior art in the context of patent prosecution. The form in which TKs are published may vary. The patent offices commonly consider the publication of patent-related documents.56 Thus, when TK is the subject of or has been described in a patent already granted or even a patent application already published, it becomes publicly accessible and may prevent the patenting of future inventions that may use it. In addition, TK publication for these purposes may occur through books, magazines and other literature sources and – at least regarding countries that do not require a printed publication – also on the Internet or any other kind of recording.57 In some countries, there are even journals specialised in publishing articles that describe traditional knowledge and its use in technical areas. The Korean Journal of Traditional Knowledge managed by the Korean Intellectual Property Office is one example. In addition, the Korean Rural Development Administration periodi-

Federle (n 49) 63. Ibid 96. 53 The USPTO documents related to ‘Use of Turmeric in Wound Healing’ application are available at: . 54 Tejaswini Apte, ‘A Simple Guide to Intellectual Property Rights, Biodiversity and Traditional Knowledge | Publications Library’ (2006) 63. 55 See Section 2 above. 56 Adams (n 18) 68. 57 World Intellectual Property Organization, Documenting Traditional Knowledge – A Toolkit (2017). 14. See also: Adams (n 18) 67; Mes (n 12) Recital 25. 51 52

Traditional knowledge, databases and prior art  141 cally publishes books with this content.58 The Indian Journal of Traditional Knowledge59 has the same purpose, while the Journal of Traditional Chinese Medicine promotes the publication of current scientific, technical studies related to the country’s ancient medicinal knowledge.60 Finally, it is imperative to note that documenting TK does not necessarily mean placing it in the prior art. Documents restricted to a small number of people or a group of people who share a duty of confidentiality are not considered publicly accessible. The acquisition of prior art status, therefore, depends on the availability of these documents.61 However, being publicly available does not imply that the knowledge is widely or easily accessible to all people. For example, TK can be under prior art even if the documents in which it is described are in special libraries or museums with access to a restricted group of people, if this group is random and is not obliged to maintain confidentiality by force of law or contract.

4.

TRADITIONAL KNOWLEDGE DATABASES

As noted, the identification of TK by patent offices can be challenging, even when it belongs to the prior art. In practice, the examiners are unaware of the information used and transmitted orally abroad. Likewise, publications, especially when written in an unknown language or not easily and systematically recoverable by the examiners, may eventually be disregarded – the mentioned cases of neem and turmeric demonstrate these shortcomings.62 In that context, databases compiling the TK can play a relevant role in patent examination.63 However, to facilitate the defensive use of TK, the databases must have specific characteristics regarding the public nature and accessibility of the information contained therein. 4.1

Definition of Database

The TK documentation process consists of identifying, collecting, organising, and registering or recording the knowledge in a platform to maintain, manage, use, disseminate, or dynamically protect it.64 The denomination of the result of this documentation, however, is not uniform. Although the term database is commonplace in the field of TK, the scholarship, the different national laws and regulations, and international organisations’ documents offer different terms, such as records, inventories, catalogues, or networks. 58 Jin-Seop Shin, Yu-Seon Lee and Myung-Sun Lee, ‘Protection and Utilization of Traditional Knowledge Resources through Korean Traditional Knowledge Portal (KTKP)’ (2010) 10 The Journal of the Korea Contents Association 422. 59 Further information at: ‘Indian Journal of Traditional Knowledge (IJTK)’ accessed 8 June 2021. 60 Further information at: ‘Journal TCM: Journal of Traditional Chinese Medicine’ accessed 8 June 2021. 61 Mes (n 12) Recital 27. 62 Wend B Wendland, ‘Intellectual Property, Traditional Knowledge and Folklore: WIPO’s Exploratory Program’, (2002) IIC 503. 63 Udgaonkar (n 2) 416; Maria Luiza Grabner, ‘Conhecimentos Tradicionais: Proteção Jurídica e Diálogo Intercultural’ (USP 2009) 133; Viviane Alves Bertogna, ‘Biodiversidade e Propriedade Intelectual No Brasil’ (FADUSP 2003) 170. 64 World Intellectual Property Organization, ‘The World Intellectual Property Organization Traditional Knowledge Documentation Toolkit’ (n 9).

142  Research handbook on intellectual property and cultural heritage The Secretariat of the Convention on Biological Diversity points out that, while the WIPO/ GRTKF usually refers to traditional knowledge registers (TKRs) as (i) legal registers created by law, and (ii) non-statutory databases developed to address a legal issue, there is also a distinction between TKRs, community traditional knowledge databases (CTKDBs), and external traditional knowledge databases (ETKDBs) for illustration purposes.65 TKRs are legal collections established by law. They can serve as sources for prior art search or protect TK under trade secrets law and sui generis intellectual property law. Moreover, the act of registration in a TKR can have a constitutive or a declaratory effect regarding TK-related rights.66 Constitutive TKRs can grant certain rights to communities provided they meet the requirements, including registration. Declaratory TKRs recognise the existence of prior rights. The ETKDBs serve primarily as a source of prior art, but they are neither directly organised nor controlled by the communities. Governments, museums, corporations, non-governmental organisations (NGOs), and inter-governmental organisations (IGOs) can be behind their establishment. In turn, CTKDBs are compilations of TK organised and managed by the communities or organisations on their request and behalf. They serve the community’s internal use and focus on protecting, preserving, and promoting traditional knowledge and cultural heritage. Secondary functions may include documentation for land demarcation, treaty negotiations, or traditional resource claims.67 Other than the previous organisations, the Asian Group and China suggested in a position paper a differentiation between TK registers and TK databases based on the prior art. According to them, states might as appropriate, compile databases of traditional knowledge which is in the public domain [understood as the information in the prior art according to the definition presented in this chapter] and make these databases available to patent-granting authorities for the purposes of prior art searches, to prevent the grant of any intellectual property rights over such public domain knowledge.68

Moreover, they may “establish registers of traditional knowledge elements which are not in the public domain and keep the contents of the registers undisclosed, pending the possible establishment of new protection standards for the traditional knowledge elements contained in the registers.”69 The variety of denominations might be contradictory or at least confusing. The acknowledgement of the TK legal status for purposes other than the determination of prior art70 is irrelevant to the analysis of the defensive use of TK. Moreover, using different, non-unified terms to characterise a dataset in terms of availability to third parties or the publicity of the 65 Secretariat of the Convention on Biological Diversity, ‘Composite Report on the Status and Trends Concerning the Knowledge, Innovations and Practices of Indigenous and Local Communities (UNEP/ CBD/WG8J/4/INF/9)’ (2006). 66 Susette Biber-Klemm and Thomas Cottier, Rights to Plant Genetic Resources and Traditional Knowledge: Basic Issues and Perspectives (CABI Pub 2006) 228. 67 Secretariat of the Convention on Biological Diversity (n 65) 11. 68 World Intellectual Property Organization, ‘Technical Proposals on Databases and Registries of Traditional Knowledge and Biological/Genetic Resources (WIPO/GRTKF/IC/4/14)’ (2002) 2. 69 World Intellectual Property Organization, ‘Technical Proposals on Databases and Registries of Traditional Knowledge and Biological/Genetic Resources (WIPO/GRTKF/IC/4/14)’ (n 68) 2. 70 Such as, for example, to be the subject of prior informed consent or mutually agreed terms under the CBD and the Nagoya Protocol or for other state programmes.

Traditional knowledge, databases and prior art  143 information contained therein may bring about undesired complications, especially when working with country examples that use different nomenclatures for similar instruments. For practicality’s sake and because a more accurate definition is unnecessary, this chapter opts to use the term TK database in a broad sense to refer to any result of the structured and schematised compilation of TK descriptions, regardless of a particular function or the characteristics of the information contained therein. Those may include digital libraries, networks, registries or even databases to define this compilation of TK. 4.2

Databases and Prior Art

The existence of a TK database is not enough to guarantee the defensive use of the knowledge contained therein. The effective use of a database depends on its structure and organisation. The reason is that databases do not necessarily guarantee that the knowledge contained therein is publicly accessible. A database that only comprises information about the genetic and biological resources used by communities, but does not include descriptions of the knowledge, its use, and its application for a particular technical purpose, is not in itself sufficient to make the TK in question part of the prior art. The same is true of a database that, although describing existing TK, is not available to the public, but only to a restricted group of people under a duty of confidentiality, e.g., patent offices. In these cases, the TK contained therein will only belong to prior art if it is publicly accessible in a manner independent of the database, as in community access, public use or publications. Therefore, to verify the capability of a database to prevent undue patenting of inventions based on the TK contained therein, it is necessary to ascertain the degree of its accessibility to third parties and the relevance of the information contained therein to the prior art. In the following, open and restricted databases will be analysed in view of their potential to influence patent examinations. While some TK databases adopt a mixed form concerning documented content and access to registered data, others adopt a uniform treatment.71 Some of the latter will be mentioned as examples in the analysis below. In this context, two aspects should be highlighted. First, since for patent law purposes the verification of prior art is primarily a factual issue, the specific configuration of TK databases may prevent the patenting of inventions, even if this is not their primary or the intended purpose. Second, suppose a TK database goal is to influence the novelty and inventive step of an invention exam. In that case, it is essential that patent examiners have (i) knowledge of its existence, (ii) access to it, and (iii) the ability to deal with it and work with information contained in it. Contact with the patent offices and WIPO72 for dissemination and availability purposes and the use of a globally accessible language can facilitate the realisation of this goal.

71 For the decentralised Indian People’s Biodiversity Register, see: National Biodiversity Authority, ‘People’s Biodiversity Register’ (2013) accessed 8 June 2021. For the Venezuelan Biozulua, see: Alejandro Argumedo and others, ‘The Role of Registers and Databases in the Protection of Traditional Knowledge: A Comparative Analysis’ United Nations University Institute of Advanced Studies (2004). 16. 72 See for instance: World Intellectual Property Organization, ‘Draft Quick-Win Online Databases and Registries of Traditional Knowledge and Genetic Resources’ (2016).

144  Research handbook on intellectual property and cultural heritage 4.2.1 Open databases Open databases offer free access to the TK described therein to an unrestricted number of people. An example is the Korean Traditional Knowledge Portal (KTKP). Maintained by the Korean Intellectual Property Office (KIPO) since 2004, it consists of a centralised national TK repository.73 Based on Korean traditional literature and scholarly articles, there is documented information on traditional and local food, literature techniques and other intangible cultural heritage elements, and TK descriptions related to agriculture and medicine. For example, in traditional medicines and cures, detailed technical information on their properties, dosage, application, efficacy, and contraindications are usually provided. Similarly, there are references to the date of the TK publication in the database. Although that might differ from the date the TK became part of the prior art,74 it is in most cases sufficient for the determination of the scope of the prior art by the patent examiner. The KTKP targets defensive TK protection and aims to promote TK-related studies and industries.75 For purposes of defensive use, open databases with a detailed description of knowledge have the advantage of not relying on the independent public accessibility of such knowledge. Even knowledge not accessible by other means such as publications or public use become publicly accessible from the moment they are published in an open database. Therefore, patent examiners consider that databases’ content as a source of the prior art when analysing novelty and inventive steps related to an invention. In addition, the database content can be helpful to courts when analysing a nullity action against a patent already granted for an invention based on TK. 4.2.2 Restricted databases Despite the advantages of open databases for TK defensive use against patents, countries and communities interested in the compilation of their TK may choose not to adopt them because they have a primary interest in maintaining the confidentiality of TK. This is the case, for instance, when the documentation and collection of this knowledge is aimed to serve only community members or third parties under a confidentiality regime. In such cases, the establishment of the database pursues only internal purposes or public policies unrelated to patents, but not the defensive use of TK. The approach of Canada’s Kaska communities is on the restrictive side,76 where there is no interest in sharing their TK with third parties. Despite that, the Kaska Traditional Knowledge Network was developed by them in partnership with the ICT Development Group to administer and share TK among the several Kaska Dena Nation communities from northern British Columbia and the Yukon. The TK documentation employs modern technology, including a web-based portal, TK directory and geospatial data applications. The TK is usually recorded

73 ‘KTKP: Korean Traditional Knowledge Portal’ accessed 14 May 2021. 74 For instance, when the TK was already publicly available in a period before publication in the database. 75 Lakshmi Poorna, Mymoon Moghul and Hariharan Arunachalam, ‘Preservation and Protection of Traditional Knowledge – Diverse Documentation Initiatives across the Globe’ (2014) 107 Current Science 1242–1243. 76 See Section 3.1 above.

Traditional knowledge, databases and prior art  145 in video format.77 Another Canadian example and one of the most ambitious documenting projects led by a community itself is the Traditional Knowledge Databases of Inuit of Nunavik. The project aims “to create a dialogue based on respect and equality, not to create a catalogue and make it available to the real scientists.”78 Thus, it remains a restricted database. A reason for that is the lack of a Canadian protection regime for TK and, therefore, the lack of originality of the recorded information, which has no legal rights under existing law. In Peru, the National Confidential Register administered by the National Institute for the Protection of Competition and Intellectual Property (INDECOPI79) stores TK that indigenous peoples wish to keep confidential.80 Since access to the database is restricted, its use alone is not enough to place the knowledge in the prior art. This does not mean that all information contained therein is excluded from the prior art. Information accessible to the public, regardless of the database, will remain part of the prior art and may eventually be considered in the context of the patent prosecution or a nullity action. In addition, there are also cases in which databases are created to specifically compile TKs already included in the prior art for their defensive use but still have restricted access. A significant function of the restriction is to prevent information from being available to anyone anywhere in the world.81 On the one hand, CBD and the Nagoya Protocol guarantee indigenous and traditional communities the right to demand prior informed consent agreements before allowing TK access. On the other hand, global open access would make it even more difficult to control information and facilitate the violation of these rights by third parties interested in using traditional knowledge without obtaining the consent of the community and sharing the benefits arising from the use.82 Nevertheless, restricted access may be counterproductive to the purposes sought by the creators of this type of database. Without due access, patent offices cannot consider the information contained in the databases when determining the prior art. For this reason, appropriate access should be granted to patent offices of interest to the country of origin or TK-holding communities. The access concession might require the commitment to secrecy so that interests outside the patent law are not harmed.83 The Peruvian TK National Public Register (Registro Público Nacional) is an example of that kind of database. Although it contains descriptions of TK of Peruvian indigenous communities that is already in the prior art, its content is not publicly accessible. The National Commission Against Biopiracy, created on 1 May 2004 and chaired by the INDECOPI, monitors patent applications and granted patents all around the world. It is responsible for sharing the specific information contained in the National Public Register with patent offices in case of

77 See: ‘SRISTI’ accessed 8 June 2021; Kelly Bannister and Preston Hardison, ‘Mobilizing Traditional Knowledge and Expertise for Decision-Making on Biodiversity’ (2006) 16–17. 78 Darrell Addison Posey, ‘Indigenous Peoples and Traditional Resource Rights: A Basis for Equitable Relationships?’ (1995) 19. 79 In Spanish, Instituto Nacional de Defensa de la Competencia y la Propiedad Intelectual. 80 Sylvia Bazán Leigh, ‘A Cuatro Años de La Ley N.° 27811: Algunas Interrogantes En Torno a Su Aplicación’ (2008) 4 Anuario Andino de Derechos Intelectuales. 291–302. 81 Udgaonkar (n 2) 416. 82 Reid (n 2) 92. 83 Udgaonkar (n 2) 418.

146  Research handbook on intellectual property and cultural heritage patent applications related to traditional knowledge and with the authorities that are competent for the judgement of nullity actions related to such patents.84 Another example is the prominent Indian Traditional Knowledge Digital Library (TKDL),85 one of the most extensive documentation projects carried out so far. The Indian government led the initiative in collaboration with other public bodies. It provides TK-related information on Indian Systems of Medicines86 in different languages (including English)87 in a format that follows a Traditional Knowledge Resource Classification and is understandable by patent examiners in other countries. The TKDL is not open to the public, but it is accessible by different patent offices because of respective agreements.88 The access is only oriented to prior art search, and the content of the database cannot be disclosed to third parties. Because of the restricted and controlled access, this type of TK database is also not per se sufficient to extend the knowledge contained therein to the prior art. Since the TK description in such cases is not publicly accessible, it could be ignored during the patent prosecution or a judicial analysis, e.g., in a patent invalidity action. To better guide their users and achieve their defensive goals, these databases should expressly refer to aspects that prove that each piece of TK described belongs to the prior art. The Indian TKDL fulfils these conditions. It has achieved relative success in preventing the patenting of inventions related to the TK described therein due to its ex officio consideration by the patent examiners and oppositions that expressly refer to it. Based on evidence of prior art recorded in the TKDL, several patent applications have been annulled, withdrawn or amended at no additional cost and in a few weeks or months.89 However, the extent of this success is uncertain, as the information found in the legal scholarship or published by patent offices varies. An EPO presentation from 2011 reports that, at that point, there were 13 cases in which a patent examiner mentioned a TKDL document.90 Another source indicates that between July 2009 and June 2010, the TKDL team identified

84 See: Law No. 27811 of 24 July 2002, introducing a Protection Regime for the Collective Knowledge of Indigenous Peoples derived from Biological Resources Arts. 17, 23. See also: Kelly Sanchez, ‘The Problem with the Biopiracy in Peru’ (2019) China IP Magazine accessed 8 June 2021. 85 CSIR, ‘Traditional Knowledge Digital Library – Insomnia’ Council of Scientific & Industrial Research | CSIR | GoI (June 25, 2020) accessed 23 April 2021. 86 Ayurveda, Siddha, Unani and Yoga. 87 English, French, German, Japanese, and Spanish. Though the codified Indian systems of medicine were publicly available in local languages such as Sanskrit, Urdu, Arabic, Persian, and Tamil, they were not accessible to patent examiners at other patent offices and could not have been understood by them even if they had been. 88 To protect India’s interest against any possible misuse, the CSIR has signed specific non-disclosure and access agreements with nine patent offices so far: IP Australia, the Canadian Intellectual Property Office, the Chilean Patent Office, the European Patent Office, the German Patent Office, the India Patent Office, the Japan Patent Office, the United Kingdom Patent and Trademark Office and the United States Patent and Trademark Office. 89 World Intellectual Property Organization, ‘Meeting of International Authorities under the Patent Cooperation Treaty: Document Submitted by India (PCT) (PCT/MIA/22/8)’ (2015) 3. 90 Paul Schwander, ‘Traditional Knowledge and TKDL at the EPO’ (2011). accessed 23 April 2021 18.

Traditional knowledge, databases and prior art  147 36 patent applications related to Indian TK against which it filed evidence.91 Furthermore, it is reported that: In two such cases EPO has already set aside its earlier intention to grant patents after it received TKDL evidence. In other eleven cases, applicants themselves decided to withdraw their 4 to 5-year old application on being confronted with TKDL evidence. It is expected that in balance 23 cases, either EPO would reject these applications or applicants themselves would withdraw their wrong claims/patent applications unless they are able to establish the novelty of their claims/applications.92

Mentions of TKDL in the patent examination promoted by other patent offices were reported in 2010 as follows: US (four mentions); Egypt (one mention); Germany (two mentions); South Korea (two mentions); United Kingdom (one mention); India (two mentions); China (two mentions); Taiwan (one mention); Canada (two mentions).93

5.

EXTENSION OF THE PRIOR ART TO NON-PUBLICLY AVAILABLE TK

As noted above, the prior art basically comprises traditional knowledge that is publicly accessible to third parties outside the indigenous or local community that holds this knowledge. This definition is related to the concept of novelty in the TRIPS Agreement. Information that already exists, but is not accessible to third parties, is new from the point of view of society and experts who may eventually use it for scientific and commercial purposes. Thus, third parties who independently obtain this information may obtain patents for inventions based on it. Likewise, third parties who obtain this information directly from the community and under duty of confidentiality may, depending on the circumstances and agreed conditions between the user and communities, also hold patents related to this knowledge.94 This understanding, however, is not shared by all indigenous and local communities. In fact, the processes of knowledge production, appropriation and dissemination in these communities do not necessarily coincide with the pre- and post-appropriation economic dynamic established in the framework of the patent law.95 Even the concept of public may vary according to customary norms.96 This historical and cultural context may not only be considered for the purpose of questioning the free use of TK in the public domain without any users’ duties over indigenous and local

91 Anand Chaudhary and Neetu Singh, ‘Intellectual Property Rights and Patents in Perspective of Ayurveda’ (2012) 33 AYU (An International Quarterly Journal of Research in Ayurveda) 20, 33. 92 Chaudhary and Singh (n 91) 33. 93 VK Gupta, ‘TK Documentation and Defensive Protection: An Example from India’ Intellectual Property and Sustainable Development: Documentation and Registration of TK and Traditional Cultural Expressions (2011) accessed 8 June 2021. 60–63. 94 Regarding the consequences of the misconduct by third parties after accessing the traditional knowledge, see Section 3.1 above. 95 Chidi Oguamanam, ‘Wandering Footloose: Traditional Knowledge and the “Public Domain” Revisited’ (2018) 21 Journal of World Intellectual Property 306, 318. 96 Ibid.

148  Research handbook on intellectual property and cultural heritage communities,97 but also for reconsidering the scope of the prior art in patent law. Some authors point out that certain communities hold that the fact that the TK has been shared only within the community for centuries is enough for it to be considered part of the public domain and, thus, prior art for patent law purposes.98 From this, one may consider the extension of prior art to TK that is not publicly accessible to increase the effectiveness of its defensive use. In this way, the patenting of inventions based on TK could be prevented even if the inventor obtained the information independently, which would safeguard the interest of the communities in avoiding the so-called ‘misappropriation’ of their knowledge. This extension could be done through a redefinition of the concept of prior art or by law. 5.1

National Law

In general, there are no rules of international law that deal with the extension of prior art to TK that is not publicly accessible.99 Likewise, there are no well-known legal provisions at the national level which expressly determine such extension. Despite this, some norms of national law may possibly be interpreted in this way. An example of this is India. According to Sec. 3(p) of the Indian Patent Act, “an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components” is not an invention for the purposes of the patent law.100 Although this provision shall not be interpreted as meaning that the use of TK precludes the patentability of inventions based on it that duly meet the patentability requirements (including those ruled in Sec. 3(d) of the Patent Act),101 it does not make any differentiation between TK included in the prior art and TK that is not publicly available. The fact that the Office of the Controller General of Patents, Designs and Trade Marks (CGPDTM) – the Indian Patent Office – when dealing with the application of Section 3(p) in its respective Guidelines,102 mentions as examples only TK that is publicly accessible in publications, could 97 See, for instance: Ruth Okediji, ‘Traditional Knowledge and the Public Domain – Centre for International Governance Innovation’ (2018) CIGI Paper No. 176, 16; Michael C Ogwezzy, ‘Protection of Indigenous or Traditional Knowledge Under Intellectual Property Laws: An Examination of the Efficacy of Copyright Law, Trade Secret and Sui Generis Rights’ (2012) 12 International and Comparative Law Review 7, 36; Jane Anderson, ‘Indigenous/Traditional Knowledge and Intellectual Property’ (2010) Duke University School of Law – Center for the Study of the Public Domain, 26. 98 See, for instance: Srividhya Ragavan, ‘Protection of Traditional Knowledge’ (2005) 2 SSRN Electronic Journal 13; Joelle Dountio, ‘The Protection of Traditional Knowledge: Challenges and Possibilities Arising from the Protection of Biodiversity in South Africa’ (2011) 26 SAJAH 10, 13. 99 World Intellectual Property Organization, ‘The World Intellectual Property Organization Traditional Knowledge Documentation Toolkit’ (n 9) 14. 100 See: The Indian Patents Act, 1970. 101 Hetal Patel and Sandesh Lodha, ‘Case Study on Rejected Patents in India’, Intellectual Property Rights – Patent (IntechOpen 2020) accessed 8 June 2021; Suchi Rai, ‘Traditional Knowledge And Scope For Patent Protection – Intellectual Property – India’ [2018] mondaq accessed 8 June 2021. 102 See: Designs and Trademarks Office of the Controller General of Patents, ‘Guidelines for Processing of Patent Applications Relating to Traditional Knowledge and Biological Material’; Designs and Trademarks Office of the Controller General of Patents, ‘Guidelines for Examination of Biotechnology Applications for Patent’ (2013); Designs and Trademarks Office of the Controller

Traditional knowledge, databases and prior art  149 be interpreted as meaning that only this type of TK is relevant for the purposes of the patent examination. However, Sec. 25(1)(k) and (2)(k) of the Indian Patent Act recognise as a legitimate ground to oppose the patent application the fact “that the invention so far as claimed in any claim of the complete specification is anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere”. Sec. 64(1)(q) states that this fact is also a reason for the revocation of the patent. Since the knowledge available within a community is not necessarily publicly accessible, there are reasons to construe Indian law as adopting an extended concept of prior art. In fact, some voices in the literature argue that TK is always encompassed by the prior art according to the Indian patent law.103 However, there are still no clear indications from the case law that bring legal certainty to this issue. 5.2

Limits of the Effectiveness

In any case, those countries that might be interested in extending the concept of prior art to non-publicly accessible TK should keep in mind certain restrictions regarding the effectiveness of this tool for the TK defensive function against undue patenting. First, the consideration of non-publicly available TK during the patent examination requires this knowledge to be accessible at least to the patent office. The creation of restricted databases containing confidential TK – such as the abovementioned Peruvian National Confidential Register – and their sharing with patent offices may be sufficient for achieving this objective. The confidentiality of these databases would be particularly relevant when the indigenous or local community that holds the non-disclosed TK has no interest in making it publicly accessible, which is likely to be the vast majority of the cases. In such a situation, it is essential that the patent office assess the similarities between the information disclosed in the patent claims and the existing TK before the publication of the patent application and impede this publication if it concludes that the invention is based on the non-disclosed TK. Otherwise, the knowledge will become publicly available upon publication. Second, the effects of the extension of the concept of prior art through its reinterpretation or by law will be restricted to countries that have adopted this understanding or measure. Due to the principle of territoriality and the absence of international standards that determine the exact scope of the prior art, it will not be possible to make defensive use of non-publicly available TK in countries which only consider the accessibility of information for the purposes of the determination of the prior art. As a consequence, most patent offices, including the largest ones, such as the abovementioned EPO and USPTO or the German Patent and Trademark Office (DPMA),104 will only consider publicly accessible TK for the assessment of novelty and inventive step during the patent examination. Countries interested in recognising the extended

General of Patents, ‘Guidelines for Examination of Patent Applications in the Field of Pharmaceuticals Office of the Controller General of Patents, Designs and Trademarks’ (2014). 103 See: Rai (n 101) 433–434; similarly, but pointing out the objective uncertainty regarding the notion of TK-related prior art in India, Shravan Kalluri, ‘Traditional Knowledge and Patent Strategy’ (2012) 17 Journal of Intellectual Property Rights 430. 104 From the German: Deutsches Patent- und Markenamt. This information results from an interview with the DPMA in March 2021.

150  Research handbook on intellectual property and cultural heritage prior art for TK in other jurisdictions will have to seek it through international agreements, which will probably not be an easy task. Third – and most important – it is questionable whether such a measure is compatible with the international patent law. On the one hand, such compatibility could be supported by the fact that there is no formal definition of novelty in international patent treaties. As noted above, Art. 27.1 TRIPS leaves considerable flexibility for countries to determine the scope of this term. This has already been highlighted by the US representatives in the TRIPS Council as follows: There is no definition of the term ‘new’ in the TRIPS Agreement or in the Paris Convention. In addition, Article 1.1 of the TRIPS Agreement states that “Members shall be free to determine the appropriate method of implementing the provisions of this Agreement within their own legal system and practice”. In view of these facts, there is no prescription as to how WTO Members define what inventions are to be considered ‘new’ within their domestic systems.105

Although there is general international consensus that novelty is related to the anticipation of yet unknown inventions,106 the definition of prior art is subject to the different determinations and definitions of member states.107 Thus, nothing would prevent a country from determining that TK is not ‘new’ – since it already exists – even if it is not publicly accessible. On the other hand, it has to be considered that the flexibility in determining novelty is usually used to exclude from its scope some information that is already publicly accessible (prior art) and by this means support the dissemination of knowledge. For example, under the former US patent legislation, consideration was given to information only if it came from printed publication in foreign countries for prior art intended to disseminate within the USA information known or used abroad but not yet in its territory.108 Likewise, temporal restrictions of the prior art in case of anticipation of the invention in an official international exhibition, as provided – for instance – by Art. 55(1)(b) EPC,109 intend to promote the dissemination of the innovation in these events even if the inventor or other entitled person has not yet filed the respective patent application. In this sense, it is noteworthy that the promotion of technological innovation and the dissemination of technology are among the objectives of intellectual property protection according to Art. 7 TRIPS.110 105 Council for Trade-Related Aspects and of Intellectual Property Rights, ‘Review of Legislation in the Fields of Patents, Layout-Designs (Topographies) of Integrated Circuits, Protection of Undisclosed Information and Control of Anti-Competitive Practices in Contractual Licences’ World Trade Organization (1998) 5. 106 Malbon, Lawson and Davison (n 10) 418. Recital 27.23. 107 Ibid 419. Recital 27.24. 108 Woodcock (n 9) 378; Anonymous, ‘Novelty and Reduction to Practice: Patent Confusion’ (1966) 75 Yale Law Journal 1198. 109 EPC. Art. 55: “(1) For the application of Article 54, a disclosure of the invention shall not be taken into consideration if it occurred no earlier than six months preceding the filing of the European patent application and if it was due to, or in consequence of: (…) (b) the fact that the applicant or his legal predecessor has displayed the invention at an official, or officially recognised, international exhibition falling within the terms of the Convention on international exhibitions signed at Paris on 22 November 1928 and last revised on 30 November 1972.” 110 TRIPS. Art. 7 – Objectives: “The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner

Traditional knowledge, databases and prior art  151 However, by extending the scope of the prior art to non-publicly available TK and preventing an independently obtained invention from being patented, the law would not act towards these objectives. Conversely, under certain conditions, the uncertainty regarding the possibility of amortisation and recovery of investments through exclusive rights due to the possible coincidence between the innovation and an existing but non-disclosed TK could negatively affect the promotion of technological innovation in several sectors of biotechnology. As a consequence, the dissemination not only of non-publicly available TK, but also of further new technical knowledge could be significantly impaired. In this regard, it should be highlighted that innovation by its very definition requires not only the emergence of new knowledge or a new product or process, but also its availability for potential users111 as well as a certain perception and acceptance by society.112 Regardless of its relevance to the technical solution of a practical problem, non-disclosed TK is not an innovation in the strict sense whose protection could eventually equate with the detrimental treatment of information independently obtained by a third party. Therefore, considering that the objectives of promotion of innovation and dissemination of technology set forth in Art. 7 are relevant to the interpretation of the scope of the other TRIPS provisions,113 the extension of prior art to non-publicly available TK might be incompatible with the novelty requirement under Art. 27.1. Although controversial,114 it can in fact be affirmed that Arts. 7 and 8.1 TRIPS provide the member states with some flexibility to configure patent law at the national level in order to meet relevant public interests concerning socio-economic development, which may perhaps not be related to innovation and its dissemination.115 However, even though impeding the undue appropriation of TK in respect of the cultural and historical context of indigenous

conducive to social and economic welfare, and to a balance of rights and obligations.” See also: Daniel Gervais, The TRIPS Agreement: Drafting History and Analysis (Sweet & Maxwell/Thomson Reuters 2012) 231. Recital 2.212; Eric M Solovy and Pavan Krishnamurthy, ‘TRIPS Agreement Flexibilities and Their Limitations: A Response to the UN Secretary-General’s High-Level Panel Report on Access to Medicines (June 12, 2017)’ (2017) 50 George Washington International Law Review 90; Malbon, Lawson and Davison (n 10) 194. Recital 7.22. 111 Oslo Manual 2018: Guidelines for Collecting, Reporting and Using Data on Innovation (4th edn, The Measurement of Scientific, Technological and Innovation Activities, OECD Publishing 2018) 20. In its Guidelines, the OECD defines innovation as “a new or improved product or process (or combination thereof) that differs significantly from the unit’s previous products or processes and that has been made available to potential users (product) or brought into use by the unit (process).” 112 For a deeper analysis of this term, including reference to Schumpeter’s concept of innovation, see: Gerard Marshall Raj and Neel Jayesh Shah, ‘Intellectual Property Issues Surrounding Antimicrobial Agents’, Intellectual Property Issues in Microbiology (Springer Singapore 2019) 3; Lukas Mester, ‘Was ist eigentlich Innovation?’ iteractec. 113 Matthew Turk, ‘Bargaining and Intellectual Property Treaties: The Case for A Pro-Development Interpretation of Trips but Not Trips Plus’ (2010) 42 New York University Journal of International Law and Politics 981, 1007; Gervais (n 110) 230. Recital 2.111; Solovy and Krishnamurthy (n 110) 90. 114 For a contrary opinion, see: Malbon, Lawson and Davison (n 10) 236. Recital 8.70; Gervais (n 110) 238. Recital 2.123; Solovy and Krishnamurthy (n 110) 91. Joseph Straus, ‘Patentschutz durch TRIPS-Abkommen – Ausnahmeregelungen und -praktiken und ihre Bedeutungen, insbesondere hinsichtlich pharmazeutischer Produkte,’ Bitburger Gespräche (2003). 115 Carlos M Correa, Trade Related Aspects of Intellectual Property Rights: A Commentary on the TRIPS Agreement (Oxford University Press 2007) 95; Peter Yu, ‘The Objectives and Principles of the TRIPS Agreement’ (2009) 46 Houston Law Review 1000; Hilty and Lamping (n 5) 13. Recital 1.2, 1.3.

152  Research handbook on intellectual property and cultural heritage and local communities may in fact be considered a relevant interest from a socio-economic perspective in certain member states,116 the restriction of patent rights in this case should be proportional and consider both the societal interests related to innovation and the interests of communities in a well-balanced manner.117 Since the independent achievement of already existing but non-publicly available TK by a third party does not properly mean a ‘misappropriation’ of this knowledge and considering that society has a relevant interest in the dissemination of this information, it is questionable whether this measure would be considered to be proportional. In any case, there is still no case law of the Dispute Settlement Body of the World Trade Organization that brings concrete indications as to the compatibility of the extension of the prior art to non-disclosed TK with the TRIPS Agreement.

6.

CONCLUSION AND RECOMMENDATIONS

The patenting of TK-based inventions is often against the interests of the indigenous and local communities in which they originate, who may not wish to see a third party exercising exclusive rights over their knowledge as a matter of principle or given the potential risks of sharing benefits derived from its use. The defensive use of TK can at least prevent the patenting of inventions that do not meet the requirements of novelty and inventive step. Since TK must belong to the prior art for this purpose, the effectiveness of this defensive use depends on several factors and can be leveraged by others. First, the written publication of TK, especially in print, enhances the effectiveness of its defensive use. From a legal perspective, and following the example of the former US legislation and the current PCT regulations on the international phase of the patent examination, such publication may eventually be a requirement without which the TK cannot be considered as in the prior art. From a practical point of view, it facilitates patent examiners’ identification of the information, given that their patent searches are usually restricted to written and published sources. For this reason, a more technical description of the TK is recommended, particularly concerning the concrete use and application of certain biological or genetic resources to solve specific problems. The description may address the properties of the resources used, dosages, form of application, or contraindications. Moreover, here the language accessibility is equally important to increase the likelihood that TK will be recognised as prior art. Second, databases that compile, structure and organise TK can be an essential tool to play a defensive protection role. For the sake of effectiveness, these databases should, like publications, consist of technical descriptions of the TK in a language accessible to foreign examiners. Open databases that feature those characteristics are sufficient to place TK in the prior art. Targeted dissemination among patent offices and the presence on the WIPO TK databases list can guarantee that the patent examiners fully consider them. Further attention is necessary in the case of restricted databases, since they are not publicly accessible. In such

116 On the competence of the TRIPS member states to define what constitutes a relevant public interest within their own jurisdictions, see: Correa (n 115) 97. 117 Max Wallot, ‘The Proportionality Principle in the TRIPS Agreement’ in Hanns Ullrich and others (eds), TRIPS plus 20 (Springer Berlin Heidelberg 2016) 221; Yu (n 115) 1004; Alison Slade, ‘Articles 7 and 8 of the TRIPS Agreement: A Force for Convergence within the International IP System’ (2011) 14 The Journal of World Intellectual Property n/a, 420.

Traditional knowledge, databases and prior art  153 cases, it is necessary to make the restricted databases available to the patent offices of interest and provide express references to elements that prove that each piece of TK contained therein is encompassed by the prior art, e.g., publications. Otherwise, this knowledge may not be considered prior art. Third, the legal extension of the prior art to TK that is not publicly accessible could enhance the effects of the defensive function by preventing the patenting of inventions based on this knowledge even though it is only available to the community that holds it. In this case, third parties who independently obtain this existent but non-disclosed knowledge would not be able to obtain patents directly related to them. Although such a measure may take into account the viewpoint of certain indigenous and local communities on the concept of prior art from a cultural perspective and more extensively curb the appropriation of TK, its scope of application would be restricted to countries that adopt it. Further, it is questionable whether this extension of the concept of prior art is compatible with international patent law. Countries and communities interested in guaranteeing the communities’ right to grant access to their TK only after a previous informed consent and through mutually agreed terms should consider that the publication of this knowledge and the creation of open databases can make the control of third parties’ access difficult. The creation of a restricted database like the Indian TKDL is a good alternative to promote the defensive use of TK without harming this interest. It is worth noting that this defensive use does not prevent all inventions based on TK from being patented. Despite the use of TK in the prior art, inventions associated with complementary knowledge that duly meet the requirements of novelty, inventive step, and industrial application may be patented.118 The concrete conditions for this may vary from country to country according to their substantive patentability requirements. Finally, the decision to create a TK database only for the purpose of effective defensive use of the TK requires an economic consideration by the interested parties. Having an established TK database to serve as a source for prior art searches, they can avoid the high costs of administrative and court battles related to the revocation and invalidity of an improperly granted patent.119 However, the establishment of TK databases itself requires a high investment. Even considering the well-known Indian TKDL, it is still unclear whether the investment has been compensated by the few dozen cases where patent offices have considered its contents during the examination120 and by the even fewer cases in which the TK contained therein was considered ex officio by patent examiners. Careful analysis must take place before any decision to implement a TK database is made.

Reid (n 2) 416. Ibid 93. 120 Prashant Reddy Thikkavarapu and Sumathi Chandrashekaran, ‘Why the Traditional Knowledge Digital Library’s Existence Deserves a Thorough Relook’ The Wire (2017) accessed 23 April 2021. 118 119

8. Re-evaluating the art practice of ‘appropriation’ from a copyright law perspective Marina Markellou

1. INTRODUCTION Contemporary art can fascinate, irritate or even cause embarrassment and frustration. Art pieces, such as the ones produced by Elain Sturtevant and Sherrie Levine, have recently attracted attention in the world of the post-modern art market as well as in courts by challenging the binarism of original and copy, since they seem to ignore major concepts in copyright law such as originality, authorship and personal execution of an artwork. In a broader cultural context, appropriation of ideas, symbols and artefacts from other cultures is also being discussed in cultural studies as a legitimate outcome of cross-cultural communication and transnational exchange of ideas, forms, habits and other concepts. In the age of globalisation, post-colonial theory has re-evaluated appropriation and uses the notion of ‘translation’ in order to defend – for example – ‘alternative modernities’ in the periphery or in the former colonies.1 Cross-exchanging of ideas, traditions and practices is often underlined as a general advantage of cultural mixing. Artists engaged new media, techniques and materials and transgressed the traditional boundaries between art media (intermediality), in order to produce mainly works of mixed media and of a larger, even spectacular, scale that they sometimes exhibited in non-institutional venues and even in public spaces. By quoting, alluding, borrowing, or simply copying existing artworks and re-contextualising them under their own names, artists highlight the most essential idea of their approach: in the context of an economy of mass production, what is the significance of attributing a property status to an image? Moreover, the concept of cultural appropriation is highly controversial since there is the opinion of those who are in favour of installing sui generis legal protection for cultural communities and those who are opposed to this practice, highlighting the advantages of cultural borrowing and exchanging. In light of the above, this chapter explores the possibilities and pitfalls connected with the creative use of pre-existing artworks or other cultural or raw material with themes limited to appropriation, creativity and collaborative practices. To evaluate the legal impact of the practice of appropriation, it is necessary to clarify the concept itself in order to assess its contemporary importance in the cultural field (Section 2). Once this conceptual definition is clear, some important legal cases that incorporate appropriation into law are demonstrated (Section 3) and some concluding observations are offered (Section 4).

1 Arjun Appadurai, Modernity at Large: Cultural Dimensions of Globalization (University of Minnesota Press, 1996).

154

Re-evaluating the art practice of ‘appropriation’  155

2.

THE CONTEMPORARY IMPORTANCE OF APPROPRIATION

2.1

Appropriation Art

As William Landes beautifully stated, the art of appropriation can be described as “getting the hand out of art and putting the brain in”.2 This artistic practice “borrows images from popular culture, advertising, the mass media, other artists and elsewhere, and incorporates them into new works of art. Often, the artist’s technical skills are less important than his conceptual ability to place images in different settings and, thereby, change their meaning.”3 Appropriation is an absolutely legitimate art practice – as far as the art milieu is concerned – that has been frustrating legal experts, since it implicates material that is borrowed, copyrighted or protected by other legal regimes and thus challenges major legal criteria such as originality, authorship and authenticity. Appropriation art is an historically established movement; the epochal exhibition that launched the appropriation art style based on possession of the images and artefacts of others is the ‘Pictures’ show organised by Douglas Crimp at Artists Space in 1977. ‘Pictures’ exhibited the work of five artists (Toy Brauntuch, Jack Goldstein, Sherrie Levine, Robert Longo and Philip Smith) who shared interest in “the photographically-based mass media as a resource to be raided and re-used”.4 The curator of this historical show, Douglas Crimp, affirmed that: In choosing the word pictures for this show, I hoped to convey not only the most salient characteristic of the art works (recognizable images) but also and importantly the ambiguities it sustains. This new work is not confined to any particular medium. Instead of that, it makes use of photography, film, performance, as well as traditional modes of painting, drawing and sculpture. Picture, used colloquially, is also non-specific. A picture book might be a book of drawings or photographs, and in common speech a painting, drawing, or print is often called, simply, a picture. Equally important for my purposes, picture in its verb form can refer to a mental process as well as the production of an aesthetic object.5

In a broader conceptual context, the main aspects of appropriation in art that have already been considered in a number of case law examples are: (a) the appropriation of a work of art and its inclusion (photographic reproduction, repainting, reconstruction, etc.) in a new art piece; the photographic work of Sherrie Levine, who reproduces the work of well-known modern photographers, is an excellent example of this category; (b) the appropriation of a found object (e.g., the ready-mades of Marcel Duchamp or an avant-garde collage); (c) the appropriation of the craftsmanship of another artist, of an apprentice or even of a craftsman (e.g., the work of minimalist sculptors such as Carl Andre); and (d) the appropriation of an artwork by the public in dynamic and more interactive ways (e.g., happenings, performances).

2 William Landes, ‘Copyright, Borrowed Images, and Appropriation Art: An Economic Approach’ (2000) 9 George Mason Law Review 1, 1. 3 Landes, ibid. 4 David Evans, ‘Introduction/Seven Types of Appropriation’ in David Evans (ed), Appropriation (The MIT Press, Cambridge, 2009) 12. 5 Douglas Crimp, ‘Pictures’ (1979) October 8, 75-88.

156  Research handbook on intellectual property and cultural heritage Sampling and remixing, mash-ups and appropriation, wikis and podcasts are part of the digital creative field of the twenty-first century. Digitisation accelerates the disappearance of the single identifiable author of an artwork and facilitates the collaborative creations as well as the ready appropriation of images in digital form. The French general curator of Musée D’Art Moderne de Paris Fabrice Hergott aptly stated that: In the age of digital networks, where every content exists only if it is disseminated, anyone who desires limiting the artistic creation into a unique work production goes blind: it is also the artistic creation generated offspring that makes it its value. Whether it is through a reflection on the tradition of the new, the place of the author, the mass production, the end of the avant-garde, the globalization or the commodification of the art, the reuse is proving to be a more subversive and inventive behavior than it seems.6

2.1.1 Appropriation art and originality If the art of appropriation takes a systematically transgressive approach to the quality of the author or to the notion of originality, copyright invites itself to rediscover its plasticity in order to apprehend this phenomenon. However, the task is not easy. First of all, the very term of this artistic movement, ‘Appropriation Art’, cannot have any other meaning for the legal world than that of the manifestation of pure provocation; the ‘appropriation’ of a work protected by copyright without the prior authorisation of its author constitutes infringement. Then, the work of the mind, protectable by copyright, must correspond to a form belonging to the world of sensitivity and reflecting the personality of its creator. However, it often happens that the intentions of the ‘appropriationists’ are to be found in the denunciation of ownership or the questioning of originality. Sherrie Levine, an iconic ‘appropriator’ artist of her time, firmly states: “The pictures I make are really ghosts of ghosts; their relationship to the original images is tertiary, i.e., three or four times removed.”7 (See Figures 8.1 and 8.2.) “The original itself is nothing more than a universal copy.”8 “What originality is there in not being original? This is original. Did I say weird? How weird.”9 Although artistic appropriation is often associated with contemporary art, its journey through art history is much longer than one might think. Indeed, “the practice of art, as an activity requiring the copying of models and requiring the imitation of prototypes, incorporated appropriation from the start. The history of art thus becomes a history of forms taken up and adapted to the passage from master to student or from one culture to another.”10 Very early on, great masters of art employed copying the work of their predecessors for the sake of personal training or the affirmation of a style. A well-known example of appropriation practices from pre-existing works is Manet’s Olympia, inspired by Titian’s Venus D’Urbino.

6 Fabrice Hergott, Art Exhibition Brochure, ‘Seconde Main’ (Second Hand), Musée D’Art Moderne de Paris, from 25 March to 24 October 2010. 7 Sherrie Levine, ‘After Sherrie Levine (Interview)’, in Jeanne Siegel (ed), Art Talk: The Early 80s (Da Capo Press, 1988) 247. 8 Marina Grzinic, Une fiction reconstruite (L’Harmattan, 2005) 96. 9 Michel Vivant, ‘Quand le mot recouvre le réel. Glissement de sens inaperçu et changement subreptice de topos’ (Propriétés Intellectuelles, 2005). 10 Anne Lee, Appropriation: A Very Short Introduction (Oxford University Press 2008) 3.

Re-evaluating the art practice of ‘appropriation’  157

Source: Licensed under CC BY 2.0.

Figure 8.1

“[ D ] Marcel Duchamp – Fountaine (1917)” by Cea

“The need to appropriate what is lost through representation goes hand in hand with the desire to distort an earlier argument to use it in a different sense.”11

11 Anne-Marie Dupuy, Copier, créer: de Turner à Picasso: 300 œuvres inspirées par les maîtres du Louvre (Musée du Louvre, 1993).

158  Research handbook on intellectual property and cultural heritage

Source: Licensed under CC BY 2.0.

Figure 8.2

“[ L ] Sherrie Levine – Fountain (After Marcel Duchamp) (1991)” by Cea

The artistic practice of collage, montage or assemblages of various materials had innumerable precursors over the centuries. However, collage only began to exert a real influence on the visual arts from the beginning of the twentieth century, when it was recognised as a legitimate practice of artistic expression. Thus, appropriative techniques can be identified within the first cubist collages of George Braque and Pablo Picasso. In 1911 Braque and then in 1912 Picasso began to use found objects – newspaper clippings, fragments of musical scores, bottle labels –

Re-evaluating the art practice of ‘appropriation’  159 deliberately incorporating them into their paintings.12 The artistic technique of ‘papier collés’, conceived by Braque and adopted by Picasso, reflects the desire for a “temporal break between objective reality and painting”.13 Ultimately, the invention of collage transgressed the romantic view of creation and called into question notions such as the originality of the work of art. Some artists claim that it is impossible to allege originality of a work. If all cultural products are simply a reworking of all that came before, no one can claim to have produced an original work of art at all. Instead, proponents of this view favour the ready-made or appropriated object as being more open, transparent and honest. By acknowledging the appropriation that occurs within the production of all art, appropriation artists such as Damien Hirst, Jeff Koons, Takashi Murakami and Mimmo Rotella use the power of pre-existing and signs to produce ‘new’ works whose purpose is to reveal the very processes of generating meaning that lie within and beyond the artwork. Robert Rauschenberg’s ‘combined paintings’, in which the artist integrates real-world images and objects with abstract painting, reflect his desire to confuse art and life. His works “form the basis of the artist’s permanent dialogue with the various technical media, between craftsmanship and the ready-made, between the gestural technique of the brush and the image reproduced mechanically”.14 During an interview held in 1963 when Gene Swenson asked Andy Warhol whether Pop Art was a fad, he replied: Yes, it’s a fad, but I don’t see what difference it makes. (…) I think that would be so great to be able to change styles. And I think that’s what is going to happen, that’s going to be a whole new scene. That’s probably why I am using silkscreens now. I think somebody should do all my paintings for me. I haven’t been able to make every image clear and simple and the same as the first one. I think it would be great if more people took up silkscreens so that no one would know whether my picture was mine or someone else’s.15

Andy Warhol, the Dandy of the Pop Art artistic movement, accumulated images, erased the uniqueness of the work, repeated in series, challenging the classic principle of originality of a work and questioning the principle of personal execution of an artwork. After the historical establishment of the artistic movement of appropriation in 1977, the artists of the ‘Picture Generation’ were particularly interested in revealing the dialectical and social force of an image through their work. Unlike the artists of the nineteenth century who were to copy the great masters in museums, no one works in front of the original. With the exception of Sturtevant, who says he works from memory, all take as their subject photographic reproductions of works – of those that one finds in works on art or in the form of postcards. What they copy is not a painting, a drawing or a three-dimensional object, but a mechanically reproduced image.16

Herta Wescher, Collage (Harry N. Abrams, 1969) 19. Audrey Lavest-Bonnard, L’acte créateur, Schonberg et Picasso, essai de psychanalyse appliquée (L’Harmattan, 2012). 14 Dossier de presse du Centre Pompidou, ‘Robert Rauschenberg combines (1953–1964) exposition 11 octobre 2006–15 janvier 2007’ (accessed 20 June 2021). 15 Andy Warhol and Gene Swenson, ‘extraits d’un entretien’ (1963) 11 ARTnews, 42. 16 Natacha Pugnet, ‘Figure de l’artiste en copiste’, Actes du colloque international Icône-Image, Chevillon (2005 Editions Obsidiane/Les trois P). 12 13

160  Research handbook on intellectual property and cultural heritage 2.1.2 Appropriation art and authorship The artistic ‘authenticity’ of an object made by one person but credited to another is being passionately debated in the context of this artistic practice. The conventional artist characterisation as someone who works alone and who personally creates each unique piece by hand as an expression of artistic ‘genius’, no longer applies. The boundaries between non-protectable ideas and work-embodied protection are not easy to draw. Dematerialisation of art – that should be related to the politicisation of art after May 1968 and the critique to the institutionalisation and commodification of art – becomes a reality particularly under Conceptual Art. Marcel Duchamp observed in 1915 that: the choice of ready-made is always based on visual indifference and, at the same time, on the total absence of good or bad taste. Now ahead, an artist is no longer just a person who produces a work; he is, above all, a creator who makes choices and these choices make him an artist.

By appropriating ready-made, mass-produced objects already around 1912, and through – mainly – his later interviews to David Sylvester, Marcel Duchamp caused a significant rupture by subverting the criterion of craftsmanship and by defining authorship as the conception of an idea by the artist. Thus, he is regarded as the predecessor of Conceptual Art of the 1960s. The impact of the Conceptual Art Movement resulted in the prevalence of theory over craftsmanship and of concept over form and materiality. There is a wide range of works in which the person credited as the artist has relied on other people’s technical knowhow, talent and industry, sometimes in part, sometimes entirely to bring an idea of life. American sculptor Barbara Bloom often commissions or collects objects that appear to date from earlier periods of history. She has stated: I don’t make stuff, I alter it. I don’t have the handmade element. (…) What I do as an artist is talk on the phone, and work with the craftsperson who produces what I want and make sure they do it right. There is no messy room; I work in my home.17

Levine’s work ‘Untitled (After Walker Evans # 3 1936)’ from 1981 perfectly illustrates how the direct gesture of appropriating an image can question the conception of originality that has been so appreciated by modernist artists.18 Provocative, the artist wanted to emphasise the fact that everything already exists in the world, to play with the notions of copying, reproduction, the image of an image. “It’s something that I feel very close to. I am not denying that people own things,” she recalls. “That’s not even the issue. What matters is that people want to own things, which is more interesting to me. What does it mean to own something, and even stranger, what does it mean to own an image?”19 But when an artist is being removed from the physical act of production and thus does not make their own work, what does it mean for the nature of art and for the status of the artist? What is the relationship between creativity and production? Does anybody have the right to

17 Kiky Smith, ‘Barbara Bloom by Kiky Smith (interview)’, (1996) https://​bombmagazine​.org/​ articles/​barbara​-bloom/​accessed 20 June 2021. 18 Bertrand Charles, ‘Sherrie Levine et l’appropriation: imposture ou acte créateur?’ (2012) Sociétés & Représentations 33, 129–142. 19 Sherrie Levine, in Jeanne Siegel, ‘After Sherrie Levine’, Art Talk: The Early 80s’, New York Da Capo 1988, p. 251.

Re-evaluating the art practice of ‘appropriation’  161 alter the original of a work of art or a copy thereof, protected or not by copyright law, in order to ‘make art’? Even if something happens to be a unique object ‘touched’ by an artist’s hand, doesn’t it still mean that there is copyright law infringement in the absence of the initial artist’s agreement? 2.2

Cultural Appropriation

In a broader cultural context, appropriation of ideas and other cultural manifestations has also been discussed at times as a legitimate outcome of cross-cultural communication and at others as a phenomenon disregarding the cultural significance of the appropriated material and thus causing harm to the traditional cultural expression holder(s). Cultural appropriation is defined as the “taking – from a culture that is not one’s own – of intellectual property, cultural expressions or artifacts, history, and ways of knowledge”.20 More recently, cultural appropriation is the act by a member of a dominant culture of taking a traditional cultural expression whose holders belong to a minority culture and repurposing it in a different context, without the authorisation, acknowledgement and/or compensation of the traditional cultural expression holder(s).21 Usually, the concept of cultural appropriation in the field of cultural heritage has a negative connotation in the sense that the appropriation of cultural expressions of a certain community goes beyond cultural appreciation and leads to a devaluation and misappropriation, harming not only the cultural product itself but the source community as well.22 As some communities (mostly indigenous ones) are more interested in protecting their ways of life than in making profit out of their intangible heritage, the possibility of excluding others from use is tempting.23 Can the boundaries between cultural appreciation and cultural reuse out of context be easily drawn considering that traditional, ethnic or folkloric expressions are indefinite elements of unincorporated group authorship requiring permanent protection and presenting a particular challenge, especially with regards to originality and authorship?24 2.2.1 Cultural appreciation and cultural misappropriation Not all appropriations shall be considered harmful to indigenous communities. “People and cultures have always exchanged and borrowed ideas from each other to create new forms of art and symbolic expressions, and most of the human creations reflect different sources of inspiration.”25 “Examples of cultural borrowings are omnipresent – tribal names for sports teams, cultural elements used in amusement theme parks, traditional medicine merchandised

Michael F. Brown, Who Owns Native Culture? (Harvard University Press, 2003). Sari Sharoni, ‘The Mark of a Culture: The Efficacy and Propriety of Using Trademark Law to Deter Cultural Appropriation’ (2017) 26 Fed Cir BJ 407, 408–410. 22 Jason Baird Jackson, ‘On Cultural Appropriation’ (2021) Journal of Folklore Research, 58, 1. 23 Coenraad Visser, in Hugh C Hanse, Michael Blakeney, Linda S Lourie, Paul E Salmon, and Coenraad Visser, ‘Symposium: Global Intellectual Property Rights: Boundaries of Access and Enforcement: Panel II: The Law and Policy of Protecting Folklore, Traditional Knowledge, and Genetic Resources’ (2002) Fordham Intellectual Property Media & Entertainment Law Journal 12, 753–803. 24 Susan Scafidi, Who Owns Culture?: Appropriation and Authenticity in American Law (Rutgers University Press, 2005) 11. 25 Karolina Prazmowska, ‘Misappropriation of Indigenous Cultural Heritage, Intellectual Property Rights in the Digital Era’ (2020) Santander Art & Culture Law Review 119. 20 21

162  Research handbook on intellectual property and cultural heritage by big pharmaceutic companies, or even whole languages used in computer games and toy lines as in the famous case of Maori TCE and Lego Bionicles.”26 The appropriations that are assumed to be damaging to the communal creative process are those that are out of context, generating the false impression of representing the identity of the community or belonging to the community. According to the point of view of indigenous communities, there is no need to hinder the normal, customary uses, transmission, exchange and development of folklore as long as this practice remains fair and is not offensive to the community.27 “It is not the same as cultural exchange, which is about acknowledging mutual respect, without having to borrow or steal or perform someone else’s culture,” states Professor Neal Lester.28 Any tangible or intangible forms in which traditional culture and knowledge are expressed, appear or are manifested such as verbal expressions from stories up to words, signs, names and symbols, musical expressions and expressions through action such as dances and other performances, as well as tangible expressions, such as paintings (including body painting) up to terracotta, textiles, musical instruments and architectural forms should be preserved as the result of a communal creative intellectual activity representing the cultural identity of the communities concerned so as to reflect the cultural and social evolution of such communities. Silke Von Lewinski uniquely explained the intrinsic liaison between, on the one hand, traditional cultural expressions and living heritage and, on the other hand, a community’s cultural and social identity. According to her, such expressions usually have a much deeper meaning and function than music, art, dance etc. in western societies; rather than only serving as entertainment, they often present the link of an individual member of the community with other members, the land, the ancestors and the entire surrounding world. Making a design, dancing a ceremonial dance or singing a folklore song often serves to reestablish these links, to reconnect and bring into harmony the individual members within the community with their surrounding world. Such activities reaffirm self-identification and thereby strengthen the identity of an entire community and the position of its individual members within the community, and may even be essential for its survival as a distinct community.29

2.2.2 Cultural appropriation and originality The boundaries between a legitimate inspiration resulting from the act of ‘borrowing’ from a traditional cultural expression and an inappropriate adaptation or copying out of context are easily blurred. Originality is a key legal concept aimed at playing a crucial role in drawing the line between tolerated cultural appreciation and impermissible cultural appropriation. It has been proposed that transformative creativeness, that is, an attempt to turn a traditional cultural expression into something new, to give it a new aura or to revisit it, might lessen the likelihood of cultural

26 B. Fitzgerald, S. Hedge, ‘Traditional Cultural Expression and Internet World’, in C. Antons (ed.), Traditional Knowledge, Traditional Cultural Expressions and Intellectual Property Law in the Asia-Pacifc Region (Wolters Kluwer, Alphen aan den Rijn 2009) 245–272. 27 Silke Von Lewinski, ‘International Protection of Folklore’ in Cultural Diversity: its Effect on Authors and Performers in the Context of Globalisation (Hrvatsko Drustvo Za Autorosko Pravo-ALAI 2008). 28 https://​www​.seedandsew​.org/​blog/​c​ulturalapp​ropriation (accessed 20 June 2021). 29 Silke Von Lewinski, ‘International Protection of Folklore’ in Cultural Diversity: its Effect on Authors and Performers in the Context of Globalisation (Hrvatsko Drustvo Za Autorosko Pravo-ALAI 2008).

Re-evaluating the art practice of ‘appropriation’  163 appropriation.30 Consequently, the fairer the new creation’s reference to the traditional cultural expression, or the more transformative the integration of the traditional cultural expression to the new creation, the less harm will cause to the community concerned, provided that the contemporary creation will show respect to the community. The judge in a famous Australian law case, the so-called ‘Carpet Case’, had no difficulty in identifying the originality requirement into a contemporary artwork based on pre-existing aboriginal form. According to the Court, “Although the artworks follow traditional Aboriginal form and are based on dreaming themes, each artwork is one of intricate detail and complexity reflecting great skill and originality.”31 In other words, the creators could use ideas or other cultural expressions but in an original non-traditional way so that their intellectual effort could be evident in their work. This observation perfectly fits with the specificities of traditional cultural expressions that are often created for spiritual and religious purposes: they embody communal identities, and their primary value is not economic.32 It seems pertinent that indigenous communities are more aspired to preserve and safeguard their communal traditional creative values and ways of life in perpetuity rather than ‘protecting’ them by using existing conventional legal systems that were conceived for other type of creations. Moreover, the notion of authentication in creating and maintaining the communal cultural creative process is crucial in striking the desired balance between freedom of art and respect for community values. The usefulness of this concept lies in its ability to link the outcome of traditional cultural expressions with their source communities, reassuring cultural sensitivity by affirming that this cultural product is not original or genuine. It is more the provenance of the cultural product than the product itself that counts.33

3.

THE LEGAL EVALUATION OF APPROPRIATION

The fact that appropriation is a relatively common art practice that moreover has been theoretically legitimised by Marcel Duchamp, by the conceptual artists in the 1960s and recently to a broader extent by postmodern theory as well as by cultural studies, has evoked debates in courts. Actually, the law regards the phenomenon of appropriation both in the copyright and the cultural heritage field in a more conventional way. A number of case law examples based on actual legal disputes will attempt to illustrate several important issues having in common the borrowing of pre-existing artworks, images or cultural expressions for creating a new artwork.

30 Brigitte Vézina, ‘Curbing Cultural Appropriation in the Fashion Industry’ (2019) 4 Centre for International Governance Innovation Papers 213. 31 Terri Janke, ‘Minding Culture: Case Studies on Intellectual Property and Traditional Cultural Expressions’ (accessed 20 June 2021). 32 Wend Wendland, Sustaining Creativity and responding to the aspirations of indigenous people 33 Susan Scafidi, Who Owns Culture?: Appropriation and Authenticity in American Law (Rutgers University Press, 2005).

164  Research handbook on intellectual property and cultural heritage 3.1

Appropriation Art and Copyright Law

3.1.1 Legal cases The first two legal cases involve Jeff Koons’ artistic works ‘Naked’ and ‘Fait d’hiver’, both taken from the series ‘Banality’ at his participation in a retrospective exhibition at the Centre Pompidou in Paris in 2014. The first work is a porcelain sculpture about one metre high, depicting two naked children, a boy offering a bouquet of flowers to a girl. According to the Paris Court of First Instance, this work is a complex work under Article L113-2 of the French Copyright Code and the embodiment of Jean-François Bauret’s pre-existing photographic work, which represented two naked children in an identical pose, without the prior consent of the photographer’s heirs and constitutes a copyright infringement on them.34 The Court of First Instance ordered the entire company of the artist and the museum to pay the sum of 20,000 euros to the heirs of the French photographer as compensation for the infringement of the intellectual property on the photographic work. In 2019, a Paris Court upheld a 2017 ruling that found the artist, and again the Centre Pompidou, guilty of copyright infringement.35 The second work, a 1988 sculpture by Koons called ‘Fait d’hiver’, depicts the bust of a woman lying on the ground opposite a pig that is wearing a flowered collar with a barrel, while two penguins look on. The Paris Court of Appeal confirmed, on 23 February 2021, the conviction of Jeff Koons for infringement for his statue of a woman and a pig, plagiarised from a 1985 Naf-Naf advertisement.36 The Court ordered the Centre Pompidou, Jeff Koons and the book editor to jointly pay Davidovici higher compensation than what was decided in the first instance, that is, the sum of €190,000.37 Additionally, the artwork, which is owned by the Fondazione Prada, can no longer be shown in France. The narrow interpretation of the exceptions to the French copyright law, such as the parody in this case, alongside the incorrect application of Article 10 ECHR in copyright cases,38 leaves little room for the French judge to proceed with more flexible legal reasoning to allow the unintentional creative reuse of pre-existing artistic creation protected by copyright law. Instead, the US judge has a more flexible mechanism for achieving the coveted balance. The exception of so-called ‘fair use’ allows the use of a copyrighted work without seeking the prior consent of the copyright holder of the work, provided that a set of criteria as specified in

34 Tribunal de Grande Instance [TGI] de Paris (Paris District Court of First Instance), 3rd Chamber, March 9, 2017, Succession Bauret c. Jeffrey Koons et le Centre national d’ art et de culture Georges Pompidou, No. 15-01086 (Fr). 35 Cour d’appel de Paris (Paris Court of Appeal), Pole 5, 1st Chamber, December 17, 2019 (No. 152/2019). 36 Cour d’appel de Paris (Paris Court of Appeal), Pole 5, 1st Chamber, February 23, 2021 (No. 034/2021) (Fr) 37 It is worth mentioning that in 2007 an artist’s proof of Koons’ Fait d’hiver sold at Christie’s for just under $4.3 million (£3 million) (https://​www​.art​-critique​.com/​en/​2021/​02/​jeff​-koons​-centre​-pompidou​ -found​-guilty​-of​-copyright​-infringement/​). 38 For a detailed analysis on this point, see Christophe Geiger, ‘Contemporary Art on Trial – The Fundamental Right to Free Artistic Expression and the Regulation of the Use of Images by Copyright Law’ in Thomas Dreier/ Tiziana Andina (eds.), Digital Ethics – The Issue of Images (Baden-Baden: Nomos, 2021).

Re-evaluating the art practice of ‘appropriation’  165 Section 10739 of the US Copyright Act and in particular on the condition of the existence of a transformative work. The most interesting law case in the US with regards to the evaluation of the artistic practice of appropriation concerns Richard Prince’s ‘Canal Zone’. Patrick Cariou, a French ethnographic photographer, spent more than five years with Rastafarians in Jamaica, gaining their trust and taking their portraits. In 2000, Cariou published a book of photographs, entitled Yes, Rasta, by Powerhouse Books, which contained both portraits of Rastafarian individuals and landscape photos. In 2007, the famous appropriation artist Richard Prince showed artwork at the Eden Rock Hotel. Among the works shown was a collage entitled ‘Canal Zone’, which consisted of 35 photographs taken, partially or entirely, from Yes, Rasta. Prince completed 29 paintings in his ‘Canal Zone’ series, 28 of which included images taken from Yes, Rasta, albeit collaged, enlarged, cropped, tinted and/or over-painted. The Gagosian Gallery showed 22 of the 29 of the ‘Canal Zone’ paintings and also published and sold an exhibition catalogue from that show. Cariou sued Prince, the Gagosian Gallery and Lawrence Gagosian for copyright infringement. The District Court of New York refused to find that appropriation art is per se fair use regardless of whether or not the new artwork in any way comments on the original works appropriated. Prince’s paintings, to the extent they merely recast, transformed or adapted the photos, were found to be infringing derivative works.40 On 25 April 2013, the Second Circuit Court of Appeals overturned the first-instance decision, ruling that Prince had sufficiently transformed the images he had used to be considered a fair use of Cariou’s work.41 The recent decision by the French Cour de Cassation of 5 May 2015, which concerns the reuse without permission by the painter Peter Klasen of three photographs by the fashion photographer Alix Malka, moved towards this direction.42 The argument of creative transformation does not seem to have left the French Supreme Court apathetic. The French Supreme Court, with its decision of 15 May 2015, reversed the Court of Appeal ruling based on Article 10 of the ECHR and referred the case again to the Court of Appeal of Versailles. The latter

Section 107 of US Copyright Act: Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include— (1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work. The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors. 40 Cariou v. Prince, 784 F. Supp. 2d 337, 348 (S.D.N.Y. 2011). 41 United States Court of Appeals for the Second Circuit in Cariou v. Prince 714 F. 3d 694 (2d Cir. 2013). 42 Cass. 1ère Civ. May 15, 2015, https://​www​.legifrance​.gouv​.fr/​(accessed June 20, 2021). 39

166  Research handbook on intellectual property and cultural heritage in its decision of 18 March 2018 ruled that it is not up to the judge but to the party invoking the freedom of expression to prove the necessity of the artistic choice of the specific work for reuse and the supremacy of the protection of freedom of artistic expression over the protection of rights of the photographer on his works used without permission and that in this case this proof was not achieved.43 Finally, another solution adopted by the German Copyright Act could serve as an example of inspiration and good practice since it successfully takes account of the freedom of expression within copyright legislation. According to Article 24 of the German Copyright Act, “an independent work which was created freely using the work of a third party may be published and exploited without the permission of the creator of the work used.” This paragraph does not apply to the use of a musical work whose melody has been recognisably reproduced for a new work. According to German theory and jurisprudence, reuse is permissible if it goes into the background of the new work and if the individuality of the copied elements has been lost in the face of the originality of the secondary creation. A case in point is the application of this provision to the wider problem of creative reuse. According to the facts of the case, the famous photographer Helmut Newton sued the artist George Pusenkoff, for the unauthorised reproduction of the silhouette of a woman from one of his photographs, in order to create his painting ‘Power of Blue’. Newton also asked the Court to destroy Pusenkoff’s painting. The Hamburg Court of Appeal ruled that the ‘Power of Blue’ painting was an independent creation. “While ‘photography’ played ‘with the effects of light’, a sign of creativity, the painter used the format and colors. In any case, the peculiarities and elements that are receptive to protection in the work of the photographer are not found in that of the painter.” The painting could not cause any harm since it did not reduce the market for copies of Newton’s photography.44 3.2

Cultural Appropriation and Copyright Law

3.2.1 Legal cases Could a work incorporating pre-existing traditional designs and images be considered an original artwork and therefore subject to copyright protection? In other words, are mere recreations of pre-existing folklore unlikely to meet the ‘originality’ requirement or do they remain in the public domain from the perspective of the copyright system? The answer to this question greatly depends on the nature of the protection afforded to traditional cultural expressions in each country and on the interpretation that the national courts would give. Only a few cases shall be briefly examined, serving as examples of the complexity of the issue. The Carpet’s Case Three Indigenous artists’ paintings that embodied pre-existing cultural images that are sacred and belong to the community of origin of the artists, the Rirratjingu clan, were put on display at the National Australian Gallery for educational purposes, with the prior permission of the artists. These images were then reproduced on carpets by an Australian company, Indofurn, without permission for such commercial use and sold in Australia as Aboriginal art. The 43 Cour d’Appel de Versailles (Versailles Court of Appeal), 1st Chamber, March 16, 2018 No. 15/06029 (Fr). 44 Geraldine Norman, ‘What’s new Pusenkoff?’, (2011) https://​ www​ .independent​ .co​ .uk/​ arts​ -entertainment/​what​-s​-new​-pusenkoff​-1594011​.html (accessed 20 June 2021).

Re-evaluating the art practice of ‘appropriation’  167 artists were concerned about the negative impact this unauthorised and unethical use might have on them within their community since the customary laws were not respected. They sued the importer of the carpets for copyright infringement. The court ordered the payment of damages for cultural harm, which was then something unheard of in the Australian legal system. Compensation was ordered to be paid to the artists, and they should determine how to distribute the money in accordance with their own customs. One of the defendants’ arguments in the case was that there was no original work involved on the part of the artists, as they were admittedly reproducing parts of their mythology or ‘dreaming’.45 However, the judge concluded that, “Although the artworks follow traditional Aboriginal form and are based on dreaming themes, each artwork is one of intricate detail and complexity reflecting great skill and originality.”46 It is the first legal decision that acknowledges that Indigenous art can be protected within copyright regime as long as it meets the requirement criteria of fixation and originality. John Bulun Bulun v R and T Textiles case The facts of the ‘Bulun Bulun’ case do not differ from the previous one. The artist’s bark painting that integrated imagery sacred to his clan, the Ganalbingu, with prior permission and conformingly with the customary regime, was altered and copied onto fabric by the R and T Textiles Company. The originality, however, of this case is the court’s recognition of the importance of protection of the interests that Indigenous communities have in artistic works embodying ritual knowledge as a significant development in law and equity.47 The pertinent aspect of this case related to a claim by the clan group to which the individual artist belonged that it in effect controlled the copyright in the artwork, and that the clan members were the beneficiaries of the creation of the artwork by the artist acting as a trustee on their behalf.48 However, from a copyright law perspective and with regard to the question of joint ownership by Bulun Bulun and the Indigenous community, the judge’s answer was clear: “A person who supplies an artistic idea to an artist who then executes the work is not, on that ground alone, a joint author with the artist. Joint authorship envisages the contribution of skill and labour to the production of the work itself.”49 In other words, the individual execution of the work remains at the heart of the copyright protection; the communal nature of creations could not be recognised by the copyright law regime as it does not meet the originality criterion. The above observation leads to the conclusion that the resulting creation that appropriates a traditional cultural expression may be protected by its individual author’s copyright if it meets the originality criterion, while the original cultural expression, belonging to an indigenous community, is not protected through any kind of intellectual property mechanism. Therefore, this could lead to the paradoxical fact of obliging communities to ask permission from intellectual property rights holders in order to use their own cultural heritage.

45 Lucas Lixinski, Intangible Cultural Heritage in International Law (Oxford University Press 2013). 46 George M* and Others v Indofurn Pty Ltd and Others (1994) 130 ALR 659 at 665. 47 Terri Janke, Case Studies on IP and Traditional Cultural Expressions, WIPO 2004 . 48 Lucas Lixinski, Intangible Cultural Heritage in International Law (Oxford University Press 2013). 49 Bulun Bulun v R & T Textiles Pty Ltd. (1998) 41 IPR 513.

168  Research handbook on intellectual property and cultural heritage This paradoxical situation was deftly addressed in the Isabelle Marant ‘huipil’ case. Concerning the confrontation of two competitors claiming ownership over the cultural product of the Mixe people, the judge considered that copyright of the ‘huipil’ was not recognised on the grounds that the artistic creation belonged to the people of the Mixe Community. Antik Batik filed a lawsuit against Isabelle Marant, claiming intellectual property rights in the design of a tunic called BARTA and that Marant infringed on these rights by including the tunic in her collection. In its decision of 3 December 2015, the Court ruled that Batik could not hold copyright in huipil-like designs since Marant proved that these huipils come from the village of Santa María Tlahuitolpec in Mexico. Batik cannot act on the basis of copyright since the documents provided by the Isabelle Marant company deprive this BARTA tunic of its originality.50

4. CONCLUSION How should the law react to embrace the collaborative appropriationist practices? Could a sui generis legal regime be the solution, that is, a sui generis system of legal licensing for artistic purposes so that the desired balance between art and protection of all interests (artists, communities, the public) can be re-established? What kind of system could be implemented so that all the cultural sensitivities of the source communities are respected and the cultural significance of their traditional cultural expressions safeguarded? As Susan Scafidi aptly stated, “At this point in our legal evolution, cultural appropriation is largely regulated by social norms, which are of course very fluid and very evolving, as is culture itself.”51 Beyond the social regulation, there are some interesting proposals for legally regulating this phenomenon of appropriation which appears urgently to all areas of human artistic activity. Professor Dussolier, in her recent work on the notion of inclusivity in intellectual property, urged the development of a regime covering inclusive situations in intellectual property to provide for preservation and sustainability, moving towards another regime of intellectual property, which could be a hybridisation of exclusive and inclusive entitlements.52 “Inclusivity could also renew our thinking about what intellectual property is, particularly when we seek to apply it to traditional knowledge and folklore. An intellectual property right that could be able to grant inclusive rights would better pay tribute to the collective and shared use. In consequence, maybe traditional knowledge could enrich our notion of intellectual property, without being trapped by it?”53 The idea of introducing a ‘domaine public payant’ model for collaborative appropriationist practices could also be part of this attempt of rethinking the traditional intellectual property regime. Based on a combination of the copyright regime and the domaine public payant

50 Tribunal de Grande Instance [TGI] de Paris, (Paris District Court of First Instance), 3rd Chamber, December 3, 2015, no 15/03456 (Fr). 51 Susan Scafidi in WWD Cultural Reckoning 5 Nov. 2020 by Sindhu Sundar, “Who Owns Culture?”. 52 Severine Dussolier, ‘Inclusivity in intellectual property’ in G. Dinwoodie (ed), Intellectual Property and General Legal Principles – Is IP a Lex Specialis?’ (Edward Elgar 2015) 101–118. 53 Dussolier, ibid.

Re-evaluating the art practice of ‘appropriation’  169 model,54 this form of protection might offer the desired balance between reusing creatively and remunerating a national or communal collective rights administration body a relevant royalty for the benefit of the artistic and/or the indigenous community. Whatever legal regulation to this phenomenon might be adopted, two basic parameters should be taken into consideration: first, multiple conceptions of creative process and ownership of culture should co-exist – an acknowledgment often missing in copyright discussions.55 Second, avoiding excessiveness in protection should be primordial so that the artistic and cultural creativity cannot be undermined or censured.

BIBLIOGRAPHY Artists in the Black, “Indigenous Cultural and Intellectual Property (ICIP)”, Arts Law Centre of Australia Information Sheet accessed 20 June 2021. Marina Markellou, ‘Appropriation Art and Cultural Institutions’ (2013) Queen Mary Journal of Intellectual Property, 3, 2. Marina Markellou, ‘Appropriation Art under Copyright Protection: Recreation or Speculation?’ (2013) European Intellectual Property Review, 7. Peter Shand, ‘Scenes from the Colonial Catwalk: Cultural Appropriation, Intellectual Property Rights, and Fashion’ (2002) Cultural Analysis, 3. Daphne Zografos, ‘The Appropriation of American Indian Names and Images in Trade Marks—The Washington Redskins Case’, in Guido Westkamp (ed), Emerging Issues in Intellectual Property: Trade Technology and Market Freedom: Essays in Honour of Herchel Smith (Edward Elgar, 2007).

54 By ‘domaine public payant’ we mean the regime according to which works of art – whose copyright has expired or is not applicable to them – belong to the public and they cannot be exploited unless a fee will be paid to bodies designated by the public authorities. Professor Dietz first analysed this regime applied to cultural creation in his study A. Dietz, Le droit d’auteur dans la Communauté européenne CEE, Collection Etudes, Série secteur culturel n° 2, Bruxelles,1976. See also Jocelyne Cairon & Alexis Albarian, ‘Financer la création culturelle par l’instauration d’un domaine public payant: le renouveau contemporain d’une notion ancienne’ (2006) https://​www​.cairn​.info/​revue​-legicom​-2006​-2​-page​-117​ .htm (accessed 20 June 2021). 55 Laura J. Murray & Kirsty Robertson, ‘Appropriation Appropriated: Ethical, Artistic and Legal Debates in Canada’ in Madelaine Saginur, Teresa Scassa, Mistrale Goudreau (eds.) Intellectual Property for the 21st Century: Multidisciplinary Perspectives on Intellectual Property Law (Irwin Law 2014).

9. Preservation and heritagisation of street art and graffiti Enrico Bonadio

INTRODUCTION This chapter expands on several policy issues raised by attempts to preserve and heritagise street and graffiti art. Such attempts have recently increased, the aim being the conservation of works of art which are increasingly perceived by some sectors of society as artistically meritorious. Indeed, these forms of art have long been considered ephemeral, as artworks placed in the public environment often disappear relatively promptly. They may be removed by the owner of the property upon which they are created; they may be painted over by local councils that want to keep the neighbourhood clean; they may end up being vandalised; and they may also deteriorate and eventually vanish simply due to the passing of time and the elements. In other words, street art and graffiti are vulnerable “to the give and take of the street”.1 Modern graffiti writing was born on the East Coast of the US. After the initial marking of names on the walls of Philadelphia and New York in the late 1960s and early 1970s (Cornbread and Cool Earl were amongst the first writers in Philadelphia, and Taki 183 and Julio 204 were the first ones in the Big Apple),2 a multitude of New York teenagers from different ethnic backgrounds, especially Latinos, further developed the initial wall-tagging into an elaborate lettering artform. They called themselves writers, as this was exactly what they did, i.e., writing their names on urban surfaces, at the very beginning walls and then also subway trains. The term graffiti itself is a symbol of the main characteristic of what would become a new artistic movement. Etymology matters here. The word comes from the Greek word γραφή/graphi (writing). And as mentioned, this is what those kids started doing at that time; they repeatedly wrote their names, often followed by the number of the street they were living in. They did so on the back of a society whose rules they refused to follow in an open act of defiance, and left them there for others, especially within their communities, to see and talk about. Stay High 149, Super Kool, Phase 2, and subsequently in the late 1970s and early 1980s Dondi, Blade, Lee Quiñones, Lady Pink, Zephyr, Skeme, and Seen are just a few examples amongst the many young New Yorkers who came from different boroughs of the city and contributed to building a new urban art style based on the destruction, reconstruction, metamorphosis and interpretation of the letters of the alphabet.3 1 Jeff Ferrell, Crimes of Style: Urban Graffiti and the Politics of Criminality (Northeastern University Press 1996), p. 197. 2 The phenomenon was even reported by the New York Times, which on 21 July 1972 published an article entitled “‘Taki 183’ Spawns Pen Pals”, narrating about Taki’s ubiquitous tag spreading all over the city.  3 Two major photographic books documented the explosion of graffiti creativity in New York City: namely Martha Cooper and Henry Chalfant, Subway Art (Thames & Hudson Ltd 1984); Henry Chalfant and James Prigoff, Spraycan Art (Thames & Hudson Ltd 1987). Two documentary movies have also

170

Preservation and heritagisation of street art and graffiti  171 Graffiti writing in New York continued to develop throughout the 1980s. Yet, after 1989 most writers abandoned the subway system and started focusing again on walls and other surfaces above ground as the city had won its long war to keep the subway system clean from graffiti – mainly by reinforcing criminal sanctions against writers and making subway yards almost impossible to reach. In the meantime, during the 1980s the graffiti-writing culture expanded to other US cities and countries around the world. It is also worthwhile to remember that in the US, forms of artistic writing on walls such as Cholo – consisting of Old English or Gothic typeface, which originally constituted the hand style created by the Latino gangs in Los Angeles – was already practised long before the explosion of modern graffiti in Philadelphia and New York. The 1990s was another prolific decade for graffiti art in the US and several other countries. It highlighted a growing divide between graffiti culture (still focused on the re-interpretation of the letters of the alphabet) and the emerging street art movement, which focused on images rather than letters and was developed by building upon and mixing with established artistic movements including muralism. After all, art on walls had already been practised in the US in the 1970s and 1980s, especially in New York, by fine and multi-disciplinary artists such as John Fekner, John Ahearn, Richard Hambleton, Jenny Holzer, Christy Rupp, Keith Haring, and several others. Art in the street had also been practised in Paris since the mid-twentieth century when a French artist, Jacques Villegle, started creating and placing his iconic décollages in the streets. Then, in the 1960s, Daniel Buren started putting up alternating stripes of paper over billboards and advertisements around Paris. Both of them set up a new artistic narrative and had a massive impact on the future of a peculiar French movement. Such movement was further bolstered in the 1970s by artists such as Zlotykamien as well as Pignon-Ernest, a situationist and a member of Fluxus, the international and interdisciplinary group of artists born in the 1960s that engaged in experimental art performances. Later in the 1980s, French stencil artists such as Blek le Rat, Jef Aerosol, and Miss Tic took this rising art movement to a whole new level. Subsequently, throughout the 1990s, first in the US and then in other countries, techniques other than spraycan paintings were pioneered and experimented, such as attaching stickers (the infamous Andre the Giant Has a Posse sticker, designed and widely disseminated by US artist Shepard Fairey, is particularly noteworthy) and paste-ups (popularised in the US by Cost and Revs). These techniques, which have been named ‘adhesive art’4 developed and refined in the subsequent two decades, are still popular today. As these artistic subcultures continued to develop further in the first two decades of the new century, more and more people outside of these communities have started to appreciate their artistic merit, especially where artworks are produced by individuals who have become iconic stars, like the acclaimed British artist Banksy. As mentioned, an inherent characteristic of these art forms is that they are created and displayed in public spaces. Because of that, and also due to their increasing appeal amongst certain sectors of society, especially young people, they are at risk of being appropriated and exploited for commercial purposes. And indeed, in the latest years there has been a sharp increase in cases where street and graffiti artists have complained about corporations (from sectors as diverse as fashion, food, entertainment, cars, brilliantly narrated the New York graffiti movement of the early 1980s, i.e., Charlie Ahearn (dir.), Wild Style (USA 1983); Tony Silver and Henry Chalfant (dir.), Style Wars (USA 1983). 4 Claudia Walde, Street Fonts – Graffiti alphabets from Around the World (Thames & Hudson: London 2011), page unnumbered.

172  Research handbook on intellectual property and cultural heritage and real estate) appropriating and exploiting their artworks without authorisation, for example, in advertising campaigns or as decorating elements of products. This unjust exploitation has recently pushed several practitioners of these art forms to look at copyright laws as a possible tool to protect their creativity, with legal actions recently proliferating. Complaints have not only been brought against unauthorised commercial exploitation of street and graffiti art. There have also been some cases against those who destroy murals or other street artworks without following the appropriate legal procedures. In the famous case involving the destruction of pieces (legally) located at the 5Pointz mural point in New York, in February 2018 a judge awarded a record sum of $6.7 million in damages to 21 graffiti and street artists who had sued the owner of the complex.5 The award was decided under the Visual Artists Rights Act (VARA), the piece of legislation which protects artists’ moral rights in the US, including the right to oppose the destruction of their pieces. I analysed elsewhere cases of commercial exploitation and illegal destruction of these forms of art, where street artists and writers have enforced their copyright and moral right of integrity;6 in particular, I looked at how the enforcement of the latter right may negatively affect the conflicting right of property owners to control their own space.7 This chapter will instead focus on broader policy issues surrounding the preservation and heritagisation of street and graffiti art. Is the heritagisation of these forms of art a valuable option to conserve them for posterity? Does the preservation of these artworks respect their authenticity as street art? Does it jeopardise the rights of other members of the public? Can these conflicting interests be balanced and reconciled? The chapter will address these (and other) questions, by also drawing on some semi-structured interviews I conducted with street artists and writers during my fieldwork. Before doing that, a preliminary section will briefly expand on recent cases of what I call decontextualisation of street artworks, which have raised a vibrant debate amongst art and art law scholars, amongst other experts.

REMOVALS AND RELOCATIONS OF STREET ARTWORKS Recent cases involving the surgical removal and relocation of urban artworks originally placed in the street have been widely reported. This occurred with several murals painted by famous artists such as Banksy, Stik, Invader and Swoon.8 The phenomenon is well represented in two movies. The first is the 2017 documentary Saving Banksy, directed by Colin Day, which narrates the story of an art collector’s attempts to save a Banksy painting from destruction and relocate it into a museum.9 The second is the 2018 film The Man Who Stole Banksy, directed

5 Cohen v G&M Realty 320 F. Supp. 3d 421, 2018 U.S. Dist. LEXIS 22662; Castillo v G&M Realty L.P., Nos. 18-498-cv. (L), 18-538-cv (CON), 2020 US App. 6 See for example Enrico Bonadio, The Cambridge Handbook of Copyright in Street Art and Graffiti (edited) (Cambridge University Press 2019). 7 Enrico Bonadio, Street Art, Graffiti and the Moral Right of Integrity: Can Artists Oppose the Destruction and Removal of their Works? (2018) Nuart Journal. 8 I summarised many of these high-profile removals (most of which involved Banksy’s artworks), in my article Copyright Protection of Street Art and Graffiti under UK Law (2017) Intellectual Property Quarterly, p. 201. 9 The movie was released in the US in January 2017. It documents the efforts of a collector to save and make available to the public the mural Haight Street Rat, painted by Banksy in San Francisco in

Preservation and heritagisation of street art and graffiti  173 by Marco Proserpio, a provocative documentary about how murals painted by the famous English artist are often removed, sold and collected.10 The phenomenon of decontextualisation of street art is also funnily satirised in Stik’s mural Art Thief.

Source: Photo by Stik.

Figure 9.1

Art Thief by Stik. Hackney, London, 2011

Many artists are obviously annoyed about this phenomenon,11 and so are the communities where the pieces are created and placed. Cases where local people voice their concerns, and

2010; and the difficulties he meets when dealing with city officials, museums (that turn down his offer to display the piece for free) and greedy art dealers (who are ready to pay six-figure sums to get their hands on the artwork). The difficulty of selling artworks removed from the street has also been highlighted by Peter Bengtsen, Decontextualisation of Street Art, in Bonadio (ed.), above fn. 6, p. 52 (noting that “by communicating their views on the removal and sale of street art to colleagues, collectors, fans and followers, artists can contribute to maintaining the existing negative discourse surrounding these issues – and thereby perpetuate the market’s doubt about the value (both monetary and artistic) and authenticity of extracted street works generally”). 10 The movie was co-written by Christian Omodeo and Fillipo Perfido, and produced by Sterven Pictures in association with Rai Cinema. 11 Some street artists even restore their pieces themselves. This is the case of London artist Stik, who often maintains his works by painting again over tags and scribbles left on his works: see Rebecca

174  Research handbook on intellectual property and cultural heritage react, against attempts to remove street artworks are not uncommon, especially when it comes to murals created by famous artists. Such protests have also been prompted by the belief that these pieces are basically gifts to the public. Losing them may be felt as a sign of disrespect towards art and in general as a cultural loss. Saying that, one may counterargue that efforts could be made to recreate an environment similar to the one we usually find in urban open air settings, e.g., by depriving the new indoor space which hosts the removed piece – for example, a gallery – of its ‘white cube’ dimension in order to create a street art effect: this could be done by showing bricks or distressed plaster, curved walls or ceilings to evoke an inner city or industrial sensation.12 Yet, despite these efforts, recreating the exact same atmosphere as in the street may be impossible, as in indoor locations viewers are “looking at the shadow of the real thing”,13 and street artworks have thus much less impact; this is also because of the lights, which in a museum or a gallery are fixed, but in the street change constantly, literally before our eyes.14 In other papers I explained the difficulties street and graffiti artists may encounter should they invoke the moral right of integrity to oppose these increasingly recurrent cases of removal and relocation, especially under US and UK laws.15 No copyright statute includes decontextualisation amongst the prejudicial treatments of the work which may trigger this legal protection. Also, US case law has explicitly excluded site-specific works from the scope of application of VARA.16 This inevitably leaves much street art and graffiti vulnerable to decontextualisation in the US. Indeed, it should be noted that a street art is often site-specific,17 which entails that a piece maintains its artistic meaning as long as it is kept in its original environment.18 In other

Appel, A ‘collaboration with the city’: Stik and the art of the street (23 March 2018), Christie’s website, available at https://​www​.christies​.com/​features/​Interview​-with​-street​-artist​-Stik​-8942​-1​.aspx​?sc​_lang​=​ en [Accessed 30 May 2021]. 12 Alison Young, Street Art World (2016 Reaktion Books), pp. 130–131 (also noting that some venues make available rooftops and courtyards for artists to paint as if they were working in the street, and that gallery owners may make the venue as matching the expectations of street artists and graffiti aficionados). 13 Cedar Lewisohn, Street Art: The Graffiti Revolution (Tate Modern Publishing 2009), p. 127 (reporting Blek Le Rat’s words). 14 Cedar Lewisohn, Abstract Graffiti (Merrell 2011), pp. 13 and 32. 15 Enrico Bonadio, Copyright Protection of Street Art and Graffiti under UK Law (2017) Intellectual Property Quarterly, pp. 188–220. 16 See Phillips v. Pembroke Real Estate, Inc., 459 F.3d 128 (1st Cir. 2006) (relying on the “public presentation” exception of VARA (17 U.S. Code § 106(A)(c)(2)), which provides that “the modification of a work of visual art which is the result of conservation, or of the public presentation, including lighting and placement, of the work is not a destruction, distortion, mutilation, or other modification”); Kelley v. Chicago Park Dist., 635 F.3d 290 (7th Cir. 2011). 17 Not all street art is site-specific, though. Some artists also place their works in the streets without paying much attention to a specific location: see Peter N. Salib, The Law of Banksy: Who Owns Street Art? (2016) 83 University of Chicago Law Review 2293, p. 2300. See also Ulrich Blanché, Banksy v Bristol Museum – Street Art or street “flavoured” art?, in Pedro Soares Neves – Daniela V. de Freitas Simões (eds.), Lisbon Street Art & Urban Creativity: 2014 International Conference (Volume 1), 2014, p. 36 (noting that there are different degrees of site-specificity of street art, with some works being able to be placed in any location). 18 See also Joe Epstein, London Graffiti and Street Art: Unique Artwork From London’s Streets (Ebury Press 2014) (reporting the opinion of London artist Stik: “I try to make my characters react to the space they are painted in. It’s all about context for me”).

Preservation and heritagisation of street art and graffiti  175 words, street art and graffiti are being “written on the skin of the city”,19 and are thus part of the cityscape, with the viewer and artwork being inseparable. As has been noted by Banksy himself, such removals and relocations are akin to locking wild animals in zoos.20 A different opinion could also be voiced, though. Far from being comparable with ‘art thefts’, decontextualisation of street and graffiti art could instead be considered as an example of ex situ conservation.21 This is especially the case where the extraction of the work from the street (for example, from a wall) and the relocation in a controlled and secure environment are competently and safely carried out, and free access by the public in the new protected location is guaranteed. This seems to have happened when an exhibition of murals by the Italian street artist Blu were detached in 2016 from the walls of a derelict building in Bologna, Italy, and exhibited in a museum as part of an exhibition named Street Art: Banksy & Co: L’Arte allo Stato Urbano. First, the conservators used a very sophisticated and effective technique of art restoration, adapting a process of removing paintings developed in Bologna in the eighteenth century. This technique consists of taking down a one-millimetre film from the concrete wall, and pasting it on a canvas, while conserving the original wall appearance.22 Second, although there was an entrance fee for the main exhibition, Blu’s detached murals were inserted in an area of the museum which was freely accessible by anyone. Thus, despite the harsh response from Blu (who in protest against the exhibition erased his remaining murals in Bologna),23 it seems the operation had some merits, especially considering that the pieces that had been detached were alternatively doomed to fade and be lost forever. Yet not all artworks that are removed from the street end up in museums or other educational venues. Removal of street art often materialises not for the purpose of ex situ cultural preservation, but for the purpose of being sold (not only by professional dealers within auction houses or galleries, but also by members of the public through online sale platforms).24 In such cases, the removals have exclusively been driven by the prospect of profit-making, and have had in most cases the negative externality of preventing the public from further viewing and enjoying the art. Denied free access to these works, lovers of these forms of art are unlikely to be satisfied simply by knowing that the pieces in question have been detached and are in good

Alison Young, Judging the Image: Art, Value, Law (Routledge 2005), pp. 50–74. See the interview with Banksy by Ossian Word, in Time Out London (31 March 2010). See also Peter Bengtsen, Street Art World (Almendros de Granada Press 2014), p. 229 (stressing that while the street context is generally inclusive, indoor venues such as art institutions have often an exclusive function). 21 On the distinction between ex situ and in situ conservation methods see Rita L. Amor Garcia, When documenting doesn’t cut it: Opportunities and alternatives to intangible conservation, in Street Art and Urban Creativity Scientific Journal – Intangible Heritage, Vol. 3/1 (2017), pp. 57–58. Protecting street artworks by covering them with perspex glass in their original location are considered in situ interventions. 22 See the interview with one of the exhibition’s curators, art historian Christian Omodeo, published in the online magazine Widewalls on 16 May 2016 (available at https://​www​.widewalls​.ch/​street​-art​ -bologna​-christian​-omodeo​-interview/​). 23 Giovanni Vimercati, Blu v Bologna: New Shades of Grey in the Street Art Debate, The Guardian, 17 March 2016. 24 Take the iconic video-game-inspired mosaic tiles placed by Invader in the streets of many towns around the world, which have become popular with collectors. Some of them have been taken from the street and then offered for sale on eBay at a price ranging around 10,000 euros each: see Young, above fn. 12, p 151; Lewisohn, above fn. 13, p. 141. 19 20

176  Research handbook on intellectual property and cultural heritage hands (which often turn out to be private collectors’ hands). Artists whose pieces are removed and relocated in this fashion are often equally unhappy, with many of them confirming this in the interviews I conducted during my ethnographic research. Banksy has also strongly condemmned the removal of his artworks. When a controversial exhibition named Stealing Banksy? featuring several of his removed pieces was organised in 2014 in London, the following comment appeared on the artist’s website: The ‘Stealing Banksy?’ exhibition taking place in London this weekend has been organised without the involvement or consent of the artist. Banksy would like to make it clear – this show has nothing to do with me and I think it’s disgusting people are allowed to go displaying art on walls without getting permission.25

Source: Photo by Laznia Center for Contemporary Art.

Figure 9.2

Community Mural by Stik. Gdańsk, Poland, 2011

Profit-driven removal of street artworks is also more likely than other interventions to neglect and jeopardise the artistic integrity of the piece.26 This is what happened to a mural created in 2011 in the Polish town of Gdańsk by London artist Stik, who is famous for painting his iconic 25 Street artists rarely authenticate pieces that have been originally placed in the street, and when they do, they often do not endorse private sales. London artist Stik, for example, “ONLY authenticates street pieces when 100% of the money goes back to the community. Stik Studio restore, supply a COA [Certificate of Authenticity] and place the sale. Private sales are NOT authenticated under any circumstances” (see his official website at http://​stik​.org/​fundraising/​). 26 The tranformation of street artworks into valuable commodities could also be compared with the development of the antiquities trade in the twentieth century. The way antiquities and street art pieces are traded is curiously similar. As has interestingly been noted, “[t]he high monetary value and collectability of street art and antiquities have increased demand. With high demand and insatiable buyers comes the requirement for supply. The pressure and profits to supply create a black market of underground trading”: see Mary Elizabeth Williams, Who Owns Street Art?, Center for Art Law, 25 March 2013 (also noting

Preservation and heritagisation of street art and graffiti  177 Stik figures in London and other towns around the world. The work featured a series of 53 Stik figures holding hands, representative and in celebration of the local community. It was painted on large metal shipping containers with the help of a group of young artists. Three years later the piece disappeared, and in 2015 ten pieces of the containers reappeared (representing 16 out of the 53 figures originally painted), chopped up and offered for sale at a gallery in West London for £10,000–12,000 per section.27 Not only can this removal not be considered an ex situ conservation, it actually amounts to a mutilation of a work of art in pursuit of the highest possible profit margin – it therefore could be deemed a clear violation of the artist’s moral right of integrity. Stik did strongly complain to the gallery. Yet, the case never went to court and was subsequently settled.

Source: Photo by Stik.

Figure 9.3

Three of the pieces from the Stik mural at the Bankrobbery gallery in London in late 2015

HERITAGISATION OF STREET AND GRAFFITI ART It is exactly because of the vulnerability of these forms (and the fact that artists and writers often omit to protect their pieces via the moral right of integrity) that street artworks are sometimes protected, e.g., through special glasses, by both owners of walls and local councils. One may also note that only artworks made by famous street artists such as Keith Haring and Banksy are eventually protected – which could be deemed discriminatory and hypocritical.28

that “in the next decade we may be seeing international agreements to protect valuable street art – just as countries are joining together to develop ‘understandings’ about the antiquities trade”). 27 See also Alexander Herman, Street artist and community fight for dismembered mural, 18 December 2015, (available at https://​www​.ial​.uk​.com/​street​-artist​-and​-community​-fight​-for​-dismembered​-mural [accessed 30 May 2021]. 28 But for an example of preservation efforts directed towards works created by less famous artists, see what happened in Minneapolis in the wake of George Floyd’s murder. More specifically, two grassroots organisations, Save the Boards and Memorialize the Movement, joined forces with the aim of pursuing the mission of collecting and conserving the many outdoor plywood artworks that had been painted to commemorate George Floyd. On this project see Heather Shirey – David Todd Lawrence, Creating a Global Archive of Covid 19 Street Art (2021) 3/1 Nuart Journal, pp. 10–15.

178  Research handbook on intellectual property and cultural heritage Why should just well-known artists be given such a chance? This occurred, for example, when the deputy leader of a council in the English town of Hastings decided to preserve Banksy’s Tesco Sandcastles piece by covering it with perspex glass and noted: “I know that we have a zero tolerance policy on graffiti, and that is absolutely right. However, we have to be flexible so on this occasion I have agreed that Banksy can be an exception to our rule and can stay.”29 Such hypocrisy may even produce jealousy within the subculture and provoke vandalism. In Melbourne, Banksy’s piece Little Driver was protected by plexiglass by the city after an application to protect it was approved. Yet, the piece was subsequently vandalised by unknown people pouring silver paint behind the plexiglass.30 Not only works by street artists, but also some graffiti pieces may soon be preserved.31 There are early signs of this already happening. In 2021 Italian seasoned writer Keyone intensified a campaign to raise funds needed to complete the restoration of two pieces painted in 1984 by the influential New York writers Phase 2 and Delta 2 in a little village called Quattordio in the north-western part of Italy. The project was started in 2017, with the support of the local council. It should also be reminded that in the 5Pointz case not only street artists but also writers joined the legal action, obtaining damages following the illegal destruction of their graffiti. Some commentators have proposed to accord public entities, either at local or central government level, the authority to decide whether works of street art deserve to be preserved under heritage laws.32 The need for such a protection is particularly pressing in light of recent cases in which valuable murals were accidentally whitewashed by property owners or local councils. As a matter of fact, the latter may not be aware that what has been placed on their wall is a work of artistic value. This is what the owner of a Bristol property on which Banksy stencilled the Gorilla in a Pink Mask artwork thought before painting over it.33 Also, the local council of Essex town Clacton-on-Sea got it wrong when painting over a Banksy piece – showing a group of pigeons holding anti-immigration banners – which could have become a major touristic attraction.34 Such paradoxical situations have been satirised by Banksy 29 See Ellsworth-Jones, Banksy: The Man Behind the Wall (New York: Aurum Press Ltd 2013), p.101. The council of the Islington borough in London also showed interest in preserving Banksy’s street artworks. According to The Times, a listing of Banksy’s artworks was given to the council’s head of environment to avoid his pieces being painted over: see Jeffrey Ian Ross, London Calling – Contemporary Graffiti and Street Art in the UK’s Capital, in Jeffrey Ian Ross (ed.), Routledge Handbook of Graffiti and Street Art (Routledge 2016), p. 278. 30 Young, above fn. 12, pp. 142 and 148. 31 This would reflect a big change in the way outsiders of the subculture perceive graffiti. It should be reminded that members of the general public and media outlets have traditionally considered graffiti lettering (and to a certain extent stickering and paste-up art) as a less valuable and pleasant form of art, if not deplorable visual pollution, while the more socially acceptable street art is often championed and glorified. 32 See for example Cathay Smith, Street Art: An Analysis Under U.S. Intellectual Property Law and Intellectual Property’s ‘Negative Space’ Theory (2013) 24 DePaul J. Art & Intell. Prop 259, pp. 276–277 (noting that in the US many municipalities – especially those with significant historical resources – have preservation laws protecting historic buildings or historic features of buildings from being demolished or altered; and that “communities could attempt to petition their local government officials to list and preserve popular street art”). 33 Stephen Bates, Banksy’s Gorilla in a Pink Mask is Painted Over, The Guardian, 15 July 2011. 34 Schacter, Banksy mural in Clacton-on-Sea knocked from its perch – but no tears from me, The Conversation, 3 October 2014.

Preservation and heritagisation of street art and graffiti  179 himself with the ironic piece Cave Painting (which depicts a worker using a power washer to clean up valuable cave paintings), painted in May 2008 in the famous Graffiti Tunnel of Leake Street, in the London area of Waterloo.35 Several murals have been protected under heritage laws. Examples include artworks by Keith Haring, which have been preserved via perspex sheets, including Tuttomondo painted in June 1989 on the back of a church in the medieval town of Pisa (Italy) and listed in 2013 by the Italian Ministry of Culture as an “artistic-historical product of particular importance”;36 and the Melbourne mural painted in 1984 on the site of the Collingwood Technical School in the area of Fitzroy, listed in 2004 on the Victorian Heritage Register.37 Another example is a piece by French artist Blek Le Rat, entitled Woman with Child, stencilled in the early 1990s in the German town of Leipzig, which is now on Saxony’s state list of historical monuments.38 It has been argued that the same formal recognition and protection should also be given to Banksy’s artworks, some of which have already been preserved with perspex sheets by property owners. It has been suggested, in particular, that a Banksy placed on a building would make the latter deserve a Grade II listing, which under UK law is reserved for buildings of special interest, warranting “every effort being made to preserve them”.39 I believe that if such proposal eventually gains ground, the fact that Banksy’s murals are produced illegally, namely without the authorisation of the building owner, should not be an obstacle for such recognition. However, not all attempts to preserve or heritagise street and graffiti art are successful. First, several artists and writers (also amongst those I talked to) prefer their pieces to fade rather than being conserved, as they value the transient nature of these art forms. Moreover, local authorities are sometimes reluctant to conserve these pieces. For example, the proposal by the National Trust and Heritage Victoria to list the iconic graffiti-filled Melbourne laneways (especially Hosier Lane) has been strongly criticised and successfully opposed by anti-graffiti organisations and labelled as an attempt to “condone vandalism”.40 Also, after being informed about the property owner’s intention to demolish the site, the former de facto 5Pointz curator, Meres One, filed an application with the New York City Landmark Preservation Commission

See also Salib, above fn. 17, p.2311. Decreto 335/2013. Haring’s mural was inserted in the list of “beni tutelati”. 37 See the dedicated website at http://​melbourneharingmural​.com​.au/​[last accessed on 30 May 2021]. See also Lachlan MacDowall, In Praise of 70K: Cultural Heritage and Graffiti Style, Continuum: Journal of Media & Cultural Studies. 20(4), p. 474. On Keith Haring’s murals in Pisa and Melbourne, and on the procedures to conserve them, see also Jenny Dickens, Antonio Rava, Maria Perla Colombini, Marcello Picollo & Will Shank, Keith Haring in Pisa and Melbourne: Controversy and conservation, Studies in Conservation, Volume 61, 2016 (reminding that Haring spoke about his desire for the Pisa mural to last for hundreds of years and the need to repaint it should it be necessary to preserve it). 38 Jan Schilling, Preserving art that was never meant to last, 7 May 2012, blogpost available at http://​ www​.dw​.com/​en/​preserving​-art​-that​-was​-never​-meant​-to​-last/​a​-15933463 [last accessed on 30 May 2021]. 39 John Webster, Should the Work of Banksy be Listed? (2011) 4 J.P.L. 374, p. 380 (drawing an interesting comparison between Banksy’s pieces and the famous Abbey Road zebra crossing in north-west London, featured on the last studio LP by The Beatles and an iconic symbol of the band and a destination for fans: the crossing was given Grade II listing by English Heritage due to its national cultural value and status). 40 Tracey Avery, Values not Shared: The Street Art of Melbourne’s City Laneways, in Lisanne Gibson – John Pendlebury (eds.) Valuing Historic Environments (2009) Ashgate, p. 139. 35 36

180  Research handbook on intellectual property and cultural heritage to preserve the complex as a site of cultural significance.41 The application was unsuccessful because the artworks had not been in existence for at least 30 years.42 It should be noted that age constitutes an important factor when it comes to deciding whether or not to preserve visual artworks, especially paintings.43 In response to criticisms of proposals to list and protect this category of artworks, some have advocated fine-tuning heritagisation procedures to make them more ‘participatory’ and respectful of the rights of others. Alberto Frigerio and Elvira Khakimova, for example, have suggested a system where local communities would be encouraged to propose selected pieces to be inserted in national lists of outstanding street artworks, by requiring a minimum number of signatures. They also recommend local councils to assess the conformity of the recommended art with pre-identified parameters: for instance, they should not carry any discriminatory or offensive messages or be dangerous for the public or the surrounding environment, and any artworks incorporated into private properties would require the consent of the building’s owner.44 All these requirements make sense and – I believe – should be coupled with what I consider to be the main precondition for listing a street and graffiti artwork: its artistic merit. People who have extensive knowledge and understanding of these particular artistic movements should be involved when making the final decision. Leaving the final say to assessors who are experts in traditional fine arts with no awareness of the creative processes and outputs of the street and graffiti art communities would be a mistake, as it may increase the risk of an underestimation of the value of the art and its consequential destruction.45 In the event that the artwork is of exceptional importance and is incorporated into privately owned buildings, procedures to secure its heritagisation even if the owner does not give consent should be explored, guaranteeing the latter fair and reasonable compensation if necessary.

41 The City of New York can designate a site under its Landmarks Preservation Law; see N.Y.C. Admin. Code § 25–302(n) (defining “landmark” as “[a]ny improvement [to real property], any part of which is thirty years old or older, which has a special character or special historical or aesthetic interest or value as part of the development, heritage or cultural characteristics of the city, state or nation”). 42 See the Letter from NYC Landmarks Preservation Commission, 20 August 2013, ECF No. 31. The only way 5Pointz could be saved – Judge Block noted in Cohen v. G & M Realty L.P. – was via the City of New York exercising its power of eminent domain to acquire the site outright. Yet, the City chose not to do that. 43 See also Isabelle Brajer, Values and the Preservation of Contemporary Outdoor Murals, in M. Sánchez Pons, W. Shank, L. Fuster Lopez (Eds), Conservation Issues in Modern and Contemporary Murals (2015) Cambridge Scholars Publishing, Editors, p. 42 (also noting that murals ageing can bestow an unmistakable and inimitable look of patina on a paint layer, testifying to its authenticity). 44 Alberto Frigerio and Elvira Khakimova, Shaping the Street Art Legal Framework: The Clash between Private and Public Interests in the Banksy ‘Slave Labour’ Case, Aedon, Rivista di arti e diritto, 2/2013. A similar scheme had already been proposed, with particular reference to muralism, by Timothy W. Drescher, Priorities in Conserving Community Murals, paper presented at the Getty symposium ‘Mural Painting and Conservation in the Americas’ Los Angeles, CA, 16–17 May 2003, The Getty Conservation Institute, p. 7. 45 After all, the involvement of experts when it comes to assessing art placed in the public environment is not a new thing. Take the Los Angeles Mural Assessment and Conservation Project, started in 1998, and relying on committees of experts in public art, preservation and mural creation: see Rainer, L., Stavroudis, C., Williams, D. and Zebala, A. “Where to Start When the City is Full of Art – The Los Angeles Mural Assessment and Conservation Project”, in H. Yngvason (ed.) Conservation and Maintenance of Contemporary Public Art (2002), Archetype Publications, pp. 107–113.

Preservation and heritagisation of street art and graffiti  181

LOSS OF AUTHENTICITY AND THE CONFLICTING RIGHTS OF MEMBERS OF THE PUBLIC Attempts to preserve street and graffiti art have also been criticised. Not only anti-graffiti organisations are vocal in this regard, especially when it comes to pure graffiti lettering with no figurative elements. Such attempts may also be disliked by artists and street art insiders, who fear that said moves risk damaging the authenticity of these forms of art. In this section, I will expand on this issue as well as the potential clash between conservation plans and conflicting rights of members of the public.46 As mentioned, I expanded elsewhere on the conflict between artists enforcing their moral right of integrity (aimed at opposing destruction of their art) and the owners of the properties upon which these pieces are placed.47 Loss of Authenticity and Photographic Documentation as Alternative Tool Several commentators stress that graffiti and street art are ‘participatory’, which means that anyone could paint over the art, destroy it, add something to it, or complement it.48 Altering street art can indeed be considered as part of a “design dialogue”,49 or “democratic multiparty conversation”50 within the urban environment. Artworks placed in the street – the argument goes – cannot be properly understood as ‘finished’ works created by just one person, but they instead require constant exposure to change to remain authentic.51 Preservation of these forms of art would therefore undermine their authenticity by freezing them and the dialogue they spur in time and space.52 Using Alison Young’s words, “conservation is not conversation”;53 putting perspex sheets to protect a street artwork effectively terminates the communication between artists and turns the piece into a “civic amenity or, worse, a cultural commodity”54 (in addition to increasing the risk of its commodification and removal).55 Similarly, Susan Hansen argues that “street art’s invitation to engage in the city’s ephemeral dialogue is anthitetical to 46 This section expands on some reflections I made in the book chapter, ‘Preserving Street Art and Graffiti and the (often) Conflicting Rights of Artists, Property Owners and Local Communities’, in J. McCutcheon – F. McGaughey, A Research Handbook on Art and Law (Elgar 2020). 47 Bonadio, above fn. 7. 48 Ulrich Blanche, ‘Street Art and Related Terms – Discussion and working definition’, in Pedro Soares Neves – Daniela V. de Freitas Simões, Street Art & Urban Creativity Scientific Journal (2014), p. 37. See also Maria Chatzidakis, Street Art Conservation in Athens: Critical Conservation in a Time of Crisis (2016) Studies in Conservation 6, p. 17 (noting that “changes that affect its [artwork] aesthetic may not affect its meaning”). 49 Samuel Merrill, Keeping it real? Subcultural graffiti, street art, heritage and authenticity (2015) International Journal of Heritage Studies 21/4, p. 383. 50 Susan Hansen, ‘This is not a Banksy!’: Street Art as Aesthetic Protest (2015) Journal of Media & Cultural Studies, p. 6 (highlighting the process of ongoing creation of artworks on the north London wall where Banksy painted Slave Labour after its removal). 51 Linda Mulcahy – Tatiana Flessas, Limiting law: art in the street and street in the art (2016) Law, Culture and the Humanities, p. 9. See also Minty Z. 2006 “Post-Apartheid Public Art in Cape Town: Symbolic Reparations and Public Space”, Urban Studies, 43, p. 430 (noting that the damage to a public artwork in Cape Town can be seen as an “act of engagement or ‘co-authorship’ rather than vandalism”). 52 Merrill, above fn. 49, p. 383. 53 Young, above fn. 12, p. 182. 54 Ibid. 55 Hansen, above fn. 50, pp. 1–2.

182  Research handbook on intellectual property and cultural heritage traditional heritage frameworks”.56 These words are echoed by Laima Nomeikaite: “[framing] street artworks deprives citizens of the right to experience them (in the public space and ephemerality) in daily life and the broader right to engage with the city.”57 Ex situ preservation would be even more damaging to the authenticity of street art and graffiti since – as we have seen – it completely removes the work from its often crucial urban context. Indeed, the very meaning of most street artworks is often dependent on their in situ nature and the ongoing dynamic relationship within the community in which they exist,58 including those who vandalise the pieces.59 Street and graffiti artists do not just treat the city as a canvas; they also use the streetscape as a structural element of their artworks. Anything around the actual piece is part of the artistic experience, including – it has been curiously suggested – the taste of pollution, the smell of dog’s excrement or takeaway food, the noise of traffic and people’s conversation.60 It has also been argued that, if heritage tools are to be relevant and useful to these forms of art, they would probably have to move from a methodology that dictates the fixing of a stable and unchangeable narrative pertaining to the past towards a discipline that tolerates alteration and erasure.61 A form of heritage preservation that meets these standards is photographic documentation.62 Indeed, analogical and digital pictures have been documenting and conserving street and graffiti art for decades, and continuously make these forms of art accessible to large audiences all over the world. The same can be said of videos, especially those created by or on behalf of artists to highlight their pieces and the way they are created. Many of these pictures and videos can be easily found in specialised magazines and websites, as well as in social media networks, such as Instagram, Flickr and Facebook, where they are widely shared and commented on even by people outside the street art and graffiti scenes.63 An interesting attempt to document and conserve these forms of art by using such methodologies is the “100 Days of Leake Street”, a photographic project by architectural historian Sabina Andron. The project shows the changes on ten different walls in the famous London Graffiti Tunnel in the south London area of Waterloo over 100 consecutive days.64

56 Susan Hansen, The Right to Write the City: Breaking the Law of Untouchability (2017) Nuart Journal, p. 28. 57 Laima Nomeikaite, Street Art as Heritage: Right to the City? (2017) Nuart Journal, p. 34. 58 Alison Young, Street Art, Public City: Law, Crime and the Urban Imagination (New York: Routledge 2013). 59 This has also emerged in my fieldwork. US street artist Elle noted during our encounter at a café in Brooklyn: “it’s part of the game. Your shit is going to get tagged and it’s going to change. That’s what makes it beautiful.” 60 Mulcahy – Flessas, above fn. 51, p. 11. See also Chatzidakis, above fn. 48, p. 18 (noting that street artists often use “collapsed walls as a creative background”); Ed Bartlett, Street Art (2017) Lonely Planet, p. 150 (reporting the opinion of the Portuguese artist Vhils: “The context of the environment is vital, as the work needs to communicate and co-create a story with the existing history of a place. I don’t want to make works that ‘take over’ an area, but rather are a part of the fabric of that space”). 61 Mulcahy – Flessas, above fn. 51, p. 9. 62 Merrill, above fn. 49, p. 383; Garcia, above fn. 21, p. 55. 63 Photographic documentation is relevant to muralism as well: see Eva Sperling Cockcroft – John Weber – James D. Cockcroft, Towards a people’s art: the contemporary mural movement (1997) Dutton Publisher, p. 267 (even noting that “the photograph becomes more real than the act, and the act (mural) simply an excuse for the photograph”). 64 See Dr Sabina Andron website at https://​sabinaandron​.com/​leake​-street [Accessed 30 May 2021].

Preservation and heritagisation of street art and graffiti  183 Photographs and videos therefore play an important role in disseminating and raising awareness about these art forms, while also preserving the intangible heritage of artworks that are often doomed to fade quickly. Even New York’s Judge Block, in his 2013 preliminary decision denying the injunction to enjoin the demolition of the 5Pointz mural point, stressed the importance of photographic documentation for conservation purposes. He noted that “the plaintiffs’ works can live on in other media. The … works have been photographed, and the court, during the hearing, exhorted the plaintiffs to photograph all those which they might wish to preserve.”65 Also, photographs of graffiti, especially of illegal graffiti (which is more likely to be removed quickly) are increasingly being shown in galleries and museums. For example, old photographs of New York subway graffiti pieces from the 1970s and 1980s, such as the ones curated by photographer Henry Chalfant, have been exhibited several times.66 There have also been expositions of graffiti pictures, whose aim was not only to document the art, but also to try to preserve its subversiveness. An exhibition in Modena, Italy, in 2016 named “1984 – Evoluzione e rigenerazione del writing” displayed photographs of illegal graffiti created by writers predominantly from the gallery’s urban area. The aim was to allow viewers to juxtapose the artworks in both the street (where they are created and are usually perceived as vandalism by the general public), and in a gallery space.67 The exhibition’s organisers tried “to counteract the elitist nature of modern artistic institutions”, by creating “a continuity between the inside and the outside” of the gallery and “literally turned inside out the boundaries of the white cube”.68 In this case, pictures of graffiti constitute the works themselves,69 and the reproductions do not lack any of the main features that are relevant to the appreciation of graffiti.70 Even some graffiti artists support the idea of having photographs of their works in a gallery. Italian writer Fra 32 confirmed that coming across pictures of his own pieces in the 1984 exhibition in Modena was “an experience that [felt] authentic”.71 Several street artists and writers I interviewed also highlighted the importance of photographic documentation. After all, this is an art form which is still considered by a part of these subculture as transient. Canadian street artist Roadsworth said: “I accept that there is a certain

Cohen v. G & M Realty L.P., Case No. 13-CV-5612 (FB) (JMA) (EDNY 2013). One such exhibition was organised in New York in November 2016 at the Eric Firestone Gallery: see the webpage https://​www​.​ericfirest​onegallery​.com/​exhibitions/​henrychalfant​_1980. Henry Chalfant is an American photographer and videographer well-known for his work on graffiti and hip-hop culture. His pictures are in the collection of several prestigious museums. 67 Interview with Pietro Rivasi, curator of the exhibition. 68 Andrea Baldini, “Dangerous Liaisons: Graffiti in da Museum”, in Pietro Rivasi, Un(Authorized)// Commissioned, in Pietro Rivasi – Andrea Baldini (Eds.), Un(authorized) // Commissioned (2018) Whole Train Press (ed.), p. 27–32 (also stressing that graffiti “need not change to enter the ‘temples’ of contemporary art: they are those institutions that need to change to make room”). 69 Pietro Rivasi, Now We Wonder If Graffiti Will Ever Last?, in Pietro Rivasi – Andrea Baldini (Eds.), Un(authorized) // Commissioned (2018) Whole Train Press, p. 13. In our interview Pietro Rivasi added that graffiti writers themselves consider pictures as alternative to the original pieces; and that therefore showing pictures of graffiti in a museum or gallery matches writers’ practice of showing and disseminating their artistic outputs within the subculture. 70 Baldini, above fn. 68, p. 30 (also comparing graffiti to performance art that has always entered the exhibition space and the market through documentation of the works themselves, which are by their nature ephemeral and not marketable). 71 Baldini, above fn. 68, p. 29. 65 66

184  Research handbook on intellectual property and cultural heritage temporary time frame to the work I do, but I also take pictures of my work so I preserve them.” London artist Eine has a similar view: If you’re a starting artist and you pay for all the paint and wall rights, and it gets wiped, I understand why people get upset, but at the end of the day we are living in a digital world. So yeah, just take a photograph and put it on Instagram. That’s how our art lives nowadays, the digital era and photos is preservation.

US-based artists Rubin and Gabriel Corti share this view. The former said to me: “I accept a property owner changing his mind and whitewashing my mural. I’ve pictures anyway. I’m kind of used of having my murals disappear.” And the latter confirmed: “I understand it [the mural] won’t last forever, but as long as I get my high-resolution photos, I’ve my documentation and it will last forever.” Most writers also accept photographic documentation as the best way to preserve graffiti. London writer Crane DPC noted in an interview with me: “I quite like the fact it’s ephemeral, once I’m finished and have taken a photo, I’ve already moved on to my next painting. As long as I’ve documented it, it really doesn’t matter to me how long my work lasts.” Another London writer, Noir, is on the same page. He argued during our conversation: “I accepted it [destruction] decades ago. I grew up with graffiti since 1984 so the rules of the streets still apply today. You paint your piece, get photos and wave it … goodbye!” And New York writer Serk simply commented: “I accept it [destruction] totally, as long as I have the photo.” Contrary opinions have also been voiced, however. It has been noted that intangible conservation of street and graffiti art through photographic and video documentation is not enough to preserve it.72 This is also what the mastermind and curator of 5Pointz told me during our conversation in his flat in Brooklyn: “pictures are just not enough … There is no comparison between the real piece on the wall and the photograph. What about the scale? What about the wall’s texture?” These words were echoed by Marie Flageul, long-time spokeswoman and advocate for 5Pointz. She commented during our interview: The original piece is the artist’s business card, especially in gentrified areas. By placing the work in the street, an artist positions herself. Take the Mona Lisa by Leonardo da Vinci, for example: if you look at the original painting in the Louvre, her eyes follow you: this doesn’t happen with a picture.

Other commentators have a similar opinion. They argue that pictures actually decontextualise the art, as in a photo “there is an obvious limitation of the impression that can be perceived in the street”.73 Despite efforts to imbue the indoor environment hosting the picture with an urban look and feel, photographs will never be able to entirely recreate the real street atmosphere. In this way, it is difficult to keep the image of the street artwork authentic, with the piece always subject to the interpretation of those in charge of transferring the idea.74

72 See the interview with Christian Omodeo, co-organiser of the above-mentioned “Street Art: Banksy & Co: L’Arte allo Stato Urbano” exhibition in Bologna, by graffiti and street art aficionado Good Guy Boris, available on https://​www​.youtube​.com/​watch​?v​=​YF0dbIcAop8 [Accessed 30 May 2021]. 73 Alice Nogueira Alves, Why can’t our wall paintings last forever? – The creation of identity symbols of street art, in Street Art & Urban Creativity Scientific Journal, Intangible Heritage (2017) Vol. 3/1, p. 17. 74 Garcia, above fn. 21, p. 56.

Preservation and heritagisation of street art and graffiti  185 There is no doubt that any kind of preservation – be it in situ, ex situ, or via photographic or film documentation – affects the authenticity of street and graffit art. Putting perspex sheets over the work, removing and relocating the piece, or introducing pictures of graffiti into galleries will never create an experience exactly the same as directly viewing it in its original street context. If a decision is made to conserve a street artwork for posterity, I believe we should choose the option which is least disruptive to the authentic artistic message. The in situ method of preservation likely best responds to this objective. Perspex or other protective barriers, despite preventing or limiting the dialogue between urban artists75 and carrying the risk of ‘musealising’ the streets,76 nevertheless have some merit: they make it possible for the aficionados of these forms of art to continue enjoying the art – more or less temporarily77 – in the same environment in which it was originally created.78 The decision of how to conserve the piece in situ should endeavour to both protect the integrity of the artwork as much as possible,79 and minimise the impact of glasses or barriers on its message and visual aesthetics (e.g., in terms of light reflection). Due consideration should also be given to the rights of the property owner. While the latter’s consent should arguably be sought and obtained where possible, I believe that in exceptional cases of outstanding art, preservation plans should go ahead even without their authorisation. In such cases, property owners could possibly be compensated if the preservation of the artwork negatively affects their ability to fully enjoy their space. Clash with the Rights of Other Members of the Public Preserving street artworks may also have a negative impact on the rights of ordinary people who come across them. At times, works of public art are commissioned, and the commissioning entity finds itself confronted by an angry public that does not like the work and wants to remove it.80 The famous case of Tilted Arc, a controversial public art installation by Richard Serra in New York in the 1980s, is emblematic. Tilted Arc was a wall of steel installed outside government buildings in Manhattan in 1981. It was 12 feet high and 120 feet long, and traced a subtle arc over its length and leaned slightly to one side. While several critics stressed the

75 Yet, the ability to continue the ‘conversation in the street’ is not totally affected by glasses or other barriers. Other artists and taggers could still leave their sign or mark close to the artwork, and in particular in areas of the same wall which are not protected. 76 That is, converting the street into a type of museum (and thereby, by implication, robbing it of its true street integrity). That in situ preservation carries the risk of “musealising the street” is a point made by art historian Christian Omodeo in a conversation we had in London in March 2018 during the Art on the Streets – Art as Intervention conference at the Institute of Contemporary Art. 77 Chatzikadis, above fn. 48, p. 18 (making the point that “although in situ conservation interventions to rescue murals have a temporary effect, they have value for the community”). 78 See Susan Hansen, “‘Pleasure stolen from the poor’: community discourse on the ‘theft’ of a Banksy” (2016) Crime, Media, Culture, 12(3), pp. 302–303 (voicing the opinions of several residents of the north London area of Tottenham, where the removed Banksy mural No Ball Games had originally been placed, with several of them complaining about the social and economic impact of the removal: one local “enjoyed seeing it every day on the way to work” and another noted that “when the Banksy was in situ sightseers would cross to see the Banksy and spend money in the area. Nobody comes now”). 79 It has been argued for example that low-quality perspex glasses do not make the wall breathe, which would seriously damage the painting. 80 Joseph L. Sax, Playing Darts with a Rembrandt (2001) University of Michigan Press, p. 27.

186  Research handbook on intellectual property and cultural heritage artistic value of the scultpure, many ordinary people and passers-by considered it ugly and disruptive to their daily routine. The artwork was eventually removed in 1989 following Serra’s unsuccessful legal action to retain it in situ. Serra had also earlier sued the US government, arguing that his free speech rights of artistic expression would be infringed by the removal of the piece.81 This case reveals that people who live, work, or visit the area where artworks are placed may have strong opinions on the art that is incorporated in public locations, both positive and negative, and wish to be consulted. Indeed, one of the main reasons for having public art is to give the local people an opportunity – not an obligation – to experience creative works.82 Artists’ rights “would have to be stretched pretty far to include a right to compel unwilling people to experience their work far into the indefinite future”.83 The issue of community aversion to graffiti and street art also emerged during my fieldwork. I was observing Italian artist Run painting a huge wall on the back of a church in the south London area of Peckham. As Run was working on (what would eventually become a wonderful) mural entitled Mary – Origin and Destination,84 a woman who was passing by loudly asked him: “You’re changing the colours of the area. Why are you doing that?” The artist replied: “Well, I’ve been asked to do that. It’s my job,” which prompted her huffy response: “They should have asked our opinion. I’ll talk to the priest because we live here.” After the south London woman left the scene, Run told me: “It’s strange, isn’t it? I should have told that woman: perhaps, the value of your property is going to increase because of my mural. And I wonder whether her reaction would have been different if a McDonald’s had been installed there. Perhaps she would have not complained in the same way.” Disagreements between local people and street and graffiti artists are often inevitable. Sometimes, these disagreements escalate, and threaten the final destruction of the public artwork. A policy adopted in the 1990s by the King County Arts Commission in Seattle may be a good example of how to manage this situation. The Commission established that artworks publicly acquired by them could be removed if they received “consistently adverse public reaction for a period of five or more years”.85 Organising polls and petitions in the local area where the artwork is placed may assist in assessing public opinion. For example, in 1998 the people of Carlsbad in Northern San Diego County voted overwhelmingly – 67% to 33% – to call for the removal of Split Pavillion, a highly controversial sculpture placed on a waterfront square.86 This painful experience has resulted in Carlsbad City Council thereafter being “a little shy about public art proposals”.87 Polls or petitions may also produce positive responses for street art, however. This is what occurred in the British town of Bristol in 2006, where a local council held an online poll

81 On this case see Judith Bresler, ‘Serra v. USA and its Aftermath: Mandate for Moral Rights in America?’ in Daniel McClean (ed.), The Trials of Art (Ridinghouse 2007) 195–211; Michael Brenson, The Messy Saga of “Tilted Arc” Is far from Over, The New York Times, 2 April 1989. 82 Sax, above fn. 80, p. 27. 83 Ibid. 84 Alice French, Holy street art, Batman! There’s a massive new mural on a church in Peckham, 15 August 2017, Time Out London. 85 Sax, above fn. 80, p. 31. 86 Ibid. 87 Phil Diehl, Carlsbad art plan proceeds with caution, The San Diego Union Tribune, 16 February 2016.

Preservation and heritagisation of street art and graffiti  187

Source: Photograph by Run © 2017.

Figure 9.4

Mary – Origin and Destination (Run)

in the hopes of retaining Banksy’s Well Hung Lover mural. Its success prevented the street cleaning team from removing it.88 Further, in 2010, an online petition aimed at preserving an artwork painted by Belgian artist Roa in the east London area of Hackney gained more than 2,000 signatures in a week, which eventually convinced the local council to abandon its plan to remove it.89 Yet, some types of street art might be very difficult to preserve in situ, irrespective of community opinion. Road safety grounds might be invoked to justify the removal of some artworks placed on street signs or created by distorting them. Take again Canadian artist, Roadsworth, nicknamed as the poet of roads, who uses public streets as canvases by modifying parking lots, crosswalks, sidewalks and other asphalt surfaces. Although his art is appreciated by many,90 it is also criticised for distracting drivers and putting their lives at risk.91 Yet, the artist dismisses this criticism, and told me during our conversation:

Webster, cited above fn. 39, p. 374. Ellsworth-Jones, cited above fn. 29, pp. 5–6. 90 Francine Lord, Commissioner at the City of Montreal Public Art Bureau, noted that many “pedestrians and ordinary people addressed the municipality in support of the artist’s work”. Her comment is reported in the documentary video on Roadsworth’s art available at https://​www​.youtube​.com/​watch​?v​=​ 2xZsNemvhDc [Accessed 30 May 2021]. 91 Barbara Speed, Street art is great, but don’t try it on crosswalks, Citymetric, 11 February 2016. 88 89

188  Research handbook on intellectual property and cultural heritage If you are going to say that the work I’ve done or any street art is a danger, then you have to say that all adverts on the street are … distractions and are harmful to drivers … I mean there are millions of distractions in the centre of the city and street art is the least of the distractions.

More specifically, Roadsworth referred to one of his favourite street interventions, the Zebra Footprint, and insisted that, far from creating risks for drivers, this intervention “was very simple, minimalist and subliminal. It was very subtle because it didn’t disrupt the signal’s purpose and people weren’t sure whether the signal was altered … I made an effort not to disrupt the purpose.”

Source: Photograph by Roadsworth © 2003.

Figure 9.5

Zebra Footprint (Roadsworth)

A similar view is expressed by Clet Abraham, a French artist based in the Italian town of Florence who alters road signs by attaching stickers to them. In the interview with me, he rebutted road safety issues raised by critics: The uniqueness and originality of my intervention on street signs catch drivers’ attention. Obviously, I make sure not to alter too much the original meaning of the message. My stickers occupy just a small

Preservation and heritagisation of street art and graffiti  189 part of the entire sign, and thus tends to ‘vanish’, as drivers’ eyes only focus on the important part of the street sign.92

Source: Photograph by Jacopo Santini © 2015.

Figure 9.6 Although the two artists claim that their artistic interventions do not negatively impact on road safety, their pieces are doomed to be removed by city officials on these grounds – and also due to the fact that they are unauthorised. In such cases, it is hard to think how these artworks could be conserved in situ by city councils. Photographic documentation seems to be the only way to preserve a very peculiar and fascinating way to artistically play with street and public signs.

CONCLUSION In this chapter we have seen that one of the characterising features of street art and graffiti has been for a long time their ephemeral nature. These artistic subcultures are in evolution, though, with some street artists and writers increasingly interested in trying to preserve their pieces. Local councils and communities have also stepped in and supported plans to conserve valuable art placed in urban environments under heritage laws. These attempts have also been prompted by controversial cases of removal of street artworks and their relocation in indoor environments.

92 Clet Abraham added that he does not have any personal interest in transforming the original meaning of street signs as his aim is to make fun of their inflexible and authoritarian character, and without that element his work would lose all its meaning. He also clarified that he does not take anything away from the street sign, rather he adds “meaning, poetry, humour, by looking at the dialogue”.

190  Research handbook on intellectual property and cultural heritage The decision whether street and graffiti art should, and can, be preserved and heritagised interests and affects three categories of stakeholder: artists themselves, property owners, and local communities. Making decisions regarding the existence or treatment of the work is not straightforward, as satisfying the interests of a certain category may jeopardise those of the others. Moves by artists and/or local communities and councils to conserve street pieces, for example, may be opposed by the owners of the property upon which the art is placed. Conversely, people from local areas may complain about and oppose street or other public art projects, based on aesthetic, practial or safety grounds. Also, plans to conserve the work may run contrary to the very will of street and graffiti art communities (including the artists themselves) that still value the ephemerality of their creation and consider it a sign of authenticity. It is certainly difficult to reach a fair and reasonable balance between the rights and interests of each of the three identified categories. Decisions of this kind are evidently fact-sensitive that inevitably the right balance should be found by judges, or administrative central or local bodies, based on the specificity and complexity of each case. As mentioned earlier, if a decision is eventually taken to conserve a street or graffiti artwork, we should choose a method which is best capable of minimising the negative impact on authenticity. I believe that in situ preservation best responds to this aim, especially if the piece to be saved is culturally relevant to the local community which hosts it.

10. Copyright issues on the use of images on the Internet Marie-Christine Janssens, Arina Gorbatyuk and Sonsoles Pajares Rivas

1. INTRODUCTION The empowerment of the Internet and technological globalization enabled Internet users to access and share digital content (almost) without barriers and geographical borders. Digital images provide an outstanding example. There are billions of images on the web, most of which are readily accessible and ripe for unauthorized copying.1 According to the Copytrack Global Infringement Report of 2019, there are around 3 billion images shared on the Internet daily, 85 percent of which are used without a valid license.2 Just like any other original work, digital images are protected by copyright law. They can be defined as digitized and digital born images that are uploaded on the Internet, including paintings, drawings, graphics and photographs. For a long time, only a small group of specialists (authors of images), that had access to expensive equipment, could produce high-quality images, e.g., photographs.3 The new technologies revolutionized the world of creativity and the rank of authors has been joined by new actors. Nowadays, digital content creators (e.g., bloggers, digital artists and graphic designers) are one of the predominant copyright holders. In fact, any smartphone owner can potentially be an author of a digital image. Furthermore, new actors with technological expertise have also entered the market and started to actively produce digital content and/or digitize the (previously only tangible) content and offer it to users on their platforms on various terms.4 In particular, multiple online image platforms have been created to increase the accessibility of images, such as Shutterstock, Pixabay and Wiki Commons. In addition, galleries, libraries, archives, and museums (GLAMs) have recently been embracing the digitization trend by displaying their digitized collections online, and, thus, could also be considered image platforms. Another peculiar type of digital content platforms is social media, for example Instagram and Facebook. They do not only offer their users the possibility to access digital content, including images, but also to become active content creators.

1 Elizabeth J Tao, ‘A Picture’s Worth: The Future of Copyright Protection of User-Generated Images on Social Media’ (2017) 24 Indiana Journal of Global Legal Studies 617, 618. 2 Copytrack GmbH, ‘Copytrack Global Infringement Report 2019: International Image Theft in Comparison’ (2019) accessed 30 May 2021. 3 Wilhelm Burger and Mark J Burge, Digital Image Processing: An Algorithmic Introduction Using Java (London: Springer London, Limited 2016) 1. 4 Nancy E Wolff and Mikaela I Gross, ‘Copyright Protection of Images Online’ (2017) 9 Landslide 18.

191

192  Research handbook on intellectual property and cultural heritage The rapid migration to the digital world is naturally not without consequences for both authors and users. The main challenges for the former revolve around safeguarding their copyright and (commercial) interests in the digital environment. In Section 3 we review how authors can protect their rights on the Internet and establish a cooperation with digital image platforms that assists them in managing their IPRs. Concurrently, users may struggle to understand under which conditions they are allowed to reuse images found online. In our view, as explained in Section 4, the lack of transparency of authorship and ownership over certain digital images in addition to the lack of visibility of the concrete scope of image usage rights pose significant barriers for users. We conclude by summarizing the legal implications the Internet imposes on the actors engaged in the circulation of digital images, namely authors, users and online platforms. To start, Section 2 provides an overview of the legal framework applicable to the protection and use of digital images.

2.

COPYRIGHT PROTECTION OF DIGITAL IMAGES: RELEVANT LEGAL FRAMEWORK

In this contribution we only focus on the copyright-related matters of protection and use of digital images. We acknowledge that not only copyright legislation is of relevance to the protection and governance of digital images; however, other types of laws (e.g., legislation that aims at protecting cultural heritage5 and privacy and data protection law) fall outside the scope of this chapter. 2.1

Digital Images as a Subject Matter of International Copyright Protection

In the Berne Convention (BC) the following provisions are of particular importance for the topic under review.6 First, Article 2(1) explicitly lists photographs (one of the core types of digital images) as examples of ‘literary and artistic works’ that are susceptible to copyright protection.7,8 More specifically, this provision mentions “photographic works to which are assimilated works 5 See contribution of Maria-Daphne Papadopoulou, ‘States’ discretion to classify IP subject matter as national cultural treasures’ in Chapter 14 of this book. 6 Berne Convention for the Protection of Literary and Artistic Works, September 9, 1886, revised at Paris July 24, 1971 (hereafter ‘BC’). These provisions have also been carried over to the Agreement on Trade-Related Aspects of Intellectual Property Rights, April 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299, (hereafter ‘TRIPs’) as well as the World Intellectual Property Organization Copyright Treaty, December 20, 1996, U.N.T.S. 121 (hereafter ‘WCT’) instruments. 7 On the history of photographic copyright and its passage into the category of artistic works, see Kathy Bowrey, ‘The World Daguerreotyped: What a Spectacle! Copyright Law, Photography and the Economic Mission of Empire’ in Brad Sherman and Leanne Wieseman (eds), Copyright and the challenge of the new (Wolters Kluwer 2012); Tao (n 1) 620 (US perspective). 8 Text only added at the occasion of the revision of 1948. While photos were already known at the time of the signing of the Convention in 1886, their protection was then controversial. See Lionel Bently, ‘Art and the Making of Modern Copyright Law’ in Daniel McClean and Karsten Schubert (eds), Dear Images. Art, Copyright and Culture (Ridinghouse London 2002) 331.

Copyright issues on the use of images on the Internet  193 expressed by a process analogous to photograph.” Other ‘images’ listed include works of drawing, painting, engraving and lithography, and sketches. Whereas the term ‘digital’ is not expressly used in the BC, it is safe to presume that the new digital forms of literary and artistic works fall within the subject matter of copyright protection. Second, Article 2(3) specifies that “translations, adaptations, arrangements of music and other alterations of a literary or artistic work shall be protected as original works without prejudice to the copyright in the original work.” This provision is important in view of the participative culture on the Internet where images are regularly modified by users. Even though digital images can be effortlessly copied, users are not only precluded from reproducing the digital image in its original form9 but also from sharing it in a modified form without permission of the rightsholder.10 Finally, Article 7(4) allows for a differentiated treatment as regards the minimum term of protection for ‘photographic works’ which shall last “at least until the end of a period of twenty-five years from the making of such a work.” Thus, the BC differentiates photographic works from other visual arts that benefit from the ‘standard’ term of (at least) 50 years after the death of the author as prescribed by Article 7(1). 2.2

Basic EU Copyright Principles Applied to Digital Images

On the EU level, the term ‘literary and artistic works’ is not defined in any Directive thus far, but its identification in the BC is implicitly acknowledged.11 Nevertheless, the basic conditions for protection are explicitly enshrined in the established CJEU’s case law in the sense that copyright protection will arise for works that have been expressed in a clear and precise manner and that meet the standard of originality.12 While the first condition is not problematic for digital images, we start from the premise that such images also satisfy the threshold condition of originality (the ‘author’s own intellectual creation’ or ‘AOIC’), just like any other original work, unless indicated otherwise.13,14 In the EU, the most important point of reference today in respect of the assessment of the ‘AOIC’ standard in the case of photographs are the guidelines given by the CJEU in the case Painer.15 The elements cited by the Court to conclude that a portrait photo could satisfy the EU originality standard are transposable to the central issue of the protection of image reproductions addressed in this contribution. In particular, it is elaborated in Painer that “as regards a portrait photograph, the photographer can make free and creative choices in several ways and at various points in its production. […] By making

As prescribed by the general reproduction right in BC, art 9 (n 6). Unless users can rely on relevant copyright exceptions or limitations, discussed in Section 4.2.2. The right of adaptation is also further discussed in Section 4.2. 11 Case C-310/17 Levola Hengelo BV v Smilde Foods BV [2018], paras 38–39. 12 ibid. 13 See Section 4.2.2.1 for more details on ‘non-original reproductions’. 14 This starting point may now seem unsurprising, but the relationship between photography and copyright was not always straightforward and there have been real debates on their copyrightability in the past. See Bowrey (n 7) 13; Keith Lupton, ‘Photographs and the Concept of Originality in Copyright Law’ (1988) 10 European Intellectual Property Review 257; Alistair Abbott and Kevin Garnett, ‘Who is the “Author” of a Photograph?’ (1998) 20 European Intellectual Property Review 204; Ronan Deazley, ‘Photographing Paintings in the Public Domain: A Response to Garnett’ (2001) 23 European Intellectual Property Review 179. 15 Case C-145/10 Eva-Maria Painer v Standard Verlags GmbH and Others [2011] 798. 9

10

194  Research handbook on intellectual property and cultural heritage those various choices, the author of a portrait photograph can stamp the work created with his ‘personal touch’.”16 In essence, the Painer decision emphasizes that the (human) author has to conduct free and creative choices (e.g., vis-à-vis composition, lighting, pose, angle of view) to satisfy the requirement of originality. The copyright in (digital) images will automatically arise on the part of the maker (the author), from the moment of their creation.17 In the specific case of a photography, that will normally be the person who ‘pressed the button’.18 Merely staging or arranging a photograph will normally not be sufficient to claim authorship.19 Besides moral rights, copyright vests rightsholders with an exclusive right to authorize or prohibit any reproduction or communication to the public of images as stipulated in Articles 2 and 3 of the Information Society Directive (InfoSoc Directive).20 For this contribution, both rights come to the forefront. The right of communication to the public will be relevant for such activities as posting, uploading, re-posting third party’s images on websites, social media or cultural heritage platforms.21 Furthermore, images are often shared in an adapted form (e.g., by using filter or cropping functions), which concerns the rights of reproduction and adaptation. Vis-à-vis the (re)use of digital images, the following situations should be distinguished. First, the author may give prior, explicit and unqualified authorization to the publication of images on the Internet. In essence, in such situation the author has granted authorization to communicate that work to all internet users,22 unless they decided to make use of technological or contractual measures restricting the access.23 Besides, not all digital images available online are protected by copyright, because some digitally born images or digital reproductions of out-of-copyright works24 may not satisfy the protection requirements.25 In all other cases the acts of communication to the public, reproduction and adaptation can only be conducted

ibid, paras 90–92. Regularly, images may be made by employees or on commission by an independent person (e.g., freelance photographer commissioned by a museum to make a reproduction of works in their collections). The related issues regarding copyright ownership are not discussed in this contribution. 18 The famous US copyright dispute Naruto v Slater (2018) DC No 16-15469 about a selfie taken by a monkey comes to mind. See Andrés Guadamuz, ‘The Monkey Selfie: Copyright Lessons for Originality in Photographs and Internet Jurisdiction’ (2016) 5 Internet Policy Review accessed 30 May 2021. 19 Case Creation Records Ltd v News Group Newspapers Ltd (1997) EMLR 444 Ch D. 20 Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society [2001] OJ L 167/10 (hereafter ‘InfoSoc Directive’). We will not go into details of the CJEU case law on these exclusive rights, which is particularly voluminous and complex as regards the right of communication to the public. The essential elements are captured and evaluated in Eleonora Rosati, Copyright and the Court of Justice of the European Union (Oxford: Oxford University Press 2019). 21 Technically also a reproduction is made each time an image is posted, re-posted, shared or retweeted. 22 Case C-301/15 Marc Soulier and Sara Doke v Premier Ministre and Ministre de la Culture et de la Communication [2016], para 36. 23 Case C-392/19 VG Bild-Kunst v Stiftung Preußischer Kulturbesitz [2021], para 50. 24 See more on this issue in Section 4.2.2. 25 The issue of the use of public domain works is discussed in more detail in the contribution of Charlotte Waelde ‘Intangible cultural heritage, intellectual property, and the public domain’ in Chapter 17 of this book. 16 17

Copyright issues on the use of images on the Internet  195 with an explicit permission of the rightsholder, for instance, through a license (Section 4.2.1), unless such uses cannot be opposed by the author for other reasons (Section 4.2.2).

3.

AUTHORS’ PERSPECTIVE:26 ONLINE DIGITAL IMAGE ‘REPOSITORIES’ AS FACILITATORS OF THE COMMUNICATION OF IMAGES TO THE PUBLIC

Online image ‘repositories’ have embraced the opportunity to join the digital market. Those platforms of different kinds serve as intermediaries between rightsholders and users and offer a wide range of digital images to the latter under different conditions. Three main types of online digital image ‘repositories’, aiming at facilitating (re)use of digital images, will be discussed in this contribution: (1) stock images repositories, which store and categorize various digital images on their platforms and offer uploaded digital images to their users for potential reuse; (2) social media, which allow their users to share digital content when communicating on the platform; and (3) cultural heritage institutions (CHIs) digital repositories, which upload the digitized versions of their collections on their websites. 3.1

Stock Images Repositories

In general, stock images platforms can be divided into two main types: the ones that aim at providing content contributors with the possibility to acquire financial remuneration for the use of their creations, and the ones that support a non-pecuniary distribution of deposited works. Additional attention will briefly be given to the copyright regime applicable to images shared via so-called image search engines. 3.1.1 Paid stock images repositories Such stock images platforms as Shutterstock or Adobe Stock allow their contributors (authors of digital images) to deposit their works on the platform and obtain financial compensation when those works are downloaded by users. The repository, as an agency, collects the licensing fees from their customers (generally received in the form of monthly or yearly subscription plans or on-demand packs) and then transfers the collected royalties to the image creators.27,28 The clear advantage for the latter to join these initiatives is to avoid negotiating licensing 26 In this section, the terminology ‘author’ refers to the owner of the copyright, which can be either the original author or – more likely – a third party that acquired the rights from the author. 27 Hong Luo and Julie Holland Mortimer, ‘Copyright Infringement in the Market for Digital Images’ (2016) 106 The American Economic Review 141. 28 The underlying agreements specify the methods of compensation and calculations of compensation rates, which may depend on the image levels and the number of image licenses obtained during the calendar year. See Shutterstock Contributors Terms of Service, art 8 accessed 30 May 2021 (hereafter ‘Shutterstock Agreement’); Earnings Schedule accessed 30 May 2021; Adobe Stock Contributor Agreement 2020, art 5 accessed 30 May 2021 (hereafter ‘Adobe Stock Agreement’); Royalty Details for Contributors. accessed 30 May 2021.

196  Research handbook on intellectual property and cultural heritage agreements with individual parties, as well as obtain visibility and financial remuneration on a more efficient basis. Those platforms generally do not request the authors to transfer their copyright when contributing their images, but they indirectly substantially restrict the rights of the latter. Content contributors have to grant the platform “a license to further sublicense [the platform’s] right to use, reproduce, publicly display, distribute, modify, publicly perform, and translate the Work on a non-exclusive, worldwide, and perpetual basis in any media or embodiment.”29 In some cases authors are even asked to waive some of their moral rights, such as the right of attribution.30 Yet, this practice is questionable from an EU law perspective and the related contractual clauses may not be enforceable in the EU.31 Furthermore, according to the terms of Adobe Stock Contribution Agreement, the platform is granted the rights to enforce the contributors’ IPRs but it does not have an obligation to do so,32 while authors are not allowed to take action themselves without the prior written consent of the former.33 To secure their business interests and the rights of rightsholders, digital images platforms may incorporate various technological protection measures (TPMs) in an attempt to limit the illegal reuse of the digital images.34 Some repositories go to great lengths in safeguarding their interests by means of TPMs or sophisticated digital rights management tools (DRM) and have been heavily criticized due to the potential restrictions these measures can impose on the uses of works which may go beyond the will of the author or not be in line with a certain applicable exception or limitation.35 3.1.2 Free images repositories The image creators may also decide to distribute their work on a free-of-charge basis and, for instance, deposit them on platforms that support distribution of digital images on a royalty-free basis, such as Pixabay, Freerange, Pexels. While these platforms seem to provide an attractive service to both rightsholders and users, the latter actors should realize that the underlying contractual arrangements primarily aim at safeguarding the (business) interests of those platforms. Indeed, similarly to paid image platforms, rightsholders are not obliged to transfer the copyright, but they have to consent to a comparable far-reaching license. For example, Pixabay requests to grant to the platform and its users “an irrevocable, worldwide, non-exclusive and royalty-free licence to use, download, copy, modify or adapt, the Content (in whole or in ibid, Shutterstock Agreement, arts 1 and 2; Adobe Stock Agreement, arts 1 and 2. For instance, Shutterstock Agreement, art 2 (n 28) also specifies that the contributors “expressly waive any artists’ authorship rights or any droit moral that [they] would otherwise have under the laws of the State of New York, United States Copyright Act or similar laws of any jurisdiction, so that customers may use [the contributor’s] Content in accordance with the Licenses issued by Shutterstock”. 31 See also the discussion on CC Zero (CC0) licenses in Section 4.2.2. 32 Adobe Stock Agreement, art 4 (n 28). 33 ibid. The provision related to copyright infringement claims is also incorporated in Shutterstock Agreement, art 12 (n 28). 34 Platforms rely on various TPM mechanisms, such as encryption tools, e.g., watermarks, uploading images in low-resolution quality, anti-copy devices or other technological innovations that allow to track the reuse of images or control access to them. See Stephen Dow, ‘Guard Your Online Images against Cybertheft with Copyrights’ (2003) 10 Inside the Internet 9. 35 Martin Senftleben, ‘Institutionalized Algorithmic Enforcement – The Pros and Cons of the EU Approach to UGC Platform Liability’ (2020) SSRN Scholarly Paper accessed 30 May 2021. 29 30

Copyright issues on the use of images on the Internet  197 part) for any purpose, both commercial and non-commercial.”36 Pixabay does not oblige the users to attribute or compensate the author.37 The platform expressly states that it “cannot be held responsible for the acts or omissions of its users, including any misuse or abuse of any [uploaded] Content.”38 3.1.3 Image search engines Image search engines, the most famous being Google Images, are online services that provide the users with so-called ‘thumbnails’ of (often copyright protected) digital images that are hosted on other platforms. The search engine collects the images via an automated process of indexing websites and then displays them to the users in a low resolution and a reduced size as search results.39 If users are interested in a particular image from the search result, they are redirected, by clicking on the related hyperlink, to the webpage (e.g., a stock images platform) which hosts an image in a higher resolution.40 In principle, search engines are making unauthorized uses of third-party content since the images have been collected and shared without consent of rightsholders.41,42 The legal status of thumbnails is, however, ambiguous. Whereas in the US the use of thumbnails is in most cases regarded as non-infringing following the fair use doctrine,43 the legal status of thumbnails under the EU copyright law is not ‘set in stone’. In particular, it is debated whether thumbnails could fall within the quotation exception.44 The limitations regarding the scope of this chapter do, however, not allow to delve further into this debate.

36 Pixabay Terms of Service 2020 accessed 30 May 2021 (hereafter ‘Pixabay Agreement’). Similar provisions can be found in terms and conditions of other free image stock platforms, e.g., Pexels’ Terms and Conditions, art 4(1) https://​www​.pexels​.com/​terms​-of​ -service accessed 30 May 2021 (hereafter ‘Pexels Agreement’). 37 ibid, Pexels Agreement, art 4(2). Even though there is no obligation to compensate the author, many free image stock repositories allow donations from the users after they downloaded a certain digital image. The users can also support Pixabay directly by providing a donation accessed 30 May 2021. 38 ibid. 39 Martin Senftleben, ‘Internet Search Results – A Permissible Quotation?’ (2013) 235 Revue Internationale du Droit d’Auteur 3. 40 For more information consult Joris Van Hoboken, Search Engine Freedom: On the Implications of the Right to Freedom of Expression for the Legal Governance of Web Search Engines (Kluwer Law International BV 2012); Senftleben (n 39). 41 Senftleben (n 39) 14. 42 See also Case C-392/19 VG Bild-Kunst v Stiftung Preußischer Kulturbesitz (n 23), paras 23–25 where the CJEU stated that “the alteration in the size of the works at issue is not a factor in the assessment of whether there is an act of communication to the public, so long as the original elements of those works are perceptible.” 43 See e.g., Case Kelly v Arriba Soft Corporation (2003) 336 F.3d 811; Perfect 10, Inc v Amazon. com, Inc (2007) 508 F.3d 1146. 44 Senftleben (n 39) 59. See more in Section 4.2.2.

198  Research handbook on intellectual property and cultural heritage 3.2

Social Media

Whereas the reuse of digital images is not the primary goal of social media platforms,45 a lot of them are shared and reshared on a daily basis via Facebook, Instagram or other popular social media.46 When joining any online social network, users are requested to electronically sign a so-called ‘user agreement,’ which defines terms and conditions that users must abide by when exploiting the service.47 Since user agreements are standard agreements, users have no negotiation power and have to ‘click away’ some of their IPRs to join a selected platform.48 For instance, according to the Facebook Terms of Service, the user grants the platform “a non-exclusive, transferable, sub-licensable, royalty-free, and worldwide license to host, use, distribute, modify, run, copy, publicly perform or display, translate, and create derivative works of your content.”49 The platform explains that such license is essential to ensure the functionality of the social network.50 Yet, as Bosher and Yeşiloğlu suggest, such conditions may have negative implications for authors, e.g., photographers, who would like to license an image, shared prior on social media, to a third party under an exclusive license.51 Many social media users are not fully aware of such limitations. Nonetheless, one should also consider that, for instance, the Facebook Terms of Service as well as the Instagram Terms of Use additionally state that the license ends when the content is deleted from the system.52 The content can be erased on an individual basis (e.g., image by image) or altogether (by deleting the account). Despite the potential ambiguity of the exact scope of such non-exclusive licenses, it seems unlikely that authors of digital images stay away from social media platforms, since those platforms are extremely popular and are often used as public portfolios and promotion tools. In the end, authors alone have full control over which images they decide to post on social networks. In general, social networking is viewed as an enabler of copyright infringements since such platforms promote sharing and provide a simple way to circulate content without proper 45 We will not make an attempt to define this concept in view of a high number of websites that are coined by this term. For an attempt, see Andreas M Kaplan and Michael Haenlein, ‘Users of the World, Unite! The Challenges and Opportunities of Social Media’ (2010) 53 Business Horizons 59; Paul Russel Smith and Ze Zook, Marketing Communications: Integrating Offline and Online with Social Media (Kogan Page Ltd 2011); Hayleigh Bosher and Sevil Yeşiloğlu, ‘An Analysis of the Fundamental Tensions between Copyright and Social Media: The Legal Implications of Sharing Images on Instagram’ (2019) 33 International Review of Law, Computers & Technology 164, 171. 46 For statistics consult, for instance, Statista, ‘Social Media – Statistics & Facts’ accessed 30 May 2021; Hootsuite, ‘140+ Social Media Statistics that Matter to Marketers in 2021’ accessed 30 May 2021; Jimit Bagadiya, ‘367 Social Media Statistics You Must Know In 2021’ accessed 30 May 2021. 47 Facebook Terms of Service 2021 accessed 26 May 2021 www​ .facebook​ .com/​ help/​ (hereafter ‘Facebook Agreement’); Instagram Terms of Use 2021 https://​ instagram/​termsofuse accessed 26 May 2021 (hereafter ‘Instagram Agreement’). 48 Tao (n 1) 619. 49 Facebook Agreement, art 3(1) (n 47). Similar provision is also incorporated in Instagram Agreement, see ‘Your Commitments’ (n 47). 50 Facebook Agreement, art 3(1) (n 47). 51 Bosher and Yeşiloğlu, (n 45) 174. 52 See n 49.

Copyright issues on the use of images on the Internet  199 authorization.53 This phenomenon is also at the basis of the new liability regime introduced in Article 17 of the CDSM Directive, which is not discussed further in this contribution. For platforms that are not bound by this regime, which is set up to proactively remove (potentially) infringing content,54 for instance, because the platform does not comply with its definition of ‘online content-sharing service provider,’ the use of alternative algorithmic copyright enforcement tools may remain useful and advisable. One can think of the so-called ‘notice and takedown’ (NTD) systems. The EU legislator is working on improving the legal framework in this regard.55 Besides, as advised by certain scholars,56 platforms should also invest in developing user educational tools to minimize copyright infringement on their networks.57 3.3

Cultural Heritage Institutions’ Digital Repositories

The digital revolution has intensively changed the world for CHIs and confronted them with the challenge of disseminating their collections online “if they wish to remain socially and culturally relevant in the 21st century.”58 In recent years, multiple platforms have been developed either by an individual cultural institution to display its collections (e.g., Rijksmuseum, MET) or in collaboration with multiple CHIs and/or other public or private institutions (e.g., Artstore, Google Arts & Culture, Europeana, Open Image Collections). On the way towards organizing digital online access, CHIs face multiple (legal) barriers. While for digitization purposes CHIs may rely on the preservation exception,59 greater obstacles arise when CHIs go beyond the scope of this exception and decide to virtually display images of their collections online. Since CHIs are often not the rightsholders of in-copyright works in their collections, they will first need to obtain authorization from the rightsholder for the conversion and making available of such works online, unless there is a justification on the basis of an exception. Specifically for CHIs, one may think of two mechanisms designed to allow them to respond to the challenges of mass digitization and online access. There is, on the one hand, the exception for orphan works, where it is not possible to obtain the rightsholders’ prior consent because

53 Dennis Collopy and Tim Drye, ‘Share and Share Alike: The Challenges from Social Media for Intellectual Property Rights’ (UK Intellectual Property Office 2017); Bosher and Yeşiloğlu (n 45) 164. 54 Senftleben (n 35) 299; Martin Husovec, ‘The Promises of Algorithmic Copyright Enforcement: Takedown or Staydown? Which is Superior? And Why?’ (2018) 42(1) Columbia Journal of Law & the Arts 53. 55 Proposal of 15 December 2020 for a Regulation of the European Parliament and of the Council on a Single Market for Digital Services (Digital Services Act) and amending Directive 2000/31/EC [2020] COM/2020/825, arts 8 and 14. 56 Bosher and Yeşiloğlu (n 45) 181–182. 57 For a recent example, see the ‘copyright school’ that users need to go through when they receive a YouTube warning, ‘Copyright strike basics’ accessed 30 May 2021. 58 Gill Hamilton and Fred Saunderson, Open Licensing for Cultural Heritage (London: Facet Publishing 2017) 67. 59 InfoSoc Directive (n 20), art 5(2)(c) and Directive 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the Digital Single Market and amending Directives 96/9/EC and 2001/29/EC [2019] OJ L 130/92 (hereafter ‘CDSM Directive’), art 6.

200  Research handbook on intellectual property and cultural heritage they are unknown or untraceable.60 However, this regime is not only highly cumbersome to put into practice owing to the magnitude of research required to obtain ‘orphan work status,’61 but it cannot (yet) be applied to stand-alone photographs either. On the other hand, Article 8 of the CDSM Directive introduced a solution for works with an ‘out-of-commerce’ status. It consists of a combination of a new licensing mechanism (extended collective licensing) and a mandatory copyright exception as a ‘fallback’ solution in situations where there is no representation by a relevant collective management organization. This dual regime creates confusion as regards which scheme to apply since the full potential of the exception is left to the discretion of domestic law. Legal uncertainty may, in addition, arise as a result of the ‘opt-out’ right that the Directive confers on authors, comparable to the right to opt out of the orphan work status in Article 5 of the OWD. Finally, one should not lose sight of the fact that both Directives exclude the application of these exceptions to non-EU works.62 Furthermore, CHIs often rely on external enterprises and/or photographers to digitize the works in their collections. Such digital reproductions may, when they fulfill the AOIC threshold and irrespective of the fact that the underlying work is in or out of copyright, also be given copyright protection. Alternatively, sub-original reproductions may in some Member States obtain a related right protection, creating fragmentation in the EU legal framework.63 In all such cases, CHIs need to ensure that they acquire the necessary authorization from those rightsholders. Another challenge that CHIs face is the requirement to safeguard not only the related economic rights of rightsholders but also the moral rights of authors. They must ensure that when making protected images available, including by way of open licenses,64 they safeguard both the right of integrity and the right of attribution. This responsibility is particularly difficult in a legal landscape where the regulation of moral rights is not harmonized65 and some countries even grant perpetual protection to these rights (e.g., in France66). For all these reasons, developing accessible digital repositories for CHIs is a more complex and time-consuming process than for the other image platforms analyzed above. CHIs cannot in principle ‘impose’ a standard (‘take it or leave it’) agreement on the rightsholders whose images are uploaded on their platform since the negotiation power in this case generally lays with the latter. Neither can they apply TPMs to preclude (re)uses of digital images as this practice is discouraged by the European Commission.67 This legally difficult context has, however, 60 Directive 2012/28/EU of the European Parliament and of the Council of 25 October 2012 on certain permitted uses of orphan works [2012] OJ L 299/5 (hereafter ‘OWD’). 61 Uma Suthersanen and Maria Mercedes Frabboni, ‘The Orphan Works Directive’ in Irini Stamatoudi and Paul Torremans (eds), EU Copyright Law. A Commentary (Edward Elgar Publishing 2021) 479, 13.35. 62 OWD, art 2 (n 60) and CDSM Directive, art 8(7) (n 59). 63 See more in Section 4.2.2.1. 64 Foteini Valeonti, Melissa Terras and Andrew Hudson-Smith, ‘How Open Is OpenGLAM? Identifying Barriers to Commercial and Non-Commercial Reuse of Digitised Art Images’ (2019) 76 Journal of Documentation 1, 2. 65 Marie-Christine Janssens, ‘Invitation for a “Europeanification” of moral rights’ in Paul Torremans (ed), Research Handbook on Copyright (Edward Elgar Publishing 2017) 200. 66 Consolidated Text of the French Intellectual Property Code (consolidated version as of 1 January 2021), art L121-1. 67 See Commission Recommendation on digitisation and online accessibility of cultural material and digital preservation [2011] OJ 2 283/01: “The use of intrusive watermarks or other visual protection

Copyright issues on the use of images on the Internet  201 not prevented many CHIs from setting up accessible online platforms. In practice, more and more CHIs thereby actively embrace open licensing systems,68 which substantially simplify the licensing process while at the same time satisfying their societal goals of enhancing access to humanity’s cultural heritage. The OpenGLAM movement69 (the Rijksmuseum in Amsterdam being the appraised pioneer70) is a leading example of this evolution. Nonetheless, engaging in these ‘open’ models may not always be in line with financial interests of CHIs. Digitization of CHIs’ collections entails significant investments which they may fail to recuperate when adopting this ‘open’ approach.71 Finding the right balance between financial and societal interests will remain a struggle for CHIs seeking to develop an online ‘business model’.

4.

USERS’ PERSPECTIVE ON DIGITAL IMAGES: THE QUEST OF IDENTIFYING RIGHTSHOLDERS AND IMAGE USAGE RIGHTS

Many factors play a role in the failure to make the Internet and their users IPR ‘compliant’. Certainly, some of the Internet users may simply lack understanding of copyright protection functions on the Internet, be negligent or neglectful. Even professional users may fail to respect the rights of rightsholders, which may lead to court proceedings and high copyright damages. The US dispute between Agence France-Presse (AFP) and Daniel Morel over the use of photographs taken by the latter of the Haiti earthquake is one of the examples.72 This case points out two important legal issues. First, it may not be easy for the users to understand and track legitimate rightsholders of the images found on the Internet (Section 4.1). Second, the permitted terms of use of digital images can be unclear, non-transparent and complicated (Section 4.2).

measures on copies of public domain material as a sign of ownership or provenance should be avoided”; CDSM Directive, art 7(2) (n 59) also obliges Member States to ensure that users can access and use TPM-protected content according to some of the new mandatory exceptions. 68 See on the use of the system of Creative Commons Section 4.2.1. 69 Melissa Terras, ‘Opening Access to Collections: The Making and Using of Open Digitised Cultural Content’ (2015) 39 Online Information Review 733, 738; Hamilton and Saunderson (n 58) 3. 70 Valeonti, Terras and Hudson-Smith (n 64) 1. 71 Hamilton and Saunderson (n 58) 74; Andrea Wallace and Ellen Euler, ‘Revisiting Access to Cultural Heritage in the Public Domain: EU and International Developments’ (2020) 51 International Review of Intellectual Property and Competition Law 823, 848. 72 Case Agence France Presse v. Morel v. Getty Images (US), Inc et al (2014) SDNY 10-cv-2730. Morel had posted some of these photographs on his Twitter account. Another Twitter user, Lisandro Suero, “copied the photographs into his own Twitter feed without Morel’s consent, and […] eight of the photographs—initially credited to Suero—ended up being distributed by AFP and its ‘image partner’ Getty to thousands of news outlets and other customers around the world.” AFP and Getty Images were found guilty for willfully infringing Mr. Morel’s copyright in eight photographs. AFP, however, were of the view that they had a legal right to download and reuse them according to the Twitter terms. This reasoning was not upheld by the Court.

202  Research handbook on intellectual property and cultural heritage 4.1

Identification of Rightsholders of Digital Images

The lack of transparency of authorship and ownership of digital images is an apparent problem. In particular, once a certain image is illegally shared by a user on the Internet or shared without proper and clear attribution, the knowledge over the legitimate rightsholder may be hard to track. This situation may complicate the reuse of digitally available images on legitimate terms.73 Unless the work is in the public domain or certain acts are allowed by applicable exceptions or limitations, the reuse of digital images without consent of the rightsholder may constitute an infringement.74 It is useful to note in this regard that Internet users unfortunately cannot take advantage of the ‘orphan works’ exception, as the relevant Directive only applies to CHIs.75 Considering that copyright is not a registered right, one cannot aim at transparency of rightsholders of digital content facilitated by (public) registers and relevant actors should rely on other mechanisms to increase this transparency.76 The use of electronic rights information and TPM tools77 can be seen as alternative mechanisms to signal the legal status of certain works and provide the required contact information. However, countless ‘blank’ images without any proper source indication still circulate on the Internet. 4.2

Image Usage Rights

Images are reproduced on the Internet on unprecedented levels. Apart from circulating digital images in their original form, making and sharing of adapted versions of images have also become a daily online practice of Internet users. The Internet is in essence ‘a participative web’, where users are stimulated to be proactive78 and remixes79 – also referred to as ‘mash-ups or user-generated/created content’ (UGC)80 – have become a behavioral norm.81 Remixes are created by diverse groups such as teenagers, adult amateurs, artists and commercial professionals82 for different purposes, ranging from personal enjoyment, caricature, parody, and cre73 A Vijayalakshmi Venugopal, ‘Copyright Concerns of Digital Images in Social Media’ (2020) 23 The Journal of World Intellectual Property 579 accessed 30 May 2021. 74 For more information see Section 4.2. 75 OWD, art 1 (n 60). 76 Certain countries (e.g., the US) established voluntary registration systems. For more on the matter of IP registers and transparency of IP ownership see Arina Gorbatyuk, ‘Rethinking Registration of Intellectual Property: The Issue of (the Lack Of) Transparency of Intellectual Property Ownership’ in Rethinking IT and IP Law. Celebrating 30 Years CiTiP (Antwerpen: Intersentia 2019) 235. 77 Elaborated upon in Section 3.1. 78 Daniel J Gervais, ‘The Tangled Web of UGC: Making Copyright Sense of User-Generated Content’ (2009) 11 Vanderbilt Journal of Entertainment and Technology Law 841, 843. 79 Remixes can be defined as “works created by changing and combining existing materials (in our case online images) to produce something new and creative”; The Department of Commerce Internet Policy Task Force, ‘Summary of the White Paper on Remixes, First Sale, and Statutory Damages’ (2016) accessed 30 May 2021. 80 João Pedro Quintais, Copyright in the Age of Online Access. Alternative Compensation Systems in EU Law (Alphen aan den Rijn: Wolters Kluwer 2017) 157. 81 Yahong Li, ‘Copyrightability of Remixes and Creation of Remix Rights’ in Susy Frankel (ed), Is Intellectual Property Pluralism Functional? (Edward Elgar Publishing 2019) 288. 82 The Department of Commerce Internet Policy Task Force (n 79) 6–7.

Copyright issues on the use of images on the Internet  203 ative expression to quotation.83 Whereas the acts of communication to the public do not pose many ‘conceptual’ problems, the acts of adaptation (a type of reproduction, as arguably seen in the EU84) are not as straightforward. To begin with, the legal status of a created adaptation is complicated since it may constitute a protected work itself.85 In principle, all these acts have to be conducted with permission of rightsholders, which can be acquired via a license (Section 4.2.1), unless users can rely on certain permitted non-licensed uses (Section 4.2.2). The responsibility to ensure that the rights of rightsholders are respected in the online environment primarily lays with users and they will, in principle,86 be held accountable if those rights are not respected. 4.2.1 Licensed uses There are multiple ways through which users can acquire authorization to exploit copyright-protected images and the choice may depend on various circumstances. To keep the story short, unless users can rely on permitted non-licensed uses, they would need to either (1) conduct an individual license with rightsholders; (2) accept standard terms and conditions of a relevant platform; or (3) comply with the terms of Creative Commons licenses (CCL). 4.2.1.1 Individual licenses with the rightsholder Internet users, interested in using a certain image, would need to reach out to the rightsholder (e.g., a photographer) with an intention to negotiate a licensing agreement in which the parties specify the terms and conditions of the reuse. A license can be defined as the permission to do an act, which without that permission would constitute an infringement of copyright or a related right.87 Licensing terms may vary according to the will of the rightsholder.88 This individual approach is, however, quite time consuming. For this reason, many (especially professional) users, such as news agencies, prefer to rely on collective licensing or other types of licenses, which allow for a less tailored approach.

Quintais (n 80) 158. The InfoSoc Directive (n 20) does not mention the right of adaptation explicitly and it was long held that this right was not harmonized at EU level. Scholars have in the meantime argued that the CJEU seems to disagree and actually, while still implicitly, paved the way to include this right each time prejudicial questions dealing with (adapted) reproductions were at stake. See Martin Senftleben, ‘Flexibility Grave – Partial Reproduction Focus and Closed System Fetishism in CJEU, Pelham’ (2020) 51 IIC, 751, 759. 85 Thomas Margoni, ‘The Digitisation of Cultural Heritage: Originality, Derivative Works and (Non) Original Photographs’ (2014) SSRN accessed 30 May 2021. 86 Users of platforms like YouTube may find a safe harbor in the new liability regime of CDSM Directive, art 17 (n 59). 87 Lucie Guibault and Bernt Hugenholtz, ‘Study on the Conditions Applicable to Contracts Relating to Intellectual Property in the European Union’ (2002) European Commission 1, 29 accessed 30 May 2021. 88 The licensing of rights is normally done on exclusive, sole, or non-exclusive basis. A license may cover all (economic) rights that the rightsholder possesses or it may be limited to only some of them. The application of a license may be restricted to selected forms of exploitation, duration or territory, at Guibault and Hugenholtz (n 87) 29. The payment terms are also generally specified. 83 84

204  Research handbook on intellectual property and cultural heritage 4.2.1.2 Standard licenses or user agreements with stock images repositories Digital image repositories, especially image stocks, provide users with a convenient alternative to individual licenses. The use of images on those platforms, elaborated upon in Section 3.1, is provided on standardized terms and conditions, which are specified in underlying agreements.89 Those terms and conditions are generally applicable to all images available on stock images repositories, regardless of who the rightsholder of a particular image is. The users, however, need to carefully read which exact scope of image usage rights are granted on each platform, since those quite often differ. For instance, it is specified that the Pixabay License does not allow sale or distribution of content as digital wallpapers, posters, or digital prints, without adding any additional elements or otherwise adding value.90 On the contrary, Shutterstock gives a broader scope of rights and allows its users, for instance, to use images “printed in physical form as part of product packaging and labeling […] or in the advertising and copy of tangible media, including magazines, newspapers, and books provided no Image is reproduced more than 500,000 times in the aggregate.”91 If the terms and conditions are not followed, the users may be held liable not only for copyright infringement but also for breach of contract. To attract customers, some image stocks provide catchy messages on their platforms, which may confuse the users. In particular, on the front page of Shutterstock it is indicated that their images are “royalty-free”.92 This message creates the impression that users are allowed to reuse the images following the model established by free image platforms, such as Pixabay. Shutterstock uses the term ‘royalty-free’ to suggest that the users do not have to ‘worry’ about paying any “recurring payments or a percentage of earnings” to the creator or IP owners. The users of Shutterstock images are, however, obliged to pay the platform a fee, which the platform will then ‘fairly’ share with its contributors.93 This lack of clarity may lead to unintentional copyright infringements, and digital image platforms should be stimulated to increase the transparency and clarity of the applicable image usage rights. Social media platforms follow a different approach. Users are generally allowed to reshare digital images available on platforms but only with the use of ‘share’/‘repost’ buttons inbuilt in social media since such use is covered by non-exclusive licenses granted by rightsholders to social media platforms.94 If users are interested in using the image for other purposes, they need to obtain the permission from the rightsholder via an individual license. 4.2.1.3 Creative Commons licenses Finally, another option available for users is to rely on open licenses, CCLs being the most popular types of open licenses for creative content.95 For instance, Wikimedia platforms, such as Wikipedia, Wiki Commons, actively rely on various types of CCLs. CHIs, such as the See Shutterstock License Agreement(s) 2021. Pixabay Agreement (n 36), sec ‘License for Content’. 91 Shutterstock License (n 89), part I (1(1)). 92 See Shutterstock main webpage accessed 30 May 2021. 93 Shutterstock accessed 30 May 2021. 94 When reposting within the same social media platform, the inbuilt sharing/reposting function also provides for the authors’ attribution. 95 CCLs are administered by Creative Commons organization. See also Hamilton and Saunderson (n 58) 54. 89 90

Copyright issues on the use of images on the Internet  205 Smithsonian96 or the Rijksmuseum,97 are also among active users of these types of licensing schemes for online uses of their images.98 CCLs are understood as “standardized agreements between a rightsholder and any user, on the basis of which the user acquires the right to access the work without being charged for royalties and to use it according to the license granted.”99 For in-copyright works,100 rightsholders have the possibility to choose from a combination of standard licenses that will govern the use of the work.101 Importantly, all of them require the user to properly attribute the author of the work (contrary to the practices of some stock images platforms). In addition, Creative Commons created the CC Zero (CC0) dedication, under which authors waive all their copyright and related rights. Under this mechanism, the user can “copy, modify, distribute and perform the work, even for commercial purposes, all without asking permission.”102 Interestingly, moral rights might also be waived under the CC0 even though in most EU jurisdictions moral rights are inalienable as a matter of principle. Hence, the enforceability of such general waiver is far from certain. It should further be noted that even when works are shared under the CC0 conditions, the licensor may still indirectly restrict commercial uses of those images by offering only low-quality images. CHIs sometimes make use of this possibility, thus creating barriers for certain users, e.g., for printing businesses.103 For the sake of completeness, we mention the use by certain CHIs of alternative mechanisms aiming at clarifying the copyright status and permissible uses that can be made of a work available on their platform. There is, for instance, the initiative of ‘Rights Statements,’104 e.g., applied by the Europeana Foundation, and that provides 12 standardized rights statements for online cultural heritage. Interestingly, these have not only been designed with human users in mind, but also for machine users such as search engines. 4.2.2 Permissible non-licensed uses Permissible non-licensed types of use can be divided into not restricted acts (Section 4.2.2.1) and acts allowed by an exception or a limitation (Section 4.2.2.2). Due to the vast scope of potentially applicable permissible non-licensed types of use related to digital images, we had to be restrictive and selected the ones that, in our view, are the most relevant.

Smithsonian, ‘Open Access FAQ’ accessed 30 May 2021. Rijksmuseum, ‘Open Data Policy’ accessed 30 May 2021. 98 Most use the CC0 dedication, discussed further below, for the digital reproductions of works. 99 Christina Angelopoulos and Lucie Guibault, Open Content Licensing: From Theory to Practice (Amsterdam: Amsterdam University Press 2011) 206. 100 For works in the public domain, the so-called ‘Public Domain Mark’ has been created by Creative Commons. This indicator should be used with caution as the copyright term may vary between jurisdictions. 101 More details can be found on the website of Creative Commons and in Angelopoulos and Guibault (n 99) 207. 102 Creative Commons, ‘CC0 1.0 Universal, Public Domain Dedication’ accessed 30 May 2021. 103 Valeonti, Terras and Hudson-Smith (n 64) 21. 104 Rights Statements accessed 30 May 2021. 96 97

206  Research handbook on intellectual property and cultural heritage Not restricted acts: the case of use of non-original reproductions of public domain works Whereas there are several not restricted acts that may be applicable, including linking to and framing of images that are freely available online,105 we would like to focus in detail on the matter of the use of non-original reproductions of public domain. The Berne Convention leaves national legislators entire freedom as how to treat images lacking any creative effort. One can think of faithful reproductions of reality or of so-called ‘click-button’ pictures taken at random by automatic cameras, often by webcams or paparazzi photographers that haphazardly press the shutter button. EU law had originally confirmed this freedom for the Member States by specifying that they may provide (or not) protection for all ‘other’ photographs, i.e., which are not original in the sense that they do not meet the AOIC threshold.106 In Member States that chose not to provide for such a right, like Belgium, France, The Netherlands and Poland, the conclusion is straightforward: images that constitute non-original reproductions of works in the public domain can be freely used by anyone.107 Several other Member States have taken advantage of Article 6 of the Term Directive (‘Article 6-regime’) by setting up a special regime or a ‘related right’ providing for a short term of protection for ‘simple’ or ‘documentary’ photographic works that lack originality (hereafter ‘simple photographs’). This is, for instance, the case in Germany,108 Spain109 and Italy.110 However, with the enactment of the CDSM Directive and its Article 14, such a regime for non-original photographs can no longer be maintained for “any material resulting from an act of reproduction of a work of visual art” in the public domain. Once transposed, this provision will ensure that in all EU countries non-creative111 pictures of paintings, sculptures and other works of visual art in the public domain can be freely used by anyone, including the general public and commercial organizations. In this manner, the EU legislator made the public 4.2.2.1

105 Case C-466/12 Nils Svensson e. v Retriever Sverige AB [2014]. In this regard, however, particular attention should be given to the case VG Bild (n 23) that concerned a dispute over the possibility and conditions to allow online use of images by framing of works of the collections of the German cultural heritage foundation Stiftung Preussischer Kulturbesitz. For more details on these types of uses we refer to Irini Stamatoudi and Zoi Mavroskoti, ‘Linking, framing, and browsing digital or digitized works of art’ in Chapter 11 of this book. 106 Directive 2006/116/EC of the European Parliament and of the Council of 12 December 2006 on the term of protection of copyright and certain related rights [2006] OJ L 372/12, art 6. 107 For images of in-copyright works, permission still needs to be sought, not from the maker of the reproduction or photo, but from the rightsholder of the subject that has been depicted in the image. 108 German Act on Copyright and Related Rights, §72(1) (hereafter ‘UrhG’) protects ‘simple, light’ photographs lacking originality for a period of 50 years after publication. The German Federal Supreme Court confirmed the application of UrhG, §72(1) in the case Museumsfotos about a digital scan of an analogue photograph printed in a catalogue of public domain paintings as well as a digital photograph of such paintings; Museumsfotos (2018) Case No I ZR 104/17. See more details in Wallace and Euler (n 71) 829. 109 Spanish Consolidated Law on Intellectual Property (approved by Royal Legislative Decree No. 1/1996 of April 12, 1996, as last amended), art 128. 110 Italian Copyright Act (approved by Law No 633 of April 22, 1941 on the Protection of Copyright and Rights Related to its Exercise, as last amended), art 87. 111 The wording of CDSM Directive, art 14 (n 59) follows the established CJEU case law on the originality threshold of “the expression of the author’s own intellectual creation,” which is thus given a statutory basis.

Copyright issues on the use of images on the Internet  207 domain part of the European acquis, which is an important normative step in itself. The scope of Article 14 is broad since the wording ‘any material’ does not only refer to photographic reproductions, but also other outputs like 3D scanning, as well as any component parts, such as metadata or software.112 Hence, in countries that have an Article 6-regime in place, Article 14 will throw into the public domain a large number of photographs and other reproductions for everyone to use without consent of rightsholders. For our subject, and in particular from the perspective of cross-border use, Article 14 is a positive evolution.113 This new development may have practical consequences for many CHIs that have been investigating ways to exploit the works in their collections – often works of visual art that are part of the public domain – and had taken advantage of the legal possibility to create a “surrogate property right”114 by exploiting photographs of such works (e.g., in the form of postcards or posters in gift shops). Comparable business models were explored in the digital sphere,115 as these might allow to recoup the costs of the digitization expenses and support operational costs. While such claims may create a tension with the institution’s goals and missions,116,117 we acknowledge that CHIs may also have valid reasons to enforce property claims over images of public domain works. For example, they may feel morally responsible to control how works are used to protect their integrity and authenticity and prevent derogatory treatment (e.g., unsuitable merchandising articles).118 We, therefore, remind of Recital 53 stating that Article 14 “should not prevent [CHIs] from selling reproductions, such as postcards.” Obviously, also a copyright-related exploitation model may still be considered where such reproductions require human reflection, judgment and creative efforts or are otherwise demonstrably original. 4.2.2.2

Exceptions and limitations with special attention for the cases of quotation and parody Some acts performed with copyright-protected works are permitted and do not require the consent of the rightsholder, since they fall within the scope of ‘exceptions and limitations.’ In this contribution we limit ourselves to the main EU horizontal instrument, i.e., the InfoSoc Directive with a (exhaustive) list of optional exceptions in its Article 5,119 several of which

Wallace and Euler (n 71) 838. As regards some remaining uncertainties regarding CDSM Directive, art 14 (n 59), see Valérie-Laure Benabou and others, ‘Comment of the European Copyright Society on the Implementation of Article 14 of the Directive (EU) 2019/790 on Copyright in the Digital Single Market’ (2020) European Copyright Society accessed 30 May 2021. 114 Uma Suthersanen, ‘Eying the Need for Licensing Using the Orphan Works Lens’ in Jørgen Blomqvist (ed), Copyright, to be or not to be (København: Ex Tuto Publishing 2019) 243, 247. 115 The problem related to overprotection of works in the public domain is elaborated upon in detail in the works of Chris Needham, ‘Understanding Copyfraud: Public Domain Images and False Claims of Copyright’ (2017) 36 Art Documentation 219; Valeonti, Terras and Hudson-Smith (n 64). 116 Wallace and Euler (n 71) 824. 117 See also the contribution of Rina Elster Pantalony, ‘IP management for cultural heritage institutions’ in Chapter 23 of this book. 118 Wallace and Euler (n 71) 835; Frederik Truyen and Charlotte Waelde, ‘Copyright, Cultural Heritage and Photography: A Gordian Knot?’ in Karol Jan Borowiecki, Neil Forbes and Antonella Fresa (eds), Cultural Heritage in a Changing World (Springer International Publishing 2016) 82. 119 We do not review the US legislation. However, it is worth mentioning that in the US, copyright law enables a vastly greater use of web-based images than in the EU, as many types of uses of images 112 113

208  Research handbook on intellectual property and cultural heritage allow for the lawful (re)use of images on the Internet.120 These would include the permitted purposes of teaching,121 research, news reporting and incidental inclusion.122 Also the private copying exception may often come to the rescue when making use of functionalities in smartphones, computers and other devices to make screen captures or screenshots and ‘snip’ photos. The problem is that users, who take such functionalities for granted, do not merely perform these activities for making private copies. Special mention deserves the panorama exception of Article 5(3)(h) allowing for the use – in whatever way, including making and posting pictures on the Internet – of works of architecture or sculpture, made to be located permanently in public places. Without such an exception the acts of millions of people were to be held unlawful.123 Furthermore, and of particular interest for CHIs, images may also be used online for the purpose of advertising a public exhibition or sale of artistic works.124 In this section we further concentrate on two exceptions that have a particular relevance for online uses of images: the exceptions of ‘quotation, criticism and review’ and ‘caricature, parody and pastiche’. Quotation125 – Article 10 of the BC requires all signatories to recognize an exception allowing for quotation, subject to the requirement that the source and the name of the author are mentioned. Contrary to other limitations of the Convention, this exception is not optional, but mandatory.126 The scope of this provision is quite liberal: there is neither any limitation as on the Internet can be regarded under at least some circumstances as being safely within the US fair use guidelines. See more Michael Seadle, ‘Copyright in the Networked World: New Rules for Images’ (2002) 20 Library Hi Tech 241; James Rosenfeld and Jeremy A Chase, ‘Can We Publish This Photo? Analyzing Fair Use When the Well-Known Subject of an Image Owns the Copyright’ (2013) 25 Intellectual Property & Technology Law Journal 3. 120 As a side note, we recall some general requirements that may disable the opportunities offered by statutory exceptions. First, taking images from unpublished sources will inevitably fall outside the scope of an exception and may in addition violate moral rights in some jurisdictions. The same goes for images that have not been lawfully made available like, for example, using (parts of) images accessed via P2P systems or unauthorized cyberlockers, as well as images stripped of TPMs. Furthermore, most exceptions impose the requirement of indication of source, which many Internet users may fail to observe. Finally, all uses allowed by an exception should be compatible with the so-called three-step-test (BC, art 9(2); TRIPs, art 13 and WCT, art 10(2) (n 22)), on the (strict or flexible) interpretation of which much has already been written. A selection from the extensive literature, includes Martin Senftleben, ‘From Flexible Balancing Tool to Quasi-Constitutional Straitjacket – How the EU Cultivates the Constraining Function of the Three-Step Test’ in Tuomas Mylly and Jonathan Griffiths (eds), The Transformation of Global Intellectual Property Protection (Oxford: Oxford University Press 2021 (forthcoming)) accessed 30 May 2021; Christophe Geiger, Daniel Gervais and Martin Senftleben, ‘The Three-Step Test Revisited: How to Use the Test’s Flexibility in National Copyright Law’ (2014) 29 American University International Law Review 581; Christophe Geiger, Jonathan Griffiths and Reto M. Hilty, ‘Declaration on a Balanced Interpretation of the “Three-Step Test” in Copyright Law’ (2008) 39 International Review of Intellectual Property and Competition Law 707. 121 Petra J Lewis, ‘Guidelines for the Scholarly Use of Images’ (2016) 23 Academic Radiology 675. 122 InfoSoc Directive, art 5(3)(a)(c)(i) (n 20). 123 European Copyright Society, ‘Answer to the EC Consultation on the “Panorama Exception” (2016) accessed 15 April 2021 2. 124 According to InfoSoc Directive, art 5(3)(j) (n 20), “use for the purpose of advertising the public exhibition or sale of artistic works, to the extent necessary to promote the event, excluding any other commercial use”. 125 InfoSoc Directive, art 5(3)(d) (n 20); CDSM Directive, art 17(7) (n 59). 126 Sam Ricketson and Jane C Ginsburg, International Copyright and Neighbouring Rights: The Berne Convention and Beyond (Oxford: Oxford University Press 2006) 13.42; Paul Goldstein and Bernt

Copyright issues on the use of images on the Internet  209 to type of work, nor to type of act, nor purpose.127 There are only four conditions: (i) that the work has been made available, (ii) that the use is in accordance with fair practice, (iii) that the extent of quotation does not exceed what is justified by the purpose (whatever that purpose may be128), and (iv) that source and authorship are attributed. In the EU legal order, the quotation right is listed as one of the exceptions in Article 5(3)(d) of the InfoSoc Directive, the optional character of which may cause (unjustified) confusion in view of the mandatory international norm.129 At national level, the implementation of this exception is an example of an implementation in a ‘disorderly manner,’130 with many countries having added additional cumulative restrictions.131 At least, in most EU jurisdictions132 quotations seem to be allowed for any type of work, including images such as photographs and drawings. This also follows from the cases Painer and Pelham, which dealt with photographs and music respectively.133 Yet, and contrary to the Berne provision, the EU legal framework imposes strict conditions on the permissibility of the use of an image by way of a quotation that should solely pursue aims related to ‘criticism or review’.134 National courts in Germany,135 Spain136 and Belgium137 have confirmed the view that uses without any commentary or analysis of the quoted work are not shielded by the quotation exception. Also, the CJEU confirmed this approach in the

Hugenholtz, International Copyright: Principles, Law, Practice (Oxford: Oxford University Press 2010) 11.4.1. 127 Lionel Bently and Tanya F Aplin, ‘Whatever Became of Global Mandatory Fair Use? A Case Study in Dysfunctional Pluralism’ in Susy Frankel (n 81) 1. 128 ibid, 7. 129 Guido Westkamp, ‘The Implementation of Directive 2001/29 EC in the Member States’ (2007) Queen Mary University Research Institute 44 accessed 30 May 2021. 130 Frank Gotzen, ‘Copyright in Europe: Quo Vadis? Some Conclusions After the Implementation of the Information Society Harmonisation Directive’ (2007) 211 Revue internationale du droit d’auteur 14. 131 J-P Triaille et al., ‘Study commissioned by the European Commission on the application of Directive 2001/29/EC on Copyright and Related Rights in the Information Society (the “Infosoc Directive”)’ (2013) 465–472. 132 Ibid. 133 See Painer (n 15) and Case C-476/17 Pelham GmbH and Others v Ralf Hütter and Florian Schneider-Esleben [2019] ERC, para 64, where the Court noted that the wording of InfoSoc Directive, art 5(3)(d) (n 20) relates to ‘a work of other subject matter’ and inferred therefrom that the exception may also apply to the use of protected musical works. 134 Quotations with other purposes, like research or teaching materials, may be allowed by other exceptions. 135 In a case concerning Google’s image search service, the German Bundesgerichtshof concluded that the unauthorized use of picture thumbnails for search engine purposes did not fall under the right of quotation in UrhG, § 51 (n 108) (Thumbnail I (2010) BGH No I ZR 69/08, 628). See discussion by Mathias Leistner, ‘The German Federal Supreme Court’s judgment on Google’s Image Search – a Topical Example of the “Limitations” of the European Approach to Exceptions and Limitations’ (2011) 42 International Review of Intellectual Property and Competition Law 417. 136 Case Megakini.com v Google Spain (2012) 172/2012 Spanish Supreme Court. See on this case Raquel Xalabarder, ‘Spanish Supreme Court Rules in Favour of Google Search Engine… and a Flexible Reading of Copyright Statutes?’ (2012) 3 JIPITEC 162. 137 In a case concerning Google’s news service, the Belgian Court of Appeals rejected Google’s defense based on the quotation exception. See Case Google v Copiepresse (2011) Brussels Court of Appeal No 2011/2999.

210  Research handbook on intellectual property and cultural heritage Pelham case.138 This “conservative and inelastic conception” is criticized by some scholars as it reduces the margin for collages and appropriation of art works.139 In view of this strict interpretation of purpose and manner of use, the quotation exception may only seldomly constitute a valid defense in cases of uses of images on the Internet. Moreover, considering that some seem to require that the original work is being reproduced “without modification in identifiable form”,140 an application of this exception to digitally adapted images seems rather exceptional. Parody (including caricature and pastiche)141 – Under EU law, to qualify an image as parody, the image must evoke the underlying work, while being noticeably different from it so as to avoid confusion and include an expression of humor and mockery.142 The leading case Deckmyn prescribed these criteria on the basis of the usual meaning in everyday language of the concept of parody that should be taken as a starting point. This approach undoubtedly also applies to the concepts of caricature and pastiche, even though there is no CJEU case law on this matter and the ordinary meaning of these concepts is by no means clear. Senftleben has advanced a particular interpretation of the concept of ‘pastiche’ to encompass “content medleys of users which go beyond the traditional concepts of ‘quotation’ and ‘parody’”.143 Such an open-ended notion could indeed create room for remixes and other digitally modified images where the strict conditions for parody would not be satisfied. There are numerous cases in which protected image material is manipulated by Internet users in order to mock the parodied work or, through the work, a person or an event.144 Parodies, caricatures and pastiches have clearly become an important part of online social interaction.145 For example, a quick Google search will immediately show parodies of paintings (both in and out of copyright), like the Mona Lisa by Leonardo Da Vinci (1452–1519), The Scream by Edvard Munch (1863–1944), or The Last Tango by Juarez Machado (1941–). Could a similar conclusion apply to the practice of so-called ‘memes’, which are all around the Internet today and constitute good examples of the remix culture described above? They are digital or digitalized works (mostly copyright-protected pictures) well known to the average user and that have been superimposed with a humorous caption or catchphrases.146

Pelham (n 133), para 71. Senftleben (n 84) 764–765. 140 Case Painer (n 15), Opinion of AG Trstenjak, para 210. 141 InfoSoc Directive, art 5(3)(k) (n 20). See also CDSM Directive, art 17(7) (n 59). For an extensive analysis of this exception in the EU and other jurisdictions, see Sabine Jacques, The Parody Exception in Copyright Law (Oxford: Oxford University Press 2019). See also Patrícia Dias da Silva and José Luís Garcia, ‘YouTubers as Satirists: Humour and Remix in Online Video’ (2012) 4 JeDEM 89. 142 Case C-201/13 Johan Deckmyn and Vrijheidsfonds VZW v Helena Vandersteen and Others (2014), para 33. 143 Senftleben (n 35) 320. 144 The CJEU seems indeed to accept that legal regulation of parody is concerned with both ‘parody of’ and ‘parody with’; see Johan Deckmyn and Vrijheidsfonds VZW v Helena Vandersteen and Others (n 142), para 21 and Opinion of AG Cruz Villalón, paras 61–65. 145 Jacques (n 141) 59 with reference to HM Government, ‘Government Policy Statement: Consultation on Modernising Copyright’ (2012) Intellectual Property Office accessed 30 May 2021. 146 See more in Giacomo Bonetto, ‘Internet Memes as Derivative Works: Copyright Issues under EU Law’ (2018) 13 Journal of Intellectual Property Law & Practice 989, 990. 138 139

Copyright issues on the use of images on the Internet  211 Pictures from CHI collections are amongst the favorite objects.147 While memes may sometimes be eligible for own copyright protection, they are at the same time a prima facie case of copyright infringement under EU copyright law.148,149 Often the underlying photographs will first need to be uploaded, which increases the likelihood of copyright violation in all possible aspects. On the other hand, there is certainly an expression of humor or mockery as this is an intrinsic characteristic of a meme. Even though the original image remains often unchanged, one could argue that the meme is different from the original work. However, whether a meme is ‘noticeably’ different from the parodied image is much less obvious to conclude unless one would accept, as we do, that ‘psychological’ changes may also be taken into account. In situations where memes, because they consist of an exact copy of the original image with merely a few catchphrases or other elements added, may not qualify as a parody,150 the quotation exception requiring that the original image remains unmodified, may come back to the foreground. Catchphrases could arguably aim at ‘entering into a dialogue’ with that picture.151 In the Painer case the CJEU explicitly stated that the comments or criticism should ‘accompany’ the quotation.152 Provided the other requirements of lawful availability and indication of source are fulfilled – which is not very likely, though – the quotation exception might come to the rescue of certain memes.153 In conclusion, distinguishing between permissible parodic images and memes and prohibited infringing ones remains a challenging task. How content identification systems will decide whether uploads are permissible or problematic in the framework of Article 17 of the CDSM Directive is even harder to imagine.

147 See Marija Bern, ‘50 of the Funniest Classical Art Memes Ever’ (2019) Boredpanda accessed 30 May 2021 and Loney Abrams, ‘54 Art History Memes that Belong in the Effing MoMA’ (2017) Artspace accessed 30 May 2021. 148 See the actions of Getty Images, handling the rights to an image of a penguin displayed in National Geographic, against a non-commercial German blog that had posted the photo as an image macro; Caitlin Dewey, ‘How Copyright is Killing Your Favorite Memes’ (2015) The Washington Post accessed 30 May 2021. 149 In the US the fair use defense will most likely prevail; Ronak Patel, ‘First World Problems: A Fair Use Analysis of Internet Memes’ (2013) 20 UCLA Entertainment Law Review 235, 252. 150 Bonetto (n 146) 994. 151 Pelham (n 133), para 71. 152 Painer (n 15), para 120. 153 The fact that freedom of expression and the European Convention for the Protection of Human Rights and Fundamental Freedoms as amended by Protocols Nos. 11 and 14, 4 November 1950, ETS 5 (hereafter ‘ECHR’), art 10(1) play an important role in memes – the goal of which is to convey feelings or opinions – may also be in favor of applying one of these exceptions, since it is precisely this freedom that lies at the root of their existence. Bonetto (n 146) 991.

212  Research handbook on intellectual property and cultural heritage

5.

CONCLUSIONS: IN SEARCH OF THE BALANCE OF INTERESTS BETWEEN AUTHORS, ONLINE PLATFORMS AND USERS

While the supply of images on the Internet is overwhelming, the Web is a minefield for those who want to use such images without the risk of infringing copyright. Online images that are available online are significantly easier to copy, share, reproduce and store than their tangible equivalents. Nevertheless, copyright holders of digital works are essentially entitled to the same scope of rights as their non-digital counterparts. This makes safeguarding copyright in the digital environment extremely challenging, yet ever so important. So far, the large spectrum of responsibilities related to copyright ‘compliance’ falls entirely on the shoulders of Internet users. These responsibilities may be too difficult for users to carry, considering the vast scope of applicable rules and norms that they have to take account of to ensure that all relevant IPRs are respected. At the same time, there is a legitimate concern that the rhetoric with regards to the difficulties for users to comply with the applicable norms is overly relied upon to justify a less strict application of the basic copyright norms in the digital space. By virtue of the ambiguity of applicable copyright provisions, users may unintentionally violate copyright due to their lack of understanding or negligence of how this protection system functions on the Internet. Moreover, even conscious users may face difficulties in respecting copyright due to the lack of transparency of copyright ownership and the relevant scope of granted usage image rights. Whereas the general ‘rule’ states that copyright-protected works (including images) can only be exploited with the permission of the relevant rightsholders, some flexibility is provided by copyright exceptions and limitations. The scope of these exceptions and limitations, however, is far from straightforward considering the material differences that still exist between underlying national laws within the EU and even more on a global scale. In the event that exceptions and limitations are not applicable, users may still rely on other useful mechanisms that enable them to refrain from negotiating individual licenses with relevant rightsholders to (re)use images online. For example, users may make use of standard licenses offered by image platforms, such as image stocks, or on CCLs that are actively used by CHIs. Such licenses allow users to (re)use images according to standardized terms without infringing copyright laws. That being said, users still need to be mindful of the exact scope of contractual arrangements as these may vary significantly between different standardized agreements. Furthermore, when pursuing their business interests, some platforms may incorporate ambiguous or potentially unenforceable contractual causes (at least in the EU) in such agreements or use misleading terminology on their websites which may result in inadvertent IP infringements. Image platforms are arguably best positioned to inform their users about applicable IPRs, and consequently minimize copyright infringements, by providing clear and user-friendly guidance on their platforms. Accordingly, the EU legislator should encourage these platforms to take more responsibility in making the Internet more IPR compliant. The introduction of Article 17 of the CDSM Directive, stimulating ‘online content-sharing service providers’ to proactively remove (potentially) infringing content by, for instance, setting up advanced NTD systems, was already a move in that direction (we leave aside here whether it was the most

Copyright issues on the use of images on the Internet  213 optimal). For other platforms, like repositories of CHIs, we have to look out for the initiatives they develop themselves, the ‘Rights Statement Initiative’ being a good example. Notwithstanding the importance of the Internet becoming increasingly IPR compliant, it is pivotal that the pendulum does not swing too far in the other direction, resulting in an ‘overprotection’ of digital content. The implementation of online content-sharing service provider liability and the application of broad in-built upload filters by certain platforms may be particularly susceptible to result in the blocking of content that is (re)used in conformity with copyright laws.

11. Linking, framing, and browsing digital or digitised works of art Irini Stamatoudi and Zoi Mavroskoti

1. INTRODUCTION The advance of digital technologies and the internet has reformed not only the way art is communicated, but also the way it is created by the artists themselves.1 Occasionally, if not usually, the digital environment transforms the notion of the traditional ‘spectator’ itself; hence, we may often refer to a ‘user’ of a work rather than to a reader of a book, a listener of an audio artwork or a viewer of an audio-visual artwork. From a copyright perspective, there are many issues arising from the use of digital technologies to digitise or create a digital work of art; such issues may include the subject and the term of copyright protection and the clearance of copyright. In this chapter we focus, however, on a specific legal issue that may arise from the use of digital or digitised artworks: the ‘linking’ to, ‘framing’, and browsing of such works and the extent up to which this does not require the previous authorisation of the rightholder of the artwork. In order to explore efficiently linking, framing and browsing, this chapter also explores the notion of the ‘communication to the public’ right. This right constitutes the quintessence of those actions, since they – from a copyright point of view – fall into the scope of this right. Given that the ‘communication to the public’ right is not defined in EU law in a comprehensive and detailed manner, it is also not clear what are the specific acts it covers in digital transmissions.2 Until recently it was also not entirely clear whether EU Member States may interpret this right as they consider appropriate or whether they have to interpret it in a uniform manner. This chapter focuses on ‘linking’, ‘framing’ and browsing, and in particular on whether these acts fall within the rightholders’ absolute and exclusive rights and therefore require authorisations under the light of the relevant EU Directive and CJEU case law with regards to the ‘communication to the public’ right. The impact and implications of this case law in the digital and digitised artworks within the EU will also be discussed and critically assessed.

1 This chapter has been partly based on the publication: “‘Linking’ and ‘Browsing’ in the light of the EU Court of Justice’s recent case law” in Tana Pistorius (ed.), IP Perspectives on the Regulation of New Technologies, ATRIP IP series, Edward Elgar Publishing, Cheltenham (UK) – Northampton (US), 2018, at 179. 2 See J. Rosen, “How much communication to the public is ‘communication to the public’” in I. Stamatoudi (ed.), New Developments in EU and International Copyright Law, Information Law Series (B. Hugenholtz (general editor)), The Netherlands: Wolters Kluwer (2016), at 331.

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Linking, framing, and browsing digital or digitised works of art  215

2.

‘LINKING’ TO AND ‘FRAMING’ OF DIGITAL AND DIGITISED WORKS OF ART

2.1

Digital and Digitised Works of Art

Digital works of art are characterized by the fact that they are created entirely digitally, i.e., they are computer-generated, scanned, drawn, or drafted. Hence, they include works made from scratch using digital technologies or works initially may be ‘by hand’ and later being processed (e.g., scanned or digitised). Furthermore, the digitisation of artworks, which previously existed only in physical form (from oil paintings and books to celluloid cinematographic works and music vinyls), has created a vast digital bank of images, sounds, videos, and texts that exceeds the spatial capacity of any physical library, museum, or other cultural space. For those with access to the internet, such digitised artworks have made it possible to virtually experience and enjoy artworks that normally could be only seen within the walls of a cultural institution. Moreover, digital technologies caught – right from the beginning – the interest of artists themselves, who used them as a new form of artistic expression; consequently, a new form of art emerged during the late 1990s known as ‘digital art’. Other terms have also been used interchangeably to describe this form of art, such as ‘new media art’, ‘computer art’, ‘multimedia art’ and ‘internet art’.3 Hence, digital technologies did more than preserve artworks by digitising them; they also contributed to the creation of digital artworks from scratch, a process which may also occasionally allow the interaction with and participation of their user. 2.2

Definition of Linking and Framing

‘Linking’ (also termed ‘hyperlinking’) is a generic term that refers to technologies used on the internet which facilitate the public’s access to third parties’ content or enable the reproduction or communication or distribution of third parties’ content to the public.4 Links are called ‘deep links’, ‘inline links’ or ‘framing’, depending on the nature of the link. In the case of deep links or inline links, the decisive factor is that the ‘reference’ or ‘access’ is not made to the third party’s homepage but to inner pages of its website, bypassing (on most occasions) the homepage and also this party’s mechanisms for receiving financial benefit. ‘Framing’ refers to third-party content found on that party’s original site, which is however incorporated into another party’s frames and which appears in most cases as being part of that other party’s website.5 As was noted in the VG Bild-Kunst case, framing

Mark Tribe/Reena Jana, New Media Art, Taschen, 2006, p. 6. Stamatoudi, Irini, “‘Linking’ and ‘Browsing’ in the light of the EU Court of Justice’s recent case law” in Tana Pistorius (ed.), IP Perspectives on the Regulation of New Technologies, ATRIP IP series, Edward Elgar Publishing, Cheltenham (UK) – Northampton (US), 2018, 179–207. 5 For more information refer to https://​corporate​.findlaw​.com/​law​-library/​internet​-legal​-issues​ -framing​.html, accessed 13 April 2022. 3 4

216  Research handbook on intellectual property and cultural heritage consists in dividing a website page into several frames and posting within one of them, by means of a clickable link or an embedded internet link (inline linking), an element coming from another site in order to hide from the users of that site the original environment to which than element belongs.6

Both linking and framing are useful techniques when building a webpage and they are used widely for that purpose. The issue of linking has formed the subject of litigation in a number of countries without, however, uniform results. There were a variety of legal bases used by the national courts as well as outcomes reached. Examples of such cases will be discussed later in this chapter. 2.3

Impact of Linking and Framing to Digital Art

Linking and framing are of great importance, because in essence these technical actions can contribute to the dissemination of digital or digitized artworks. With a simple click on a link, a user can be directed to a digital/digitised work faster than ever before. Such a dissemination is not illegal in principle; however, it can become so, since it displays (or directs the user to) content which quite often constitutes someone else’s copyright. Hence, the use of linking and framing technologies may lead to copyright infringement, since they may infringe the communication to the public right; this is discussed later in this chapter. Any such dissemination may fall into the scope of the communication or making available to the public right, whether it refers to actions of linking and framing or to its ‘availability’ in relevant and popular platforms offering music, films, books, etc., such as YouTube, etc. Regardless of the legal issues connected with the use of linking and framing technologies, it should be pointed out that generally in the digital age the more disseminated a work of art is, the more successful it is considered. That is quite obvious in the digital environment and the internet; to put it simply, the success of a digital or digitised work of art is often counted in ‘views’ collected in platforms of digital service providers like YouTube, etc. In that sense, it has been correctly argued that the ‘success’ of a work in the digital world does not depend on its scarcity. As Gervais noted:7 The axiom is simple: value on the Internet is not created by scarcity (the traditional paradigm applicable to physical embodiments of copyright works and the basis for the propertarian view that still governs industry and most policy makers). Instead, value on the Internet is created by the number of connections between works and users who value them most.



6

35.

Case C-392/19, ECLI:​EU:​C:​2021:​181, VG Bild-Kunst v Stiftung Preußischer Kulturbesitz, Para

7 Gervais, Daniel, “Collective Management of Copyright: Theory and Practice in the Digital Age”, in Gervais, D. (ed.), Collective Management of Copyright and Related Rights, The Hague: Kluwer Law International 2010, p. 98.

Linking, framing, and browsing digital or digitised works of art  217

3.

LINKING, FRAMING, AND THE COMMUNICATION AND MAKING AVAILABLE TO THE PUBLIC RIGHT

3.1

Acts of ‘Communication’ and ‘Making Available’

As will be pointed out later in this chapter, in order to decide whether linking or framing are lawful actions, the Courts usually explore if these actions constitute an infringement to the communication to the public right. Hence, it is of vital importance to first explore the notion of this right according to the relevant EU acquis. The communication to the public right is provided for in article 3 of the Information Society Directive8 and transposes into EU law article 8 of the WIPO Copyright Treaty (WCT)9 and articles 10 and 14 of the WIPO Performances and Phonograms Treaty (WPPT).10 In fact, article 3 harmonises the right of ‘communication to the public’ and introduces the right of ‘making available to the public’ for authors and for the four types of related rights that are regulated in EU law, i.e., the rights of performers, phonogram producers, producers of the first fixations of films and broadcasting organisations. The ‘right of communication to the public’ should be construed broadly. It is an ‘umbrella right’, which encompasses all non-tangible disseminations or transmissions of a work to the public by wire or wireless means and always in cases where the public is not present at the place where the transmission originates.11 Some sort of ‘transmission’ (or retransmission) is necessary in order for ‘communication to the public’ to take place.12 In fact, it is characterised by a distance element in the sense that

8 Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (OJ 2001 L 167, p. 10). 9 Article 8: “Without prejudice to the provisions of Articles 11(1)(ii), 11bis(1)(i) and (ii), 11ter(1) (ii), 14(1)(ii) and 14bis(1) of the Berne Convention, authors of literary and artistic works shall enjoy the exclusive right of authorizing any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access these works from a place and at a time individually chosen by them.” WIPO Copyright Treaty (WCT) 1996. For a commentary on the Treaty see J. Reinbothe and S. von Lewinski, The WIPO Treaties on Copyright. A Commentary on the WCT, the WPPT, and the BTAP, Oxford: OUP (2015). 10 Article 10: “Performers shall enjoy the exclusive right of authorizing the making available to the public of their performances fixed in phonograms, by wire or wireless means, in such a way that members of the public may access them from a place and at a time individually chosen by them.” And Article 14: “Producers of phonograms shall enjoy the exclusive right of authorizing the making available to the public of their phonograms, by wire or wireless means, in such a way that members of the public may access them from a place and at a time individually chosen by them.” WIPO Performances and Phonograms Treaty (WPPT) 1996. For a commentary on the Treaty see J. Reinbothe and S. von Lewinski, The WIPO Treaties on Copyright. A Commentary on the WCT, the WPPT, and the BTAP, Oxford: OUP (2015). 11 See Recital 23 of the Information Society Directive. 12 See Joined Cases C-403/08, Football Association Premier League Ltd and Others v QC Leisure and Others and C-429/08, Karen Murphy v Media Protection Services Ltd, (published in the electronic Reports of Cases), according to which (para 193) “the concept of communication must be construed broadly, as referring to any transmission of the protected works, irrespective of the technical means or process used” [emphasis added]. See also Recital 23 of the Information Society Directive and the reasoning of the European Copyright Society, Opinion on the Reference to the CJEU in Case C-466/12

218  Research handbook on intellectual property and cultural heritage the transmission originates from one place and is received in another. It includes television (TV) and radio broadcasting, internet, TV and radio, broadcasting, simulcasting, webcasting, streaming, near-video-on-demand (NVOD), pay-per-view, near-on-demand-pay TV, podcasting as well as cable and online transmissions in general.13 No exhaustion applies for acts of communication to the public.14 Part of the ‘communication to the public’ right is the right of ‘making available to the public’. This is the right to make available works (or subject matter) in such a way that members of the public may access them from a place and at a time individually chosen by them (on demand). It does not require a simultaneous addressing of the public or that the public is gathered in a particular place or that a pre-established program is provided.15 It is also technologically neutral in the sense that one may use any technological means to access the work, such as mobile, iPod, iPad, tablet, fixed or wi-fi internet connection and so on.16 Also, it is not a requirement that members of the public access the work. It is the act of providing the work to the public that is crucial as well as the possibility for members of the public to access the work when they choose to access the work at their own initiative (on demand). It is irrelevant whether or how many times the work is actually accessed or the type of use that is intended (e.g., whether the work (or subject matter) is made available for viewing, listening or downloading). Also, this right is relevant for the person (or entity) that makes the work accessible to the public and not for the member of the public that accesses the work. The right of reproduction will probably cover the last-mentioned act unless it is exempted by an exception or a limitation.17 It has been argued that the ‘making available’ right is not covered by the ‘transmission’ itself.18 According to von Lewinski and Walter: copies generated in the course of the signal transport or with the end-user in browsing are subject to authorization or may be free on the grounds of an exception provided for in the Directive or under national law respectively. Thus, transient or incidental copies generated in transmitting copyright subject matter by an intermediary or by a lawful end-user in browsing are free according to the mandatory exception of article 5(1) of the Directive. On the other hand, the listening, viewing, or downloading of copyright material by the end-user may be permitted under the private use exception anchored in article 5(2)(b) of the Directive.19

Svensson, 15 February 2013, available at https://​euro​peancopyri​ghtsociety​.org/​opinion​-on​-the​-reference​ -to​-the​-cjeu​-in​-case​-c​-46612​-svensson/​ accessed 13 April 2022. 13 See Ch. Geiger, Fr. Schoenherr, I. Stamatoudi, P. Torremans and St. Karapapa, “The Information Society Directive” in I. Stamatoudi and Paul Torremans (eds), EU Copyright Law, 2nd ed., Cheltenham, UK and Northampton, MA: Edward Elgar Publishing, (2021), 279, at 287seq. 14 Article 3(3) of the Information Society Directive. 15 These are also the differences between the making available right and the broadcasting right. In the case of broadcasting, even when the user selects the place and time to use the work, transmission and use are simultaneous. Also, the program available is usually a predetermined continuous program. 16 S. Von Lewinski and M. Walter (eds), European Copyright Law, Oxford, UK: Oxford University Press, (2010), at 978 and 983. 17 See, for example, the discussion on browsing under Section 7. 18 S. Von Lewinski and M. Walter (eds), European Copyright Law, Oxford, UK: Oxford University Press, (2010), at 983. 19 Ibid, at 983.

Linking, framing, and browsing digital or digitised works of art  219 Moreover, the making available to the public right covers all on-demand services such as video-on-demand and pay-per-view TV. It also covers the selection of works (or subject matter) from online databases of, for example, films or songs where one can retrieve a work with the aid of a search engine or special software and choose the time and place to use it. This right even applies in cases where one can choose works to be incorporated in broadcasts, which are available online, to the extent that it is not the broadcast as such that one selects from a variety of broadcasts but rather the works included in the broadcast.20 Podcasts where the user chooses to access a work from pre-existing materials are also covered by the ‘making available’ right.21 If one cannot choose when and where to retrieve a work, it is not the right of ‘making available to the public’ that applies but rather the right of ‘communication to the public’. Such examples are broadcasting, simulcasting, webcasting, streaming and near-video-on-demand (NVOD) services.22 The ‘making available’ right also covers services relating to works whose legal protection are regulated by means of other Directives within the EU irrespective of the fact that the Information Society Directive provides that these (earlier Directives) remain intact. Therefore, the right of ‘making available to the public’ also applies to computer programs and copyright databases.23

20 If it is broadcasts that are selected rather than works, it is ‘rebroadcasting’ that is at issue rather than the right of making available to the public. The distinction between these two rights carries considerable legal weight since the making available right is an exclusive right, while in the case of broadcasting performers and phonogram producers can only claim equitable remuneration (article 8(2) of the Directive 2006/115/EC of the European Parliament and of the Council of 12 December 2006 on rental right and lending right and on certain rights related to copyright in the field of intellectual property (codified version) (OJ 2006 L 376, p. 28)). In addition, in the case of broadcasting, special provisions apply (see article 9–12 of the Council Directive 93/83/EEC of 27 September 1993 on the coordination of certain rules concerning copyright and rights related to copyright applicable to satellite broadcasting and cable retransmission (OJ 1993 L 248, p. 15)) and the broadcaster of such a broadcast enjoys a related right under the Rental and Lending Rights Directive as well as under the Information Society Directive. 21 It is contested whether ‘push services’ (such as e-mail services) whose transmission is controlled by the provider of the content come under the making available right or not. The prevailing view seems to be that since the transmission is controlled by the content provider rather than the end-user, the making available right does not apply. It is also contested whether it is the communication right that applies or the right of reproduction or even distribution (irrespective of the fact that distribution generally applies to tangible rather than intangible copies of works). 22 See Ch. Geiger, Fr. Schoenherr, I. Stamatoudi, P. Torremans and St. Karapapa, “The Information Society Directive” in I. Stamatoudi and Paul Torremans (eds), EU Copyright Law, 2nd ed., Cheltenham, UK and Northampton, MA: Edward Elgar Publishing, (2021), 279, at 287seq. 23 This is so because the communication right is not dealt with under the Computer Program Directive (Directive 2009/24/EC of the European Parliament and of the Council of 23 April 2009 on the legal protection of computer programs (OJ 2009 L 111, p. 6) and therefore the Information Society Directive applies. The communication right for copyright databases is dealt with under article 5(d) of the Database Directive (Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases (OJ 1996 L 77, p. 20). S. Bechtold, ‘Information Society Dir., art. 5’, in T. Dreier and P.B. Hugenholtz (eds), Concise European Copyright Law, Alphen aan den Rijn, Netherlands: Kluwer Law International, (2006), at 366.

220  Research handbook on intellectual property and cultural heritage 3.2

The Notion of ‘Public’

According to the communication (including the making available) to the public right, it does not suffice that an act of communication has taken place; this act should also be addressed to a ‘public’. The notion of ‘public’ is not defined in the Directive or any other relevant EU legal instrument. Although this term is not harmonized – and its interpretation is thus left to the laws and courts of the Member States – it should be construed in an autonomous and uniform manner throughout the European Union.24 That means that the notion of public cannot be broad enough so as to impinge on the legitimate interests of authors or related rightsholders.25 Member States usually consider the public as encompassing any circle of persons larger than the narrow circle of family and friends, or larger than the immediate social environment.26 We could also define as ‘public’ any use that cannot be considered ‘private’.27 According to Svensson the term ‘public’ refers to an indeterminate number of potential recipients and implies, moreover, a fairly large number of persons.28

In Case C-128/11 UsedSoft GmbH v. Oracle International Corp. (nyp) (para 39) it was held: According to settled case law, the need for a uniform application of European Union law and the principle of equality require that the terms of a provision of European Union law which makes no express reference to the law of the Member States for the purpose of determining its meaning and scope must normally be given an independent and uniform interpretation throughout the European Union (see, inter alia, Case C‑5/08 Infopaq International [2009] ECR I‑6569, paragraph 27; Case C‑34/10 Brüstle (nyp), paragraph 25; and Case C‑510/10 DR and TV2 Danmark (nyp), paragraph 33). See also Case C-306/05 SGAE [2006] ECR I -11519 (para 34) where it is provided that: ‘interpreting a provision of Community law it is necessary to consider not only its wording, but also the context in which it occurs and the objectives pursued by the rules of which it is part’ and (para 31): it should be noted that the need for uniform application of Community law and the principle of equality require that where provisions of Community law make no express reference to the law of the Member States for the purpose of determining their meaning and scope, as is the case with Directive 2001/29/EC, they must normally be given an autonomous and uniform interpretation throughout the Community (see, in particular, Case C-357/98 Yiadom [2000] ECR I‑9265, paragraph 26, and Case C-245/00 SENA [2003] ECR I‑1251, paragraph 23). 25 See in this respect Recital 23 of the Information Society Directive where it is provided that “[the communication] right should be understood in a broad sense covering all communication to the public not present at the place where the communication originates” and Recitals 9 and 10 of the Information Society Directive, where it is provided that any harmonisation of copyright and related rights must take as a basis a high level of protection and that rightholders should receive an appropriate reward for the use of their works. 26 I. Stamatoudi, ‘Article 3’, in L. Kotsiris and I. Stamatoudi, Comments on Greek Copyright Law, Athens, Thessaloniki, Greece: Sakkoulas Publications, (2009 (2nd ed. 2012)) at 120; and I. Stamatoudi and G. Koumantos, ‘Greek Copyright Law’, in L. Bently (ed.) International Copyright Law and Practice, US: Lexis Nexis, (2014), at 114. 27 Even if one person is to receive a transmission, this is considered to be a transmission/communication to the public to the extent that these persons are not privately interconnected with each other (as is the case in hotel rooms, private homes (for works distributed over the Internet and exchanged between persons (Internet file sharing)), and hospital rooms and so on). 28 At para 21; See also C‑306/05, Sociedad General de Autores y Editores de España (SGAE) v. Rafael Hoteles SA [2006] ECR I-I-11519 (paragraphs 37 and 38) and C-607/11, ITV Broadcasting Ltd, ITV 2 Ltd, ITV Digital Channels Ltd, Channel 4 Television Corporation, 4 Ventures Ltd, Channel 5 Broadcasting Ltd, ITV Studios Ltd v. TV Catchup Ltd (nyp) (paragraph 32). 24

Linking, framing, and browsing digital or digitised works of art  221

4.

NATIONAL CASE LAW PRECEDING THE CJEU’S JUDGMENTS

The issue of framing and linking had been brought to US courts as early as in 1997 with the Washington Post v. Total News case, the Ticketmaster v. Microsoft case and later in 2002 with the Kelly v. Arriba Soft Corporation case; all these cases explored the lawfulness of linking and framing mostly on the grounds of the fair use doctrine.29 Across the EU and around the same time as the Kelly case, the Courts of different EU states issued their own decisions on the issue of hyperlinks, which referred to a number of legal grounds. Across European countries and concerning the right of reproduction it has been argued30 (and also followed by most national courts) that the person placing the link may be considered liable for contributory infringement but not for primary or direct infringement.31 As will be discussed below, most national case law has essentially dealt with the issue whether a hyperlink constitutes an infringement of the communication to the public (including the making available) right.

29 https://​corporate​.findlaw​.com/​law​-library/​internet​-legal​-issues​-framing​.html; https://​en​.wikipedia​ .org/​wiki/​Copyright​_aspects​_of​_hyperlinking​_and​_framing, accessed 13 April 2022. 30 See Ch. Geiger, Fr. Schoenherr, I. Stamatoudi, P. Torremans and St. Karapapa, “The Information Society Directive” in I. Stamatoudi and Paul Torremans (eds), EU Copyright Law, 2nd ed., Cheltenham, UK and Northampton, MA: Edward Elgar Publishing, (2021), 279, at 287seq. 31 Yet, see the French case Court of Appeal of Bastia (24 September 2008), where the Court found that the owner of a website who posted hyperlinks on it that allowed the illegal downloading of files containing copyright material committed copyright infringement. The Court of Appeal dismissed the appellant’s claims that he was covered by the immunity conferred by the E-Commerce Directive because he acted as a (content) publisher and not merely as a hosting provider. See also a case where in 2005 the Munich Court of Appeals prohibited an online news site from putting a hypertext link to a site offering illegal circumvention tools. Yet, this case was further reversed. For a discussion of the last-mentioned case, see Birgit Clark ‘German Constitutional Court confirms BGH’s “AnyDVD” copyright decision’ (21 February 2012), The IPKat available at http://​ipkitten​.blogspot​.gr/​2012/​02/​german​-constitutional​ -court​-confirms​.html accessed 13 April 2022. The Bundesverfassungsgericht (German Federal Constitutional Court), Germany’s highest court, confirmed the BGH’s decision (case reference: 1 BvR 1248/11 of 15 December 2011) and agreed with the lower court’s balancing of Intellectual Property Rights and freedom of press and freedom of opinion. In summary: placing a link to a third party website on one’s own website “could not only be interpreted as a mere technical service and thus in isolation, but was due to its character of providing information” also covered by the constitutional guarantees of freedom of press and freedom of opinion. The Bundesverfassungsgericht thus agreed with the BGH, which had held that the purpose of the links on Heise’s website was not only to technically facilitate access to SlySoft’s website, but the links were to be regarded as part of Heise’s reporting because they were complementing and ‘backing up’ what was reported with additional information. The BGH had also held that the fact that Heise was aware that the software offered on SlySoft’s website was copyright-infringing did not change this and so could not be blamed on Heise, since the information interest of the general public was of higher importance. In its appeal decision, Bundesverfassungsgericht stressed that by placing the link to SlySoft’s website on its own website, Heise did not automatically make the content of SlySoft’s website its own opinion. Finally, the Bundesverfassungsgericht pointed out that the BGH had correctly balanced the conflicting rights when it had found that Heise’s placing of the link did not further encroach (“no deepening of the encroachment”) in the claimant’s copyrights since SlySoft’s website could very easily be found via an Internet search engine anyway.

222  Research handbook on intellectual property and cultural heritage In Germany the Federal Court of Justice held in 2003 in the Paperboy case32 that linking to a third party’s website (a hypertext link) is not a communication to the public and therefore does not infringe copyright. The Court of Appeal of Düsseldorf came to the opposite conclusion by finding that there was an infringement of the right of communication of a work to the public with reference to the embedded content.33 In its decision of 16 March 2012, the Court of Appeal of Cologne held that the access to infringing content by a frame (framing) was not a communication to the public.34 The Swedish Supreme Court in 2000 in the Olsson case,35 the Court of Appeal of Norway in 2004 in the Napster case36 and the Western High Court of Denmark in 200137 ruled that a hyperlink to a work may constitute ‘making a work available to the public’. Yet in the case of Denmark, one has to bear in mind that its law provides for a particularly broad ‘making available’ right, which also encompasses the right of distribution, public performance and exhibition. In 2006 in the Netherlands the Court decided in the Mom case38 that the publication of the articles of a journalist on distinct websites amounted to distinct acts of ‘communication to the public’ and ‘making available to the public’, especially because they did not constitute simple hypertext links or deep links to another site. Mere hypertext links (in the form of surface links), though, were not considered to constitute acts of ‘making available to the public’. In another Dutch case,39 the Haarlem case, it was decided that an act of communication to the public was performed in relation to educational works that were made available to viewers of a particular website via hyperlinks provided on that site by the website’s owner (a teacher). In the case at issue, it was not only the provision of hyperlinks that were at stake but also the fact that the website owner stored the works on a server and controlled whether the works remained available. The case was appealed and the Court of Appeal40 disputed some of the facts at issue. It still however confirmed the decision of the court of first instance.41 However, there were also a number of other cases where the making of hypertext links and the use of search engines were found to constitute reasonable use of the internet.42 This was the stance in Meteodata v. Bernegger Bau (Austria)43 and Fin Eiendom AS v. Notar AS Federal Court of Justice, Decision of 17 July 2003, No. I ZR 259/00, ‘Paperboy’. Court of Appeal of Düsseldorf, Decision of 8 November 2011, No. I-20 U 42/11. 34 Court of Appeal of Cologne, Decision of 16 March 2012, No. 6 U 206/11. 35 Supreme Court, 15 June 2000, Tommy Olsson 36 Court of Appeal, 3 March 2004, Napster.no. 37 Western High Court, 20 April 2001. 38 22 March 2006, Mom v. VNU, Arrondissementsrechtbank Haarlem, 2006 AMI 136. 39 Rb Haarlem 17 August 2011, case nr 173726 / HA ZA 10-1325, , accessed 13 April 2022. 40 See Court of appeal of Amsterdam 15 January 2013 (case nr. 200.095.838/01) , accessed 13 April 2022. 41 Court of appeal of Amsterdam 15 January 2013 (case nr. 200.095.838/01) . For more information on links see Strowel, A. & V. Hanley, ‘Secondary liability for copyright infringement with regard to hyperlinks’, in A. Strowel (ed), Peer-To-Peer File Sharing and Secondary Liability in Copyright Law, Cheltenham, UK and Northampton, MA, Edward Elgar, 2009, at 81. 42 Gr. J.H. Smith, Internet Law and Regulation, London, UK: Sweet & Maxwell, (2007), at 72. 43 Austrian Supreme Court, 17 December 2002. 32 33

Linking, framing, and browsing digital or digitised works of art  223 (Norway).44 Different approaches were followed in Havas Numerique SNC and Cadres On Line S.A. v. Keljob (France)45 and in Newpaper Publishers’ Association v. Newsbooster.com ApS (Denmark).46 According to the Opinion of the European Copyright Society,47 which was delivered in view of the then pending judgment in Svensson, hyperlinking in general should be regarded as an activity that falls outside the right to communicate the work to the public for three reasons: (a) Hyperlinks are not communications because establishing a hyperlink does not amount to ‘transmission’ of a work, and such transmission is a prerequisite for ‘communication’; (b) Even if transmission is not necessary for there to be a ‘communication’, the rights of the copyright owner apply only to communication to the public ‘of the work’, and whatever a hyperlink provides, it is not ‘of a work’; (c) Even if a hyperlink is regarded as a communication of a work, it is not to a ‘new public’. This does not mean that creating hyperlinks in no circumstances involves liability. In fact, as is clear from national case law, different forms of hyperlinking may indeed give rise to the following forms of liability (a) Accessory liability (particularly in respect of knowingly facilitating the making of illegal copies); (b) Unfair competition; (c) Infringement of moral rights; (d) Circumvention of technological measures.48

5.

EU CASE LAW REGARDING ‘LINKING’

5.1 The Svensson Case 5.1.1 The background The Svensson case49 was delivered by the CJEU on 13 February 2014 and took a clear stance on the matter of linking and communication to the public. This case was about press articles written by a number of Swedish journalists, which were published in the Göteborgs-Posten newspaper and on the freely accessible Göteborgs-Posten website. A Swedish company (Retriever Sverige), which operated a website providing its clients with hyperlinks to articles published on other websites, linked to the articles at issue, without, however, asking the journalists concerned for their authorisation.

Trondheim District Court, 29 January, (2004), 9 (7), E.C.L.R. 26 December 2000, Paris Commercial Court (1 (2),2 E-Commerce Law Reports, p. 16) then on Appeal ((2001), August, World Internet Law Report, p. 15) and a later decision by the Paris Civil Court as referred to by Gr. J.H. Smith, Internet Law and Regulation, London, UK: Sweet & Maxwell, (2007), at 72. 46 7 May 2002, Denmark Bailiff’s Court (12 May 2003, World eBusiness Law Report). See however a later decision in Home v. Ofir, Maritime and Commercial Court Ruling (Copenhagen), February 24, 2006. Zoekallehuizen.nl v. NVM, District Court (Arrondissementsrechtbank) Arnhem (The Netherlands), 16 March 2006 (hypertext linking is permissible under the quotation right); See also Belgian Association of Newspaper Editors v. Google (5 May 2011). 47 European Copyright Society, Opinion on The Reference to the CJEU in Case C-466/12 Svensson, 15 February 2013, http://​euro​peancopyri​ghtsociety​.org/​opinion​-on​-the​-reference​-to​-the​-cjeu​-in​-case​-c​ -46612​-svensson/​ accessed 13 April 2022. 48 European Copyright Society, op. cit., at 2. 49 (C-466/12) Judgment of the Court (Fourth Chamber) of 13 February 2014. C-466/12 Nils Svensson and Others v Retriever Sverige AB (nyp). 44 45

224  Research handbook on intellectual property and cultural heritage The issue of the nature of the clickable links was raised by the parties but the Court did not seem to attach any considerable weight to it.50 The case was referred to the CJEU by the Swedish Court of Appeal. Although there were three questions referred to the CJEU, the main issue was whether the inclusion on a company’s website of clickable internet links redirecting users to works freely available on another website constitutes an ‘act of communication to the public’. 5.1.2 The issue 5.1.2.1 ‘An act of communication’ The Court came to the conclusion that the provision of clickable links to protected works must be considered to be ‘making available’ and, therefore, an ‘act of communication’. The Court also mentioned that the notion of an ‘act of communication’ must be construed broadly51 in order to ensure (according to, inter alia, recitals 4 and 9 of the Information Society Directive) a high level of protection for copyright holders. That means that it suffices that a work is made available to a public in such a way that the persons forming that public may access it, irrespective of whether they do so.52 Yet, the concept of communication to the public is subject to two cumulative criteria: to an ‘act of communication’ of a work and to the communication of that work to a ‘public’.53 5.1.2.2 ‘New public’ In order for the requirements to be met for a communication to the public concerning the same works (as those covered by the initial communication) that are made available (as in the case of the initial communication) on the internet, by the same technical means, must also be directed at a new public, i.e., a public that was not taken into account by the copyright holders when they authorised the initial communication of their works to the public.54 The public targeted by the initial communication consisted of all potential visitors to the site concerned given that access to the works on that site was not subject to any restrictive measures. Therefore, the users of Retriever Sverige (the site providing the hyperlinks) were deemed to be potential recipients of the initial communication and, therefore, part of the public taken into account by the copyright holders when they authorised the initial communication.55 The Court distinguished the case from other cases where a hyperlink permits users of the site on which that link appears to circumvent restrictions put in place by the other site on which the protected work originally appeared in order to restrict public access to that work to

See paras 8 and 29 of the Svensson judgment. See Joined Cases C‑403/08 and C‑429/08 Football Association Premier League and Others [2011] ECR I‑9083, paragraph 193. 52 See para 19 of the Svensson judgment: “As is apparent from Article 3(1) of Directive 2001/29, for there to be an ‘act of communication’, it is sufficient, in particular, that a work is made available to a public in such a way that the persons forming that public may access it, irrespective of whether they avail themselves of that opportunity” (see, by analogy, Case C‑306/05 SGAE [2006] ECR I‑11519, paragraph 43). 53 Case C‑607/11 ITV Broadcasting and Others [2013] ECR, paragraphs 21 and 31. 54 The CJEU referred by analogy to SGAE, paragraphs 40 and 42; order of 18 March 2010 in Case C‑136/09 Organismos Sillogikis Diacheirisis Dimiourgon Theatrikon kai Optikoakoustikon Ergon, paragraph 38; and ITV Broadcasting and Others, paragraph 39. 55 See para 22 of the Svensson judgment. 50 51

Linking, framing, and browsing digital or digitised works of art  225 the latter site’s subscribers only. This also applies where the work is no longer available to the public on the site on which it was initially communicated. That is so because in that case the users of the site providing the hyperlinks would not have been taken into account as a potential public by the copyright holders when they authorised the initial communication of their works to the public and therefore they would be considered to be a ‘new public’.56 5.1.3 The judgment In the Svensson case the Court found that the provision of clickable links on a website to works which are freely available on another website does not constitute an act of communication to the public. That means that the owner of a website may, without the authorisation of the copyright holders and without paying a fee, redirect internet users, via hyperlinks, to protected works available on a freely accessible basis on another site. The Court also came to the conclusion that the communication to the public right cannot be construed as allowing Member States to give wider protection to copyright holders by including in it a wider range of activities than those referred to in the Information Society Directive.57 In essence, prerequisite for the lawful linking according to the Svensson case is the previous availability of the copyright work on the initial site by its rightholder (or with their consent) freely for everyone. If the copyright work is not available on the internet by the rightholder for free and for everyone, then the linking to such a work constitutes an unlawful communication to the public; this was also confirmed in the C More Entertainment AB case. 5.2 The C More Entertainment AB Case In this case a Swedish Court referred questions on hyperlinking to the CJEU. The C More Entertainment AB case58 concerned the placement of hyperlinks on one party’s site, which allowed visitors to watch sports matches for free that were initially streamed on another party’s site. More specifically, C More Entertainment is a company running its own website. The company bought the right to stream ice hockey matches ‘live’ and make these matches available to its paying customers by allowing them to click on a link that would take them to a webpage placed behind a paywall. The defendant (Linus Sandberg) decided to provide a link to this page that would allow its visitors to watch the matches C More Entertainment was streaming for free. The issue was whether article 3(2) of the Information Society Directive precludes Member States from granting the broadcasting organisations referred to in article 3(2)(d) an exclusive right with regard to acts which could be classified as acts of communication to the public, but which do not constitute acts of making available to the public, the fixations of their broadcasts in such a way that members of the public may access them from a place and at a time individually chosen by them.

See para 31 of the Svensson judgment. See para 44 of the Svensson case and article 3(1) of the Information Society Directive. 58 C More Entertainment AB v Linus Sandberg, Case C-279/13, Request for a preliminary ruling from the Högsta domstolen (Sweden) lodged on 22 May 2013 (published in the electronic Reports of Cases). 56 57

226  Research handbook on intellectual property and cultural heritage The CJEU came to the conclusion that national legislation may extend the exclusive right of those broadcasting organisations to also cover these acts, provided that such an extension does not undermine the protection of copyright. 5.3 The GS Media BV Case: Linking to Illegally Published Works 5.3.1 The background Regarding the GS Media BV case,59 GS Media maintained a website (GeenStijl) which, among other things, publishes news and scandalous revelations as well as light-hearted items and is considered to be one of the top ten news websites in the Netherlands. In 2011, GS Media published an article accompanied by a hyperlink, which directed its viewers to an Australian website containing photographs of Ms Dekker. These photographs were included in the Australian site without the copyright holders’ consent, i.e., Sanoma, the editor of the monthly magazine Playboy. Sanoma reacted to the link provided by GS Media, but the latter refused to remove it. At the same time Sanoma asked the Australian site to remove the photographs, which it did. After the removal of the photographs from the Australian site, GS Media decided to publish a new article with a new link, this time to another website containing the photographs, again without Sanoma’s authorisation. That other site removed the photos after Sanoma’s request. The users of the GS Media website in the meantime posted new links to the forum of the website where the photographs could be viewed. 5.3.2 The issue Sanoma argued that GS Media infringed copyright according to the EU law since pursuant to the Information Society Directive every act of a communication of a work to the public has to be authorised by the rightholder. The Supreme Court of the Netherlands (Hoge Raad der Nederlanden) referred the case to the CJEU for a preliminary ruling, noting that the internet is overflowing with works published without the rightholder’s consent and is not always easy for the operator of a website to check that the rightholder has given their consent.60

59 (C-160/15) GS Media BV v Sanoma Media Netherlands BV, Playboy Enterprises International Inv., Britt Geertruida Dekker (published in the electronic Reports of Cases), Press Release No 92/16, 8 September 2016. 60 The questions that were referred by the Supreme Court of the Netherlands in the GS Media Case C-160/15 were the following: 1(a) If anyone other than the copyright holder refers by means of a hyperlink on a website controlled by him to a website which is managed by a third party and is accessible to the general internet public, on which the work has been made available without the consent of the rightholder, does that constitute a ‘communication to the public’ within the meaning of Article 3(1) of Directive 2001/29? 1(b) Does it make any difference if the work was also not previously communicated, with the rightholder’s consent, to the public in some other way? 1(c) Is it important whether the ‘hyperlinker’ is or ought to be aware of the lack of consent by the rightholder for the placement of the work on the third party’s website mentioned in 1(a) above and, as the case may be, of the fact that the work has also not previously been communicated, with the rightholder’s consent, to the public in some other way? 2(a) If the answer to question 1(a) is in the negative: in that case, is there, or could there be deemed to be, a communication to the public if the website to which the hyperlink refers, and thus the

Linking, framing, and browsing digital or digitised works of art  227 The CJEU underlined in conformity with its earlier case law that the concept of the ‘communication to the public’ requires an individual assessment taking into account several complementary criteria, including whether the person placing the link was in full knowledge of the consequences of their action (i.e., has placed it deliberately), the concept of the public and whether this was done for profit. The Court distinguished this case from its earlier case law (discussed above, i.e., Svensson and BestWater), given that this case law provided that when a work is published on a website with the rightholder’s consent and made freely available to everyone and one links to this work, this is considered to be a communication to the public. It however cannot be inferred from this case law that links to unauthorised works are equally considered a communication to the public. 5.3.3 The judgment Thus the Court came to the following conclusions:61 a. there should always be an individualised assessment of the existence of a ‘communication to the public’ taking into account the circumstances at issue; b. when someone places a link to a work that is freely available on another website and places that link for profit, it needs to be explored whether that person placed that link deliberately, i.e., whether they knew or could reasonably have known that the work had been published on the internet without the rightholder’s consent; c. there is no general rule that such a person intervenes in full knowledge of the consequences of their conduct in order to give customers access to a work illegally posted on the internet. Taking into account the above, one can draw some further conclusions: d. If a link to a work that is freely accessible on another site is placed for non-profit reasons, there is no need on the part of the person placing the link for due diligence. The reason for that is that the internet should be able to contribute to the freedom of expression and information and hyperlinks do exactly that as they facilitate the exchange of views, opinions, information and so on. In addition it would be difficult (and perhaps not feasible or practical) to ask individuals who post such links to ascertain whether the works involved are first, copyright or related rights protected and second, whether their rightholders have consented to their publication.

work, is indeed findable for the general internet public, but not easily so, with the result that the publication of the hyperlink greatly facilitates the finding of the work? 2(b) In answering question 2(a), is it important whether the ‘hyperlinker’ is or ought to be aware of the fact that the website to which the hyperlink refers is not easily findable by the general internet public? 3 Are there other circumstances which should be taken into account when answering the question whether there is deemed to be a communication to the public if, by means of a hyperlink, access is provided to a work which has not previously been communicated to the public with the consent of the rightholder? 61 This judgment was also confirmed in C-527/15 Stichting Brein I and C-610/15 Stichting Brein II despite the fact that the latter was not about hypertext links but the technology BitTorrent and peer to peer.

228  Research handbook on intellectual property and cultural heritage e. If the aforementioned link (i.e., to a freely accessible work on another site) is placed for profit, then the person placing the link is under an obligation to conduct due diligence, i.e., carry out the checks necessary to ensure that the work concerned is not illegally published. In other words, there is a presumption that the person placing the link has done that with the full knowledge of the protected nature of the work and of the possible lack of the copyright holder’s consent for the publication of the work on that site. This knowledge can also be presumed by reason of particular circumstances, such as for example that they have been notified accordingly by the rightholders or that the link they placed allows for the circumvention of technological measures that have been placed on the website to which the link is made in order the restrict the public’s access. There is also the issue of the profit, which is not elaborated upon by the Court and it may not be clear in certain cases where no direct profit is involved but rather an indirect or consequential one. Yet in GS Media the CJEU found that the link was for profit and that it appeared from the facts that GS was aware of the illegal nature of the publication of the photographs and therefore it cannot rebut the presumption that it posted those links in full knowledge of the illegal nature of the publication at issue. In this sense GS Media effected a ‘communication to the public’. Conclusively, it is very interesting that the communication to the public right has now become subject to at least two more requirements, which cannot be directly derived either from the Information Society Directive or the CJEU’s case law. In that judgment, as perhaps a number of other recent judgments in the area of the communication to the public,62 the Court went through the exercise of adapting copyright to the new reality of the internet trying to leave at the same time intact the traditional norms and rights of copyright. 5.4

‘Browsing’: The Public Relations Consultants Association Ltd Case

5.4.1 The background This case examined whether there is an obligation for internet users, who are at the same time recipients of monitoring reports of electronic press, for the viewing of websites, which contained the articles indicated in those reports, where this involves copies of those sites being made on the users’ computer screen and in the internet ‘cache’ memory of their computers’ hard disk. Public Relations Consultants Association Ltd (the applicant) was an association of public relations professionals who used Meltwater’s (which is a group of companies) media monitoring service to produce reports on press articles published on the internet for their clients on the basis of key words provided by them (i.e., clients). Newspaper Licensing Agency Ltd and Others (the defendant) was a body set up by the publishers of newspapers in the United Kingdom for the purpose of providing collective licensing of newspaper content. The defendant took the view that the applicant and its customers were required to obtain permission from them for providing and for receiving the media monitoring service, respectively. The

62 Ch. Geiger, ‘The role of the Court of Justice of the European Union: Harmonizing, creating and sometimes disrupting copyright law in the European Union’, in I. Stamatoudi (ed.), New Developments in EU and International Copyright Law, Information Law Series (B. Hugenholtz (general editor)), The Netherlands: Wolters Kluwer (2016), at 435.

Linking, framing, and browsing digital or digitised works of art  229 applicant agreed to obtain a licence for the web database (i.e., for providing the media monitoring service) but did not agree that its clients needed a licence for the online receipt of the monitoring reports. The issue initially came before the UK Courts. The UK Supreme Court referred questions to the Court of Justice. 5.4.2 The issue 5.4.2.1 The exception under article 5(1) of the Information Society Directive The Court was asked whether copies made automatically on screen and in the internet ‘cache’ memory of one’s computer when browsing material on the internet come within the scope of the exception (found in article 5(1) of the Information Society Directive) of temporary and transient or incidental copies forming an integral part of a technological process.63 More specifically under article 5(1) of the Information Society Directive, an act of reproduction is exempted from the reproduction right provided for in article 2 of that Directive on condition that (a) it is temporary; (b) it is transient or incidental; (c) it is an integral and essential part of a technological process; (d) its sole purpose is to enable a transmission in a network between third parties by an intermediary or a lawful use of a work or other subject matter to be made; and (e) it has no independent economic significance.64 These conditions are to be interpreted strictly as they form a derogation from the general rule established by that Directive that the copyright holder must authorise any reproduction of their protected work.65 Given that the referring court stated that conditions (d) and (e) are satisfied, the reference was solely about whether conditions (a), (b) and (c) were also satisfied, i.e., whether the copies at issue were temporary, whether they were transient or incidental, and whether they formed an integral and essential part of a technological process. These conditions are to apply cumulatively.

In circumstances where: (i) an end-user views a web-page without downloading, printing or otherwise setting out to make a copy of it; (ii) copies of that web-page are automatically made on screen and in the internet “cache” on the end-user’s hard disk; (iii) the creation of those copies is indispensable to the technical processes involved in correct and efficient internet browsing; (iv) the screen copy remains on screen until the end-user moves away from the relevant web-page, when it is automatically deleted by the normal operation of the computer; (v) the cached copy remains in the cache until it is overwritten by other material as the end-user views further web-pages, when it is automatically deleted by the normal operation of the computer; and (vi) the copies are retained for no longer than the ordinary processes associated with internet use referred to at (iv) and (v) above continue; Are such copies (i) temporary, (ii) transient or incidental and (iii) an integral and essential part of the technological process within the meaning of Article 5(1) of Directive 2001/29/EC? 64 See paragraph 22 of the Case. 65 Case C‑5/08 Infopaq International, EU:​C:​2009:​465, paragraphs 56 and 57, and Joined Cases C‑403/08 and C‑429/08 Football Association Premier League and Others, EU:​C:​2011:​631, paragraph 162. “None the less, it is apparent from that same case law that the exemption provided for in that provision must allow and ensure the development and operation of new technologies, and safeguard a fair balance between the rights and interests of rights holders and of users of protected works who wish to avail themselves of those technologies (see Football Association Premier League and Others, EU:​C:​ 2011:​631, paragraph 164).” See paragraphs 23 and 24 of the case. 63

230  Research handbook on intellectual property and cultural heritage 5.4.2.1.1 Temporary Concerning the first condition, the Court found that both the on-screen and the cached copies were temporary because the former were deleted when the user moved away from the website viewed and the latter were normally automatically replaced by other content after a certain time, which depended on the capacity of the cache and on the extent and frequency of internet usage by the particular user. 5.4.2.1.2 Transient or incidental The copies were also found to be transient given that their duration was limited to what was necessary for the viewing to work properly. Although these copies should have been deleted in an automated manner, without human intervention, once the process has come to an end,66 the Court found that their transient nature is not lost merely because their deletion by the system is preceded by human intervention (i.e., the end user terminating the technological process of viewing).67 The Court also pointed out that the fact that the cached copies do not exist independently neither do they have a purpose independent of the technological process at issue makes them ‘incidental’. 5.4.2.1.3 An integral and essential part of a technological process According to the Court, the on-screen copies are required if the viewing of websites is to function correctly and efficiently. The cached copies greatly facilitate browsing on the internet, since without those copies, the internet would be unable to cope with current volumes of data transmitted online. Without the creation of such copies, the process used for viewing websites would be considerably less efficient and would not be able to function properly. Both the on-screen and cached copies are created and deleted by the technological process used for viewing websites and they are made entirely in the context of that process. The fact that the process at issue is activated by the internet user and terminated by a temporary act of reproduction, such as the on-screen copy, is irrelevant.68

66 See Infopaq International, EU:​C:​2009:​465, paragraph 64 as referred to in paragraph 40 of the Case. 67 In fact, the Court found (paragraphs 45–49) that “the on-screen copy remains in existence for as long as the internet user keeps his browser open and stays on the website concerned because, during that period, the technological process used for viewing that site remains active. Accordingly, it must be held that the period during which the on-screen copies remain in existence is limited to what is necessary for the proper functioning of the technological process used for viewing the website concerned. Consequently, those copies must be regarded as ‘transient’. Next, so far as concerns the cached copies, it is true that, unlike the on-screen copies, they are not deleted at the time when the internet user terminates the technological process used for viewing the website concerned, since they are retained in the cache for the purposes of a possible subsequent viewing of that site. However, it is not necessary that such copies be categorised as ‘transient’ once it has been established that they are incidental in nature in the light of the technological process used. In this connection, it should be pointed out, first, that the technological process in question wholly determines the purpose for which those copies are created and used, although [...] that process can function, albeit less efficiently, without such copies being made. Secondly, it is apparent from the documents before the Court that internet users employing the technological process at issue in the main proceedings cannot create the cached copies outside of that process.” 68 Paragraphs 28–38 of the case.

Linking, framing, and browsing digital or digitised works of art  231 5.4.2.2 The three-step test The Court also examined the three-step test (article 5(5) of Information Society Directive) and in particular whether the on-screen and cached copies form a special case, which does not conflict with a normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the rightsholders. The Court found that first, since these copies are created only for the purpose of viewing websites, they constitute a special case. Second, although these copies make it possible, in principle, for internet users to access works displayed on websites without the authorisation of the copyright holders, the copies do not unreasonably prejudice the legitimate interests of those rightsholders because the works are made available to internet users (within the context of the ‘communication to the public’ right) by the publishers of the websites after having obtained authorisation from the copyright holders concerned. Therefore, the legitimate interests of the copyright holders concerned are properly safeguarded. In that context there is no justification for requiring internet users to obtain another authorisation to benefit from the same communication as that already authorised by the copyright holder in question. Third, the Court pointed out that the creation of on-screen and cached copies does not conflict with a normal exploitation of the works. The viewing of websites by means of the technological process at issue represents a normal exploitation of the works, which makes it possible for internet users to avail themselves of the communication to the public made by the publisher of the website concerned. Given that the creation of the copies in question forms part of such viewing, it cannot operate to the detriment of such an exploitation of the works.69 In conclusion, when one visits a third party’s website, one may browse and view its contents without the need of any authorisation or permission irrespective of the fact that copies are made on their computer screen and in the internet ‘cache’ memory of their computer’s hard disk since these copies are necessary in order for browsing/viewing to take place in the context of new technologies and in particular of the internet.

6.

EU CASE LAW REGARDING ‘FRAMING’

6.1 The BestWater International Case 6.1.1 Background and issue The BestWater International case70 is about framing (embedding videos initially communicated through another website) and was referred to the CJEU by the German Supreme Court. It relates to whether a competitor can allow through their site a visitor to view a video that has been made by a rival company. BestWater International (the applicant) makes water filters. In the context of an advertising campaign, it made a short (two-minute) promotional video about water pollution entitled ‘Reality’. The video also appeared on YouTube without (according to BestWater’s allegation) its consent. The defendants (two independent sales representatives) of a rival to BestWater

Paragraphs 54–63. (C-348/13) Request for a preliminary ruling from the Bundesgerichtshof (Germany) lodged on 25 June 2013 – BestWater International GmbH v Michael Mebes, Stefan Potsch. 69 70

232  Research handbook on intellectual property and cultural heritage embedded BestWater’s video on their websites. Thus the visitors to their sites could also watch BestWater’s video. BestWater objected to this and turned to the German Courts. The question that was addressed to the Court was whether the embedding/framing within one’s own website of another person’s work made available to the public on a third-party website constitutes a communication to the public, even where that other person’s work is not thereby communicated to a new public and the communication of the work does not use a specific technical means which differs from that of the initial communication. 6.1.2 Judgment The Court judged that the answer to the issue could be clearly derived from existing case law and essentially by the Svensson case and therefore held that framing does not in itself constitute communication to the public insofar as the work concerned is neither directed to a new public nor communicated by using specific technical means that differ from those used for its initial communication.71 It derives from the Court’s judgment that the nature of the link did not carry any weight for the final decision. This issue had not been made entirely clear in the Svensson case. 6.2 The VG Bild-Kunst Case 6.2.1 Background and issue Stiftung Preussischer Kulturbesitz (SPK), the German cultural heritage foundation, which operates the German Digital Library’s (Deutsche Digitale Bibliothek –DDB) online portal, sought for a licence by the German collective management organization VG Bild-Kunst, in order to use its repertoire. DDB’s website is a digital portal devoted to culture and knowledge, which networks German cultural and scientific institutions.72 In that online portal, DDB shows thumbnail images of the artworks and direct links to the original websites where the artworks were first made available online by the respective cultural institutions.73 VG Bild-Kunst is a collecting society in Germany, which manages copyright over works of visual art, among which works included in the DDB’s portal. VG Bild-Kunst agreed to grant such a licence to SPK on the condition that SPK implemented effective technological protection measures (TPMs) on the portal in order to prevent the framing of the thumbnails displayed there by third parties in other websites.74 SPK considered such a term not reasonable, claiming

See para 14 of the BestWater judgment. DDB’s portal available at https://​www​.deutsche​-digitale​-bibliothek​.de/​ 73 More specifically, as explained in para 10 of the VG Bild-Kunst judgment: the DDB website contains links to digitised content stored on the internet portals of participating institutions. However, as a ‘digital showcase’, the DDB itself stores only thumbnails, that is to say smaller versions of the original images of the subject matter. When clicking on one of those thumbnails, the user is redirected to the page concerning the particular subject matter on the DDB website, which contains an enlarged version of the thumbnail concerned. When that enlarged thumbnail is clicked on, or the ‘magnifying glass’ function is used, a further enlarged version of the thumbnail is overlaid by means of a ‘lightbox’. Further, the ‘Display object on original site’ button contains a direct link to the website of the institution providing the subject matter, either to its home page or to the page relating to that subject matter. 74 Paras 2 and 11 of the VG Bild-Kunst judgment. 71 72

Linking, framing, and browsing digital or digitised works of art  233 that implementing TPMs inevitably means considerable cost75 and consequently DDB and SPK refused to implement such measures. As a result, SPK brought an action to the competent German Court in order for VG Bild-Kunst to grant such a licence without obliging the licensee to implement TPMs. The VG Bild-Kunst case76 was referred to the CJEU by the German Federal Supreme Court after the Regional Court of Berlin and the Appeal Court of Berlin had handed down their decisions in 2017 and 2018.77 Subject matter of the dispute was whether VG Bild-Kunst could legitimately make the licensing of image rights for use on DDB’s online portal dependent on DDB implementing TPMs preventing third parties from embedding the licensed images into their own websites by way of frames or inline links.78 In order to address the issue, the CJEU examined whether the embedding of a work – which is available on a freely accessible website with the consent of the rightholder – in the website of a third party by way of framing, constitutes communication to the public of that work within the meaning of article 3(1) of Directive 2001/29, if it circumvents protection measures against framing adopted or imposed by the rightholder.79 6.2.2 Judgment The CJEU held that if the copyright holder has adopted, or obliged licensees to employ, measures to restrict framing in order to limit access to their work from websites other than that of their licensees, there are two distinct acts of communication to the public.80 That is to say, the initial act of making available on the original website and the secondary act of making available by framing, constitute two different communications to the public and each act must be separately authorised by the rightsholders concerned.81 The reason for this is that when TPMs are employed, either by the rightholder themselves or by their licensee the copyright holder is to be deemed to have expressed their intention to attach qualifications to their authorisation to communicate those works to the public by means of the internet, in order to confine the public for those works solely to the users on one particular website.82 75 See the DDB’s press release of 12.03.2021 at https://​ www​ .deutsche​ -digitale​ -bibliothek​ .de/​ content/​journal/​aktuell/​musterverfahren​-deutsche​-digitale​-bibliothek​?lang​=​en, accessed 13 April 2022. 76 Case C-392/19, ECLI:​EU:​C:​2021:​181, VG Bild-Kunst v Stiftung Preußischer Kulturbesitz, Judgment of the Court (Grand Chamber) of 9 March 2021. 77 Paras 13 and 14 of the VG Bild-Kunst judgment and DDB’s press release of 12.03.2021 at https://​www​.deutsche​-digitale​-bibliothek​.de/​content/​journal/​aktuell/​musterverfahren​-deutsche​-digitale​ -bibliothek​?lang​=​en, accessed 13 April 2022. 78 Para 2 of the VG Bild-Kunst judgment. See also https://​www​.deutsche​-digitale​-bibliothek​.de/​ content/​journal/​aktuell/​musterverfahren​-deutsche​-digitale​-bibliothek​?lang​=​en, accessed 18 October 2021. 79 For a detailed discussion of the VG Bild-Kunst judgment, see Rosati, Eleonora, Linking and Copyright in the Shade of VG Bild-Kunst (August 19, 2021). Common Market Law Review, available at SSRN:  https://​ssrn​.com/​abstract​=​3907820, accessed 13 April 2022. 80 Para 43 of the VG Bild-Kunst judgment. 81 Ibid. 82 Para 42 of the VG Bild-Kunst judgment. The CJEU’s view as expressed in para 42, does not come as a surprise; indeed the CJEU had already stressed in para 31 of the Svensson case the importance to distinguish the Svensson case from other cases where a hyperlink permits users of the site (on which that link appears) to circumvent restrictions put in place by the other site on which the protected work originally appeared, in order to restrict public access to that work to the latter site’s subscribers only. See more under Section 5.1.2.2 of this chapter.

234  Research handbook on intellectual property and cultural heritage Consequently, the framing in one’s own website of someone else’s work that is already and lawfully available online is an act of communication, but not to a new public (and thus does not require authorisation), if the work was made available by the right holder without implementing TPMs, and as such the work was made available for all internet users. Since the implementation of TPMs on an artwork by the copyright holder implies their intention to restrict access to that artwork to a certain public, framing such artwork in another website by circumventing such TPMs would make it available to a broader internet audience, and as such it would require specific authorisation.83 In light of the foregoing, the Court held that article 3(1) of Directive 2001/29 must be interpreted as meaning that the embedding on a third party’s website by means of framing of copyright-protected works, which are originally freely available to the public on another website with the consent of the copyright holder, constitutes a communication to the public within the meaning of the above provision, if it circumvents measures84 adopted or imposed by the copyright holder in order to prevent framing.85

7.

CONCLUSIONS AND THE WAY FORWARD

The CJEU has been rather proactive in interpreting the communication to the public right and has followed a rather permissive approach. It tried to balance the needs of the authors and those of the public that has an interest in the free flow of information on the internet and the freedom of expression. Links and browsing on the internet are clear cases where reality and practice prevail. From a legal point of view, it cannot always be argued that the CJEU’s judgments do not contain loopholes, follow logically, and do not contravene known and embedded principles in copyright. Yet, the Court’s judicial activism has proven to work conveniently for the EU and perhaps for its Member States that seem prudent and reserved to any legislative initiatives in this area. The Court’s pro-activism was proven capable of overcoming political entanglements and catching up (some would argue in a timely manner) with challenges and emerging needs arising from new technologies and practices. In this light the Court’s role has been considerably important in harmonising (by ‘reviewing’, ‘readjusting’, or by ‘interpreting’) EU copyright rules. It also survived up to now the test of time and legal review. The Digital Single Market Directive makes express reference to it with regard to the introduction of new rights.86 More

83 See also J. Priopa, The CJEU’s take on unauthorized framing of online content: (only) if technologically precluded, then prohibited, 29.04.2021, available at https://​www​.medialaws​.eu/​the​-cjeus​ -take​-on​-unauthorized​-framing​-of​-online​-content​-only​-if​-technologically​-precluded​-then​-prohibited/​, accessed 13 April 2022. 84 However, it should be stressed that the CJEU limited the ways in which such measures should be construed; the CJEU stated that “in order to ensure legal certainty and the smooth functioning of the Internet, the copyright holder shall not be allowed to limit his or her consent by means other than effective technological measures within the meaning of Article 6(1) and (3) of the Directive 2001/29” (para 46 of the VG Bild-Kunst judgment). 85 Para 56 of the VG Bild-Kunst judgment. 86 Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the Digital Single Market and amending Directives 96/9/EC and 2001/29/ EC, OJ L 130, 17.5.2019, p. 92–125 (DSM Directive).

Linking, framing, and browsing digital or digitised works of art  235 particularly, the press publishers’ rights, as enshrined in article 15 DSM Directive, gives new rights to publishers of press publications for a period of two years from the date of publication when their publications are used by information society service providers with the aim to recoup investment in the content they make available. This protection does not apply to acts of hyperlinking.87 Also in relation to article 17 DSM Directive on the “[u]se of protected content by online content-sharing service providers”, which provides that online content sharing services providers (OCSSPs) will be liable for the publication of protected works unless the rightsholder has granted them a licence to do so.88 OCSSPs will no longer be able to rely on the safe harbour for hosting providers set out in the E-Commerce Directive unless either a licence/authorisation is granted by the rightsholder or the OCSSP can show that it made best efforts (a) to obtain an authorisation, (b) remove infringing content after notification from the rightsholder, and (c) acted expeditiously, upon receiving a sufficiently substantiated notice from a rightsholder to disable access to, or to remove from, its website the protected works, and made best efforts to prevent their future uploads. “Whereas in earlier years rightsholders concentrated on taking down providers of peer-to-peer networks designed to make protected content illegally available online, other users of protected material are now at risk of copyright infringement simply by hyperlinking to third party content.”89 As technology and communication evolve, this will necessarily have an impact on the communication to the public right. What is expected, though, is that where consensus for legal action (i.e., enactment of legislation) at EU level is not achieved or not achieved in a timely way, the Court has proven that it possesses the tools to deliver judgments capable of taking into account law and (societal) policies.

87 See Recital 57: “The rights granted to the publishers of press publications under this Directive should have the same scope as the rights of reproduction and making available to the public provided for in Directive 2001/29/EC, insofar as online uses by information society service providers are concerned. The rights granted to publishers of press publications should not extend to acts of hyperlinking.” And art. 15(1): “The protection granted under the first subparagraph shall not apply to acts of hyperlinking.” 88 I. Stamatoudi and P. Torremans, “The Digital Single Market Directive”, in I. Stamatoudi and Paul Torremans (eds), EU Copyright Law, 2nd ed., Cheltenham, UK and Northampton, MA: Edward Elgar Publishing, (2021), 651, at 737. 89 Kemp IP Law, “Copyright: Hyperlinks and the Communication to the Public Right”, Lexology, 30 June 2020, accessed 13 April 2022.

12. The protection of traditional cultural expressions by geographical indications Michael Blakeney

INTRODUCTION Since 2001, the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC) of the World Intellectual Property Organization (WIPO) has been debating the protection of traditional cultural expressions (TCEs). The latest version of draft articles for a TCEs treaty was presented to the 40th session of the IGC in Geneva, 17–21 June 2019.1 The last WIPO General Assembly, held 30 September to 9 October 2019, agreed to the renewal of the mandate of the IGC for the next budgetary biennium 2020/2021, to “continue to expedite its work, with the objective of finalizing an agreement on an international legal instrument … which will ensure the balanced and effective protection of … traditional cultural expressions (TCEs)”.2 The IGC’s work in the 2020/2021 biennium was described as building on “the existing work carried out by the Committee, including text-based negotiations, with a primary focus on narrowing existing gaps and reaching a common understanding on core issues”.3 ‘Core issues’ were defined in the mandate to include, inter alia, “definitions, beneficiaries, subject matter, objectives, scope of protection, and what … TCEs are entitled to protection at an international level, … and considering options for a draft legal instrument”.4 These negotiations were scheduled for September 2020, but had to be postponed because of the COVID 19 pandemic. Further negotiations for a draft text are scheduled for March/April 2021 (IGC 45) and June/July 2021 (IGC 46) with a stocktaking of the progress of negotiations scheduled for the October 2021 meeting of the WIPO General Assembly. The failure, after 20 years of negotiations, to settle even the core issues for a draft text, suggests that a treaty to protect TCEs is likely to remain elusive. In the absence of a specific instrument dealing with TCEs, resort is being increasingly made to other categories of intellectual property (IP) law, as a second-best approach to the protection of TCEs.5 This chapter looks at the possibility of protecting TCEs through geographical indications (GIs) laws.

1 WIPO, ‘The Protection of Traditional Cultural Expressions: Draft Articles’, WIPO doc. WIPO/ GRTKF/IC/40/5. 2 See https://​www​.wipo​.int/​export/​sites/​www/​tk/​en/​igc/​pdf/​igc​_mandate​_2020​-2021​.pdf, accessed 1 January 2021. 3 Ibid. 4 Ibid. 5 See M. Blakeney, ‘Protecting the Knowledge and Cultural Expressions of Aboriginal Peoples’, (2015) 39 University of Western Australia Law Review 180.

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The protection of traditional cultural expressions by GIs  237

TCES, IP OR CULTURAL HERITAGE The international debate around the protection and preservation of TCEs has sometimes been framed in the context of IP and sometimes as a matter of intangible cultural heritage. This oscillation between the two approaches can be seen in the deliberations of the United Nations Educational, Scientific and Cultural Organization (UNESCO). In November 1972, UNESCO adopted the Convention concerning the Protection of the World Cultural and Natural Heritage.6 This Convention addressed the protection of tangible material items, considered to possess outstanding value to human history, art, science, or aesthetics. The protection of intangible cultural heritage was proposed by the Government of Bolivia in April 1973, which suggested that a Protocol be added to the Universal Copyright Convention, administered by UNESCO, to protect the cultural patrimony of all nations.7 Henceforth UNESCO alternated between proposals for the protection of folklore as an aspect of IP or as a matter of intangible cultural heritage. In 1975 UNESCO considered with WIPO the development of an international instrument for the protection of folklore, but this was considered to be unrealistic and that the issue “was of a cultural nature and, as such, was beyond the bounds of copyright”.8 In May 1978, the Secretariats of UNESCO and WIPO agreed that UNESCO would examine the question of safeguarding folklore on an interdisciplinary basis and within the framework of a global approach, while WIPO would focus on copyright aspects of folklore.9 In 1980 UNESCO and WIPO established a Working Group on the Intellectual Property Aspects of Folklore Protection. The work of this Committee resulted in Model Provisions for National Laws on the Protection of Expressions of Folklore Against Illicit Exploitation and Other Prejudicial Actions,10 which was adopted by both organizations in 1985. After this date UNESCO has focused on the protection of folklore in the context of cultural heritage. In 1989 the General Conference of UNESCO adopted a Recommendation on the Safeguarding of Traditional Culture and Folklore.11 The Recommendation defined ‘folklore (or traditional and popular culture)’ as the … totality of tradition-based creations of a cultural community in so far as they reflect its cultural and social identity; its standards and values are transmitted orally, by imitation or by other means. Its forms are, among others, language, literature, music, dance, games, mythology, rituals, customs, handicrafts, architecture and other arts.

1037 UNTS 151, 11 ILM 1358 (1972). Government of Bolivia, ‘Official request that a Protocol be added to the Universal Copyright Convention for the protection of folklore’, 24 April 1973, UNESCO doc. DG 01/1006-79. 8 S. Sherkin, ‘A Historical Study on the Preparation of the 1989 Recommendation on the Safeguarding of Traditional Culture and Folklore’, Paper presented at seminar on A Global Assessment of the 1989 Recommendation on the Safeguarding of Traditional Culture and Folklore: Local Empowerment and International Cooperation, Washington, DC, 27–30 June 1999, available at http://​ www​.folklife​.si​.edu/​resources/​unesco/​sherkin​.htm, accessed 1 January 2021. 9 Ibid. 10 Available at https://​www​.wipo​.int/​edocs/​lexdocs/​laws/​en/​unesco/​unesco001en​.pdf, accessed 1 January 2021. 11 Available at http://​portal​.unesco​.org/​en/​ev​.php​-URL​_ID​=​13141​&​URL​_DO​=​DO​_TOPIC​&​URL​ _SECTION​=​201.html, accessed 1 January 2021. 6 7

238  Research handbook on intellectual property and cultural heritage The Recommendation called for Member States to identify, conserve, preserve, disseminate, and protect folklore, but was criticised for providing insufficient explanation on implementation.12 The 30th session of the UNESCO General Conference (November 1999) adopted a Resolution to prepare a preliminary study on the “advisability of regulating internationally, through a new standard-setting instrument, the protection of intangible cultural heritage”.13 Paralleling this development, UNESCO was addressing the question of intangible cultural heritage in the context of cultural diversity, which in 2001 culminated in the UNESCO Universal Declaration on Cultural Diversity.14 Article 1 noted the diverse forms of culture “across time and space” and observed that “as a source of exchange, innovation and creativity, cultural diversity is as necessary for humankind as biodiversity is for nature”. The next logical step was the 2003 UNESCO Convention on the Safeguarding of Intangible Cultural Heritage,15 which entered into force in April 2006. The principal purposes of this Convention were identified in Article 1 as safeguarding and ensuring respect for intangible cultural heritage. For the purposes of this Convention, Article 2.1 defined ‘intangible cultural heritage’ as … 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.

It observed that this intangible cultural heritage, “transmitted from generation to generation, is constantly recreated by communities and groups in response to their environment, their interaction with nature and their history, and provides them with a sense of identity and continuity …”. Article 2.2 listed as ‘intangible cultural heritage’, as defined in paragraph 1: (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.

The UNESCO Convention on the Safeguarding of Intangible Cultural Heritage followed the approach of the Model Provisions for National Laws on the Protection of Expressions of Folklore Against Illicit Exploitation and Other Prejudicial Actions in requiring that national measures be taken. However, it should be noted that the UNESCO Convention is concerned with the skills and knowledge involved in craftsmanship rather than the craft products themselves.16 The latter are more suitably protected as TCEs and/or GIs.

12 B.S. Simon, ‘Global Steps to Local Empowerment in the Next Millennium: An Assessment of UNESCO’s 1989 Recommendation on the Safeguarding of Traditional Culture and Folklore’, Paper presented at seminar on A Global Assessment of the 1989 Recommendation on the Safeguarding of Traditional Culture and Folklore: Local Empowerment and International Cooperation, Washington, DC, 27–30 June 1999, http://​www​.folklife​.si​.edu/​resources/​unesco/​simon​.htm, accessed 1 January 2021. 13 Resolution 25/B/III 1-1-2-(a)(iii) Records of the UNESCO General Conference, 30th session. 14 (2001) 41 ILM 57 (2 November 2001). 15 2368 UNTS 1 (adopted on 17 October 2003). 16 UNESCO, ‘Traditional Craftsmanship’, available at https://​ich​.unesco​.org/​en/​traditional​ -craftsmanship​-00057 (2020), accessed 1 January 2021.

The protection of traditional cultural expressions by GIs  239 UNESCO’s Intergovernmental Committee for the Safeguarding of the Intangible Cultural Heritage has acknowledged that IP rights “ensure that the rights of the communities, groups or individuals that create, bear and transmit their intangible cultural heritage are duly protected from misappropriation or abuse of their knowledge and skills”.17

PROTECTION OF TCES AS IP IP rights are generally utilised to facilitate the protection and commercialisation of creative works. However, in the field of TCEs, IP can be invoked to prevent others acquiring rights over TCEs, derivations and adaptations of TCEs and representations. This entails the use of defensive mechanisms to block or to pre-empt third parties’ IP rights that are considered prejudicial to a traditional community’s interests, and to the integrity of their cultural heritage and cultural expressions. Both defensive and positive protection strategies may be used in parallel by the one community, depending on their assessment of their overall objectives and interests. Defensive protection strategies include protection against: ● unauthorised commercial exploitation of TCEs; ● insulting, degrading or culturally offensive use of TCEs; ● false or misleading indications that there is a relationship with the communities in which the material has originated; and ● failure to acknowledge the source of material in an appropriate way. Existing IP rights, which might be used for the defensive protection of TCEs, are: the invocation of trademark laws to prevent the acquisition of trademark rights over indigenous or traditional symbols or to prevent the creation of misleading or deceptive links with a traditional community and the assertion of copyright or performers’ rights in literary or artistic works that make illegitimate use of traditional cultural works or traditional performances (e.g., a sound recording that includes sampled performances of expressions of folklore). A positive IP protection strategy may be based on obtaining and asserting rights in the TCEs, compared with a defensive protection strategy, which aims at preventing others from gaining or maintaining adverse IP rights. Both strategies are typically used in conjunction, in a coordinated manner, and usually a range of positive and defensive forms of protection may be applicable to the interests of any group of TCE holders. The main disadvantages of traditional categories of IP in protecting TCEs are the requirements of authorship, specific ownership and limited duration of rights.18 As will be seen below, these particular disadvantages are not shared by GIs.

17 ICSIC (Intergovernmental Committee for the Safeguarding of the Intangible Cultural Heritage), ‘Draft amendments to the Operational Directives on safeguarding intangible cultural heritage and sustainable development’, 10th session, Windhoek, Namibia, 30 November to 4 December 2015, Item 14.a of the Provisional Agenda, para.173. 18 See M. Blakeney, ‘Hans Christian Andersen and the Protection of Traditional Cultural Expressions’, in Porsdam, H., ed., Copyright and Other Fairy Tales. Hans Christian Andersen and the Commodification of Creativity. Cheltenham, Edward Elgar, 2006, 108–128.

240  Research handbook on intellectual property and cultural heritage

INTERNATIONAL NEGOTIATIONS ON THE PROTECTION OF TCES AS IP The first international consideration of the protection of TCEs occurred in a joint UNESCO/ WIPO World Forum on the Protection of Folklore that was convened in Phuket in April 1997. At that meeting the representatives of organisations of Indigenous and Aboriginal peoples called for the promulgation of an international convention to protect TCEs as well as traditional knowledge (TK). At the WIPO General Assembly in 2000, the Member States agreed the establishment of the IGC. Three interrelated themes were identified to inform the deliberations of the Committee: intellectual property issues that arise in the context of (i) access to genetic resources and benefit-sharing; (ii) protection of TK, whether or not associated with those resources; and (iii) the protection of expressions of folklore (WIPO, 2000). In August 2004 the IGC began to consider the ‘objectives’ and ‘principles’ that should underpin texts for the protection of TK and TCEs. This legislative task has continued through all the 46 sessions of the IGC to 2021. Concern has been expressed with the slow pace in formulating an international instrument dealing with TCEs and TK. The African group of countries at WIPO were in the forefront of agitation there to accelerate the international negotiations.19 However, a true reflection of their appreciation of the realistic likelihood of action was the promulgation of a Protocol on the Protection of Traditional Knowledge and Expressions of Folklore by a diplomatic conference in Swakopmund, Namibia, on 9–10 August 2010, organized by the African Regional Intellectual Property Organization (ARIPO). The Protocol, which entered into force on 11 May 2015, will enable local communities in ARIPO Member States20 to register transboundary expressions of folklore at ARIPO, as well as recording expressions of folklore in their territories.21 The knowledge holders and local communities in the Member States will be able to use the alternative dispute settlement procedures at ARIPO to settle disputes arising from expressions of folklore shared by different communities across national boundaries as the need arises. The Swakopmund Protocol was the direct inspiration for the Framework Treaty on the Protection of Traditional Knowledge and Expressions of Culture adopted by the Melanesian Spearhead Group (MSG) of countries (Fiji, Papua New Guinea, Solomon Islands, Vanuatu) on 2 September 2011. The Treaty established a framework for the reciprocal protection of TK and expressions of folklore by MSG members.22 The countries of the Caribbean are also

19 See M. Blakeney, ‘Traditional knowledge and cultural expressions: discussions and developments in WIPO’, in Irina Stamatoudi, ed., The Future of Copyright. A European Union and International Perspective, Alphen aan den Rijn, Kluwer Law International B.V., 101–122. 20 Currently, Botswana, the Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mauritius, Mozambique, Namibia, Rwanda, Sierra Leone, Somalia, Sudan, Swaziland, São Tomé and Príncipe, Tanzania, Uganda, Zambia and Zimbabwe. 21 See https://​www​.aripo​.org/​entry​-into​-force​-of​-the​-aripo​-swakopmund​-protocol​-on​-the​-protection​ -of​-traditional​-knowledge​-and​-expressions​-of​-folklore/​, accessed 1 January 2021. 22 See M. Blakeney, ‘Protecting traditional knowledge and expressions of culture in the Pacific’ (2011) 1(1) Queen Mary J. I.P, 80.

The protection of traditional cultural expressions by GIs  241 discussing a Regional Framework for the Protection of Traditional Knowledge, Traditional Cultural Expressions and Genetic Resources.23

TCES DEFINED A 2002 paper prepared for the fourth session of the IGC pointed out that in discussions in various intergovernmental, regional and national, and non-governmental fora, the meaning and scope of the term ‘traditional cultural expressions’ referred “to more or less the same subject matter such as ‘expressions of folklore’ … and ‘intangible and tangible cultural heritage’”.24 In analysing the nature of TCEs “relevant to questions of IP protection”, it was pointed out that expressions of traditional culture “may be either intangible, tangible or a combination of the two”, but that “the underlying traditional culture or folkloric knowledge from which the expression is derived is generally intangible. For example, a painting may depict an old myth or legend – the myth and legend are part of the underlying intangible ‘folklore’, as are the knowledge and skill used to produce the painting, while the painting itself is a tangible expression of that folklore.”25 The 2002 paper referred to the WIPO/UNESCO Model Provisions for National Laws on the Protection of Expressions of Folklore against Illicit Exploitation and other Forms of Prejudicial Action, 1985, which distinguished between intangible and tangible expressions of folklore. This distinction was adopted by the IGC in its eighth session in draft provisions embodying policy objectives and core principles for the protection of TCEs.26 Proposed Art 1 of the draft text provided: (a) “Traditional cultural expressions” or “expressions of folklore” are any forms, whether tangible and intangible, in which traditional culture and knowledge are expressed, appear or are manifested, and comprise the following forms of expressions or combinations thereof: […] tangible expressions, such as productions of art, in particular, drawings, designs, paintings (including body-painting), carvings, sculptures, pottery, terracotta, mosaic, woodwork, metalware, jewelry, baskets, needlework, textiles, glassware, carpets, costumes; handicrafts; musical instruments; and architectural forms which are: (aa) the products of creative intellectual activity, including individual and communal creativity; (bb) characteristic of a community’s cultural and social identity and cultural heritage; and (cc) maintained, used or developed by such community, or by individuals having the right or responsibility to do so in accordance with the customary law and practices of that community.

See https://​su​stainabled​evelopment​.un​.org/​partnership/​?p​=​7663, accessed 1 January 2021. WIPO, ‘Preliminary Systematic Analysis of National Experiences with the Legal Protection of Expressions of Folklore’, WIPO doc. WIPO/GRTKF/IC/4/3, para.21. 25 Ibid. 26 WIPO, ‘The Protection of Traditional Cultural Expressions/Expressions of Folklore: Revised Objectives and Principles’, WIPO doc., WIPO/GRTKF/IC/8/4. 23 24

242  Research handbook on intellectual property and cultural heritage This list of tangible expressions is relevant to the consideration of whether TCEs are protectable as GIs. The definition of TCEs has undergone a number of changes over the years in the various IGC drafts of the text of an IGC treaty. The latest definition prepared for the 40th session of the IGC, held in June 2019, defined TCEs in Article 1 as any forms in which traditional culture practices and knowledge are expressed, [appear or are manifested] [the result of intellectual activity, experiences, or insights] by indigenous [peoples], local communities and/or [other beneficiaries] in or from a traditional context, and may be dynamic and evolving and comprise verbal forms,27 musical forms,28 expressions by movement,29 tangible30 or intangible forms of expression, or combinations thereof.31 (WIPO, 2019).

The square brackets indicate a failure to agree by negotiators on the bracketed terms. Footnote 4, which refers to tangible expressions, provides in square brackets, “[Such as material expressions of art, handicrafts, ceremonial masks or dress, handmade carpets, architecture, and tangible spiritual forms, and sacred places.]”. In the absence of a consensus in the IGC negotiations, it is useful to consider whether these tangible examples of TCEs are protectable as GIs.

GIS GIs are defined in Article 22.1 of the World Trade Organization (WTO) Agreement on Trade Related Aspects of Intellectual Property Rights (‘TRIPS’) as “indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin”. The TRIPS Agreement gives no guidance on what factors are taken into account in assessing what is ‘essentially attributable’. Some guidance may be taken from the Lisbon Agreement on Appellations of Origin and Geographical Indications (revised in 2015). It defines GI in Article 2 as any consisting of or containing the name of a geographical area “which serves to designate a good as originating in that geographical area, where the quality or characteristics of the good are due exclusively or essentially to the geographical environment, including natural and human factors, and which has given the good its reputation”. The key words in this definition are ‘human factors’, which are also relevant to the definition of TCEs, which refer, inter alia, to tangible forms (i.e., human creations) in which traditional culture and knowledge are expressed. Handicrafts may qualify as goods protectable by GIs if they are culturally associated with particular localities. For example, where the traditional methods of

27 [Such as stories, epics, legends, popular stories, poetry, riddles and other narratives; words, signs, names and symbols.] 28 [Such as songs, rhythms, and instrumental music, the songs which are the expression of rituals.] 29 [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.] 30 [Such as material expressions of art, handicrafts, ceremonial masks or dress, handmade carpets, architecture, and tangible spiritual forms, and sacred places.] 31 WIPO, ‘The Protection of Traditional Cultural Expressions: Draft Articles’, WIPO doc. WIPO/ GRTKF/IC/40/5.

The protection of traditional cultural expressions by GIs  243 fashioning them remain the most substantial component of the finished product,32 also the raw materials are associated with the local source.33 The obligation of countries to protect geographical indications is contained in Article 22.2 of TRIPS. This provision requires WTO Members to provide the legal means for interested parties to prevent: (a) the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good; (b) any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention (1967).

The TRIPS Agreement does not prescribe how countries might legislate to prevent the misuse of GIs. Giovannucci et al. explain that 111 countries have enacted sui generis legislation to protect GIs as a distinct IP category, while 56 countries rely upon the protection of GIs through trademark laws.34 Sui generis protection is that specially enacted to deal with this particular category of intellectual property (‘IP’) right. Sui generis protection of GIs originated in Europe to protect foodstuffs, wines and spirits.35 This generally involves only collective applications by producers for GI protection. This is done through a system requiring written product specifications containing: a definition of the geographical boundaries delineating where the GI production is recognised, a justification of the linkage between the territory and the quality of the GI product, the characteristics of both the production process and the quality of raw materials, and the definition of the final product. However, it should be noted that while natural factors, such as the climate, geological factors, raw materials and environmental factors, can influence the quality and characteristics for some handicraft products, their human factors such as know-how, skills and production methods can also be territorially linked.36 To some extent, the EU has recognised the human content of traditional products by providing for their protection in its Regulation 1151/2012 on quality schemes for agricultural products and foodstuffs of Traditional Specialities Guaranteed.37 This is not a geographical indication, but was designed, according to Article 17 of the Regulation, “to safeguard tradi32 D.S. Gangjee, ‘Geographical Indications Protection for Handicrafts under TRIPS’, M.Phil Thesis, University of Oxford, 2002; D. Zografos, Intellectual Property and Traditional Cultural Expressions, Cheltenham, Edward Elgar, 2010, 165. 33 See e.g. A. Basole, ‘Authenticity, Innovation, and the Geographical Indication in an Artisanal Industry: The Case of the Banarasi Sari’ (2015) 18(3–4) JWIP, 127. 34 D. Giovannucci, E. Barham, R. Pirog, ‘Defining and marketing “Local” foods: geographical indications for US products’ (2010) 13(2) JWIP, 94. 35 See M. Blakeney, The Protection of Geographical Indications. Law and Practice, 2nd ed., Cheltenham, UK, Edward Elgar, 2019. 36 See D. Marie-Vivien, ‘The protection of geographical indications for handicrafts or how to apply the concepts of natural and human factors to all products’ (2013) 4 WIPO J., 191; D. Marie-Vivien, ‘Do geographical indications for handicraft deserve a special regime? Insight from worldwide law and practice’, in Van Caenegem, W. and Cleary, J. (eds), The Importance of Place: Geographical indications as a tool for local and regional development. Springer, 2017, 221–252; P. Covarrubia, ‘Geographical Indications of Traditional Handicrafts: A Cultural Element in a Predominantly Economic Activity’ (2019) 50(7) IIC 441. 37 OJ L 343, 14.12.2012, p. 1–29.

244  Research handbook on intellectual property and cultural heritage tional methods of production and recipes by helping producers of traditional product in marketing and communicating the value-adding attributes of their traditional recipes and products to consumers”.38 Article 18 requires “traditionally used names which describe a specific product or foodstuff that: results from a mode of production, processing or composition corresponding to traditional practice for that product or foodstuff produced from raw materials or ingredients that are traditionally used”. ‘Traditional’ is defined as proven usage on the domestic market for a period that allows transmission between generations which must be at least 30 years.39 Examples of registered TSGs may involve geographical as well as cultural elements.40 For example, the registration by Poland of the meads półtorak, dwójniak, trójniak and czwórniak41 reference the products in the travel diary of the Spanish diplomat, Abraham Ibn Jacob, written in 966. However, where there is an obvious geographical origin, EU applicants seem to prefer the registration of their products as GIs rather than as TSGs.42 Although the EU has legislated to protect GIs in relation to foodstuffs, wines and spirits, it is currently contemplating legislation to protect GIs in relation to handicrafts, which because of the requirement of a connection to a geographical area, will inevitably cover examples of TCEs. On 15 July 2014 the European Parliament issued a Green Paper as an aid to consultation on whether there is a need, in the EU, to increase GI protection for non-agricultural products, and if so, what approach should be taken.43 On 6 October 2015 the European Parliament passed a resolution in support of the establishment of a protection instrument … at European level, as part of a broader strategy for promoting high-quality EU products, based on a stronger commitment from the EU institutions to treat manufacturing and craft industries as a driving force for growth and the completion of the single market, thus enhancing the prestige of locally based manufacturing and handicraft production, supporting local economic development and employment in the areas concerned, boosting tourism, and strengthening consumer confidence.44

The resolution called on the Commission “to propose without delay a legislative proposal with the aim of establishing a single European system of protection of geographical indications for non-agricultural products” taking account of “the effects of the new system on producers, their competitors, consumers and Member States”. In February 2020, the EC published a study on the economic aspects of GI protection for non-agricultural products in the EU, which evalu-

38 See A. Tosato, ‘The Protection of Traditional Foods in the EU: Traditional Specialities Guaranteed’ (2013) 19(4) European L.J., 545. 39 Ibid Article 3(3). 40 See E. Weichselbaum, B. Benelam, H.S. Costa, Synthesis Report No 6 Traditional Foods in Europe, Brussels, Food Information Resource (EuroFIR) Consortium 2008. 41 Registered by Regulation 729/ 2008. 42 H. Deacon, ‘Safeguarding the Art of Pizza Making: Parallel Use of the Traditional Specialities Guaranteed Scheme and the UNESCO Intangible Heritage Convention’ (2018) 25 Int’l. J. Cultural Prop., 515. 43 European Commission (EC) ‘Making the most out of Europe’s traditional know-how: a possible extension of geographical indication protection of the European Union to non-agricultural products’, EC doc. COM/2014/0469 final. 44 2015/2053(INI) at cl.2.

The protection of traditional cultural expressions by GIs  245 ated a list of 322 geographically rooted products originating in the EU that could qualify for sui generis GIs protection.45 It should be noted that outside the EU a number of countries have enthusiastically embraced the possibility of registering handicrafts and agricultural products as GIs. Thus, in India, between April 2004, when the Geographical Indications of Goods (Registration and Protection) Act 1999 came into force in April 2020, some 350 GIs were registered for agricultural products and handicrafts.46

GIS AND TCES In 2008, the IGC commissioned a gap analysis on the protection of TCEs, which was designed to describe, inter alia, what obligations, provisions and possibilities already exist at the international level to provide protection for TCEs and identifying gaps in coverage. This analysis was updated in 2018.47 The gap analysis referred to the fact that GIs could protect some TCEs, “such as handicrafts made using natural resources” and “some TCEs may themselves be geographical indications, such as indigenous and traditional names, signs and other indications”.48 As Gangjee points out, the cultural aspects of GIs commence when producer groups begin to collectively engage with the process of drafting a product specification, as this strengthens social linkages between local actors and can increase self-esteem as their identity and related way of life is recognised and valorised. It has also been pointed out that the content of a GI specification can “also help protecting important elements of local cultural heritage, for instance traditional production methods and recipes, endangered animal breeds, or indigenous vegetables”.49 Origin products protected by GIs can act as the focal points for traditional events such as carnivals and fairs, which are used to promote a region’s cultural identity. A majority of respondents to the consultation conducted by the EC on whether to extend GIs protection to non-agricultural products agreed that such protection would help preserve products’ traditional cultural and artistic heritage.50 However, although GIs have been identified as ‘poor people’s intellectual property rights’, particularly in the context of the protection of TK,51 a number of scholars have suggested GIs as a means of providing the protection for indigenous knowledge and TCEs in the absence of

45 M. Klebba, et al., Economic aspects of geographical indication protection at EU level for non-agricultural products in the EU, Brussels, EC, 2020. 46 See http://​www​.ipindia​.nic​.in/​writereaddata/​Portal/​Images/​pdf/​GI​_Application​_Register​_10​-09​ -2019​.pdf, accessed 1 January 2021. 47 WIPO, ‘The Protection of Traditional Cultural Expressions: Updated Draft Gap Analysis’, WIPO doc. WIPO/GRTKF/IC/37/7. 48 Ibid at 31. 49 D. Gangjee, ‘Geographical Indications and Cultural Heritage’ (2012) 4 WIPO Jnl, 92, quoting, London Economics, 2008. 50 European Commission (EC) ‘Making the most out of Europe’s traditional know-how: a possible extension of geographical indication protection of the European Union to non-agricultural products’, EC doc. COM/2014/0469 final, 15. 51 M. Sunder, ‘The Invention of Traditional Knowledge’ (2007) 70(10) L.& Contemp. Probs, 97 at 114.

246  Research handbook on intellectual property and cultural heritage sui generis regimes to protect those categories.52 At the same time, it must also be acknowledged that GIs in the context of an IP framework might not be the best way of preserving cultural heritage, because of questions about ownership of traditional creations, collective rights of traditional communities in protecting the creations associated with them, the duration of protection and the enforcement of the rights of a community in relation to its creations.53 On the other hand, the trade in traditional handicrafts are the means of livelihood for a number of communities.54 In the absence of an international legal regime to protect these creations, this trade is vulnerable to competition from cheap imitations being marketed by producers in other countries. To take one example: Kente cloth from the Ashanti region of West Africa dates back to the 17th century.55 It has been described as a visual representation of the history, philosophy, ethics, oral literature, religious belief, social values and political thought of the Ashanti communities. The Ghanaian Kente industry employed 30,000 workers in the 1990s, but that figure has dropped to 3,000 today because of competition from cheap Chinese imports.56 Current IP law in general and copyright law in particular are not considered to be of much assistance in dealing with this problem.57 GIs provide an opportunity to eliminate fake or counterfeit cultural artworks from global markets58 and to prevent the adulteration and demeaning use of TCEs, such as on tea towels and other mundane items.

52 T. Cottier and M. Panizzon, ‘Legal Perspectives on Traditional Knowledge: The Case for Intellectual Property Protection’ (2004) 7(2) J. Int. Econ. L., 371; D. Kallinikou, ‘Protection of traditional cultural expressions or expressions of folklore’, Paper presented for the conference ‘Can Oral History Make Objects Speak?’, Nafplion, Greece. 18–21 October 2005; N.S. Gopalakrishnan, P.S. Nair, and A.K. Babu, Exploring the Relationship between GIs and TK: An Analysis of the Legal Tools for the Protection of GIs in Asia, Geneva, ICTSD, 2007; M. Blakeney, ‘Protection of Traditional Knowledge by Geographical Indications’ (2009) 3 Int’l. J. IP Management 357; D. Zografos, Intellectual Property and Traditional Cultural Expressions, Cheltenham, Edward Elgar, 2010; P. Martens, ‘Can Traditional Knowledge Owners and Producers in Developing Countries Use Geographical Indications for Protection and Economic Development Gain?’, Paper presented at Society of International Economic Law (SIEL), 3rd Biennial Global Conference, Singapore, 12–14 July 2012; M.C. Ogwezzy, ‘Protection of Indigenous or Traditional Knowledge Under Intellectual Property Laws: An Examination of the Efficacy of Copyright Law, Trade Secret and Sui Generis Rights’ (2012) 12(1) Int and Comp L.Rev., 7. 53 See M. Blakeney, ‘Protecting the Spiritual Beliefs of Indigenous Peoples–Australian Case Studies’ (2013) 22(2) Pacific Rim Law & Policy Journal, 391. 54 J. Deepak, ‘Protection of traditional handicrafts under Indian intellectual property laws’ (2008) 13 JIPR, 197. 55 M. Ross and J. Adu-Agyem, ‘The Evolving Art of Ashanti Kente Weaving in Ghana’ (2008) 61(1) Art Education, 33. 56 Y. Yeebo, ‘Chinese counterfeits leave Ghanaian textiles hanging by a thread’, The Christian Scientist Monitor, available at https://​www​.csmonitor​.com/​World/​Africa/​2015/​0531/​Chinese​ -counterfeits​-leave​-Ghanaian​-textiles​-hanging​-by​-a​-thread, accessed 1 January 2021. 57 B. Boateng, Cloth as Folklore and Intellectual Property – The Copyright Thing Doesn’t Work Here: Adkinra and Kente Cloth and Intellectual Property in Ghana, Minneapolis, University of Minnesota Press 2011. 58 O. Chinedu, T. Manyise, R. Moruzzo, ‘Protected geographical indication in sub‐Saharan Africa: Issues and implications’ (2017) 1 Af.JIP, 79.

The protection of traditional cultural expressions by GIs  247

EXAMPLES OF GIS PROTECTING TCES The possibility of GIs protecting TCEs has already been foreshadowed in a consolidated analysis of the legal protection of TCEs, which was prepared for the 5th session of the IGC.59 It contained numerous examples of registered GIs, which could be considered as already protecting GIs. Portugal had referred to the wines of Porto, Madeira, Redondo, Dão; the cheeses of Serpa, Azeitão, S. Jorge, Serra da Estrela, Nisa; Madeira embroidery; and honey of Alentejo, Açores.60 Mexico had referred to the appellation of origin OLINALÁ, which related to wooden articles made in the municipality of Olinalá in the state of Guerrero, using Mexican lacquers comprising natural raw materials, producing “clearly an example of the connection between the environment and culture, which makes it eligible for the appellation”.61 Another Mexican handicraft which could have been referred to is Talavera, the brightly coloured glazed ceramic earthenware manufactured using raw materials from the zone of Talavera de Puebla, Mexico.62 In the consolidated analysis, Mexico also provided the example of tequila, protected as an appellation of origin in that country, being a spirit produced in various regions of Mexico derived from the heart of the blue agave plant.63 The geographical origin of the name may be questioned as production takes place in a number of municipalities in the states of Jalisco, Nayarit, Tamaulipas, Guanajuato and Michoacán. But it was pointed out that the making of tequila involves knowledge that is traditional in the region and dates back to the middle of the 16th century. The Russian Federation provided the examples of: Velikiy-Ustyug niello, Gorodets painting, Rostov enamel, Kargopol clay toy, and a Filimonov toy protected as appellations of origin. WIPO in ‘Practical Guide to Intellectual Property for Indigenous Peoples and Local Communities’ provided the Ecuadorian example of the Montecristi straw hat, made in the town of Montecristi in Manabi province, Ecuador, by expert weavers, and dating back to the 16th cen­tury.64 The Montecristi straw hat was the first registered GI in Ecuador on 22 August 2008, the industrial property office (JEIP) having ruled that human and natural factors had created a superior material and process for hat making unique to the area surrounding Montecristi. It was urged that “if the international community does not support the older generation of Montecristi hatmakers and commit to preserving the art form, either through IP regulation or other channels, a distinct part of Ecuadorian culture will be lost forever”.65

59 WIPO (2003) ‘Consolidated analysis of the legal protection of traditional cultural expressions’, WIPO doc. WIPO/GRTKF/IC/5/3. 60 Ibid, para 170(a). 61 Ibid, para 170 (b). 62 E.R. Cisneros, Address at WIPO Symposium on the International Protection of Geographical Indications: The Protection of Geographical Indications in Mexico 2 (Nov. 28, 2001), available at http://​ www​.ompi​.cledocs/​mdocsgeoindenwipogeo​-mvd​.01/​wipo​-geo​-mvL​.0ljl​.pdf, accessed 1 January 2021. 63 WIPO, supra n 59, para 170(b). 64 WIPO, Protect and Promote Your Culture: A Practical Guide to Intellectual Property for Indigenous Peoples and Local Communities, Geneva, WIPO, 2017, 49. 65 A. Russell, ‘Using geographical indications to protect artisanal works in developing countries: Lessons from banana republic’s misnomered hat’ (2010) 19(2) Transnat. L.& Contemp. Probs, 705 at 711.

248  Research handbook on intellectual property and cultural heritage Among the 210 GIs for handicrafts registered in India66 are Banarasi saris and brocades, registered in 2009 for hand-woven silk fabrics with brocade embroidery and depicting designs of the city of Varanasi, which is situated on the banks of the river Ganges in the eastern part of the state of Uttar Pradesh in north India.67 Similar GI registrations have been obtained in India for Kancheepuram silk sarees, which can be traced back more than 400 years, and Pochampally sarees, woven according to traditional methods in Andhra Pradesh in India.68 In addition to these cloths, GI registrations have been granted in India for the handlooms on which they are woven. For example, a GI has been granted for the ‘Balaramapuram Handlooms’ connected with the former Travancore royal family, manufactured in the Thiruvananthapuram District of State of Kerala from the period of king Balaramavarma 250 years ago.69 ‘Aranmula Kannadi’ has been registered as a GI by the Parthasarathy HandiCraft Centre of Kerala. This is a copper and tin mirror, which has been manufactured in the Pathanamthitta District of Kerala by a few traditional families for more than 500 years, according to a secret recipe developed for the Maharaja of Travancore.70 Other Indian examples of traditional handicrafts which have been registered as GIs are: Kullu shawls, Bhagalpur silk, Madhubani painting and the handmade carpets of Bhadoi.71,72 Other traditional handicrafts which have been suggested for GIs protection include: ‘Jamdani’ from Bangladesh and curd cheese from north-eastern Brazil. Jamdani is a distinctive type of Bangladeshi cloth with a traditional weaving style and cultural elements resulting from the contribution of skilled artisans, utilising local cotton. It should be noted that UNESCO has recognised ‘Jamdani handicraft’ as the ‘sole tradition’ and ‘intangible cultural heritage’ of Bangladesh.73 Curd cheese has been produced in the north-east region of Brazil for 150 years and is considered a part of the cultural heritage of the region, being described as identity food.74 In Nigeria, GIs protection has been proposed for traditional foods and beverages such as ofada rice, palm wine, Kilishi, cocoa/coffee beans and cassava products, such as ‘Garri’, textiles such as adire and ofi, and artworks from the Benin, Igbo and Yoruba communities.75

66 See http://​www​.ipindia​.nic​.in/​writereaddata/​Portal/​Images/​pdf/​GI​_Application​_Register​_10​-09​ -2019​.pdf, accessed 1 January 2021. 67 Basole, supra n 33, at 135. 68 Gopalakrishnan, supra n 52, at 38–39. 69 Gopalakrishnan, supra n 52, at 41. 70 Gopalakrishnan, supra n 52, at 33–34. 71 S. Kumar and S. Srivastava, ‘The legal status of geographical indications in India’ (2017) 28 Bioved, 43. 72 M.A. Karim and M.E. Karim, ‘Protection of “handicraft” as geographical indications under municipal law, TRIPS and BTAs vis-à-vis CETA: “Bangladeshi Jamdani” as case study’ (2017) 7(1) Queen Mary JIP, 49. 73 Ibid at 69. 74 S. de L. Almeida, et al., ‘Geographical Indication Re-signifying Artisanal Production of Curd Cheese in Northeastern Brazil’ (2016), 20(6) RAC, 715. 75 A.A. Adewopo, ‘Protection and Administration of Folklore in Nigeria’ (2006) 3(1) SCRIPT-ed; Lawal-Arowolo, A. ‘Geographical indications and cultural artworks in Nigeria: A cue from other jurisdictions’ (2019) 22(5–6): JWIP, 364.

The protection of traditional cultural expressions by GIs  249

CONCLUSION Traditional handicrafts have been identified as a repository of the cultural heritage of a nation, reflecting the identity of its people and therefore deserving of international protection,76 but it has been questioned whether GIs protection is appropriate for this purpose. From a cultural perspective there may well be a tension between the commercial objectives of GIs, which are to promote the merchandising and consumption of goods, compared with TCEs, which are the repositories of traditional cultures, sometimes with sacred sensitivities.77 Voon concludes that the culture argument adds little to the basis for GI protection and “the cultural justification for GI protection is largely subsumed within the broader purposes of preventing unfair competition and consumer confusion”.78 Of course, it should be noted that not all TCEs can be protected by GIs. This protection can only extend to tangible TCEs, such as traditional handicrafts. In this regard Gangjee79 suggests that “they are essentially a guest at someone else’s party”. An important difference between laws protecting TCEs and those protecting GIs is that different stakeholders are involved. In the case of TCEs, the primary beneficiaries are the traditional communities and peoples for whom the tangible expressions have cultural significance. In relation to GIs, the stakeholders include not only the originators and custodians of the TCEs, but also the traders, dealers and governmental agencies which are permitted to act as the proprietors of the GIs. These stakeholders have different objectives. In relation to GIs, the objectives are protection and exploitation, which might not always be shared by traditional communities. In relation to TCEs, the objectives include preservation and conservation. In protecting the local terroir, GIs not only protect TCEs but provide a useful corrective to the uniformity of globalisation;80 however, a danger which has been identified with the protection of TCEs by GIs is their overcommercialisation.81 In the absence of international sui generis legislation to protect TCEs, it must be concluded that the protection of GIs for the tangible manifestations of folklore is a second-best solution.

76 F. Lenzerine, ‘Intangible cultural heritage: the living culture of peoples’ (2011) 22(1) Eur J Int Law, 101. 77 T. Broude, ‘Taking Trade and Culture Seriously: Geographical Indications and Cultural Protection in WTO Law’ (2005) 26(4) U. Penn. J. In. L., 623; P. Drahos, ‘When Cosmology meets Property: Indigenous People’s Innovation and Intellectual Property’ (2011) 29(3): Prometheus, 233. 78 T. Voon, ‘Geographical Indications, Culture and the WTO’, in B. Ubertazzi and E.M. Espada (eds), Le indicazioni di qualità degli alimenti: Diritto internazionale ed europeo, Milan, Giuffre Editore, 2009, at 300. 79 Gangjee, supra n 49, at 93. 80 Broude, supra n 77; A.K. Sanders, ‘Incentives for Protection of Cultural Expression: Art, Trade and Geographical Indications’ (2010) 13(2) JWIP, 81. 81 B. Ubertazzi, ‘EU Geographical Indications and Intangible Cultural Heritage’ (2017) 48 IIC, 562 at 567; I. Calboli, ‘Of Markets, Culture, and Terroir: The Unique Economic and Culture-Related Benefits of Geographical Indications of Origin’, in Gervais, D., International Intellectual Property: A Handbook of Contemporary Research, Cheltenham, UK, Edward Elgar, 2015, 433–464.

13. Copyright ownership challenge arising from AI-generated works of art: A time to stand and stare Theodoros Chiou

INTRODUCTION AI-generated Works and Cultural Heritage At first sight, it seems that there is little room for examining copyright ownership challenge related with artificial intelligence (AI) in the context of the intellectual property and cultural heritage interface. In fact, cultural heritage represents the past and AI-generated works of art represent the future of human creative production. However, a more careful appreciation shows that such examination seems pertinent: AI-generated works will form the cultural heritage of the future,1 cumulatively with all cultural creative production made without the employment of AI technology, and both categories will indistinctively be assessed as objects of copyright protection, at present. Defining the Challenging Aspect of Examined Copyright–AI Interface: Protection and Ownership of AI-generated Works of Art It seems useful to clarify from the outset that AI is a generic term referring to the development of machines that are able, by appropriate programming, to learn and achieve decision-making and produce certain output, with limited or no human involvement.2 The copyright–AI interface presents several aspects, which are related not only with the legal treatment of AI outputs as protectable subject matter, but also with the use of copyrighted works as training material of AI systems, among others.3 The focus of this chapter lies on the more visibly challenging 1 See in that regard Committee on Legal Affairs of the EU Parliament, DRAFT REPORT on intellectual property rights for the development of artificial intelligence technologies, [2020], (2020/2015(INI)) (Rapporteur: Stéphane Séjourné), 9: “AI-generated creation and ‘traditional’ creation still have in common the aim of expanding cultural heritage, even if the creation takes place by means of a different act.” 2 This is a functional definition for the purposes of the present contribution. For a more analytical approach on AI definitions, see Sofia Samoili and others, ‘AI WATCH. Defining Artificial Intelligence’, [2020] EUR 30117 EN, Publications Office of the European Union, available at: https://​publications​.jrc​ .ec​.europa​.eu/​repository/​handle/​JRC118163​?mode​=​full (accessed 2021), passim. 3 See Daniel Schönberger, ‘Deep Copyright: Up – And Downstream Questions Related to Artificial Intelligence (AI) and Machine Learning (ML)’ [2018] SSRN: https://​ ssrn​ .com/​ abstract​ =​ 3098315 (accessed 1/6/2021); Theodoros Chiou, ‘Copyright lessons on Machine Learning: what impact on algorithmic art?’ [2020] 10 JIPITEC; Christophe Geiger, ‘The Missing Goal-Scorers in the Artificial Intelligence Team: Of Big Data, the Fundamental Right to Research and the failed Text and Data Mining

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Copyright ownership challenge  251 part4 of the interface, related with the copyrightability and ownership connected with a specific category of AI applications5 and AI outputs, namely the ‘generative art’,6 ‘algorithmic art’,7 or simply ‘AI art’.8 In particular, AI art is based on the development of ‘intelligent’9 and creative AI systems10 (namely, computers with or without hardware extension – such as ‘robots’11 or

Limitations in the CSDM Directive’ [2021], PIJIP/TLS Research Paper Series 2021, No. 66, Available at SSRN: https://​ssrn​.com/​abstract​=​3829768 or http://​dx​.doi​.org/​10​.2139/​ssrn​.3829768 (accessed 1/6/2021); Theodoros Chiou, ‘Copyright law and algorithmic creativity: Monopolizing inspiration?’ in Tatiana-Eleni Synodinou, Philippe Jougleux, Christiana Markou (eds), EU Internet Law in the Digital Single Market, (Springer 2021). 4 Cf. Annemarie Bridy, ‘Coding Creativity: Copyright and the Artificially Intelligent Author’ 5 [2012] Stanford Technology Law Review, available at: https://​ osf​ .io/​ p4feh/​ download (accessed 1/6/2021) 27, §69: “[…] is not to say that we can or should ignore the challenge that AI authorship presents to copyright law’s underlying assumptions about creativity”. 5 For a broader discussion on AI applications see among others Harry Surden, ‘Artificial Intelligence and Law: An Overview’, 35 [2019] Georgia State University Law Review; University of Colorado Law Legal Studies Research Paper No. 19-22, available at SSRN: (accessed 1/6/2021) 88. 6 See https://​en​.wikipedia​.org/​wiki/​Generative​_art (accessed 1/6/2021); Margaret Boden and Ernest Edmonds, ‘What is Generative Art?’, 20 [2009] Digital Creativity, 24. 7 See https://​en​.wikipedia​.org/​wiki/​Algorithmic​_art (accessed 1/6/2021), although mentioning that the term mainly refers to visual (algorithmic) art. 8 See https://​en​.wikipedia​.org/​wiki/​Artificial​_intelligence​_art (accessed 1/6/2021). 9 For the connection between intelligence and creativity see among others Schönberger n3, 3–4, and references mentioned therein; Ana Ramalho, ‘Will Robots Rule the (Artistic) World? A Proposed Model for the Legal Status of Creations by Artificial Intelligence Systems’ [2017], available at SSRN: https://​ssrn​.com/​abstract​=​2987757 or http://​dx​.doi​.org/​10​.2139/​ssrn​.2987757 (accessed 1/6/2021), 3: “What most psychologists agree on is that human intelligence is an ensemble of several components, and that creativity is one of them.”; Wikipedia, entry: “Creativity”, https://​en​.wikipedia​.org/​wiki/​Creativity​ #Creative​_cognition​_apprach (accessed 1/6/2021). 10 There will also be available some legal definitions for AI systems, see for instance Proposal for a Regulation of the European Parliament and of the Council laying down harmonised rules on artificial intelligence (artificial intelligence act) and amending certain union legislative acts [2021] {SEC(2021) 167 final} – {SWD(2021) 84 final} – {SWD(2021) 85 final}, COM(2021) 206 final 2021/0106 (COD), art. 3 para. (1): “‘artificial intelligence system’ (AI system) means software that is developed with one or more of the techniques and approaches listed in Annex I and can, for a given set of human-defined objectives, generate outputs such as content, predictions, recommendations, or decisions influencing the environments they interact with.” 11 There is an overlap between artificial intelligence and robotics, including in the AI art field, to the extent that the software of a robot is AI-based (artificial intelligence robot). See e.g., the robot ‘Ai-Da’, able to create visual works upon command of its software (AI robot artist), see https://​www​.ai​-darobot​ .com/​(accessed 1/6/2021). On this overlap, see also Joseph Drexl and others, ‘Technical Aspects of Artificial Intelligence: An Understanding from an Intellectual Property Law Perspective’ [2019], Max Planck Institute for Innovation & Competition Research Paper No. 19-13, Available at SSRN: https://​ ssrn​.com/​abstract​=​3465577 or http://​dx​.doi​.org/​10​.2139/​ssrn​.3465577 (accessed 1/6/2021), 3. See also European Parliament, Resolution of 16 February 2017 with recommendations to the Commission on Civil Law Rules on Robotics (2015/2103(INL)), P8_TA(2017)0051, (2018/C 252/25), Introduction, under B.

252  Research handbook on intellectual property and cultural heritage just software12) that are able, via the implementation of adequate machine learning methods13 and training/learning algorithms, to translate creativity in computational terms14 and produce, as outcome of an algorithmic creative process, outputs that bear the morphological characteristics of works of art (creative and artistic output, in digital form), with limited or no human involvement. Current State of AI Art In our days, the algorithmic innovation and the development of advanced neural networks as well as the availability of large amounts of digital data (big data) and computational power have allowed the development15 of several online generative art applications in various creative sectors.16 Indeed, apart from emblematic research (and probably experimental) AI art projects, which aimed at the creation of a specific artistic outcome, such as the Next Rembrandt Project,17 generative machines are now available for everyday use, even by non-artists18 or

12 See, among others, Christian Hartmann and others, ‘Trends and Developments in Artificial Intelligence Challenges to the Intellectual Property Rights Framework. Final report,’ Study Commissioned by the European Commission, prepared by The Joint Institute for Innovation Policy and University of Amsterdam [2020], available at: https://​www​.ivir​.nl/​publicaties/​download/​Trends​_and​ _Developments​_in​_Artificial​_Intelligence​-1​.pdf, (accessed 1/6/2021), 23. For the distinction between ‘virtual’ (software-based) and embedded-in-hardware-devices AI systems, see the definition of AI on European Commission, Communication from the Commission to the European Parliament, the European Council, the Council, the European Economic and Social Committee and the Committee of the Regions, Artificial Intelligence for Europe, [2018], COM(2018) 237 final, 1. 13 Machine learning comprises several stages. The development of machine learning is characterized by the transition from supervised to unsupervised learning. Unsupervised or deep learning is related with the construction of artificial multilevel neural networks, which, in a more advanced form, are based on the employment of two adversarial neural networks (generative deep learning – Generative Adversarial Networks – GAN). See, among others, Daniel Gervais, ‘The Machine as Author’, 105 [2019] Iowa Law Review, available at: SSRN: https://​ssrn​.com/​abstract​=​3359524, (accessed 1/6/2021), 2053 ff, 2055–2056; Tim Dornis, ‘Artificial Creativity: Emergent Works and the Void in Current Copyright Doctrine’, 22 [2020] Yale Journal of Law & Technology, 1, Available at SSRN: https://​ssrn​.com/​abstract​ =​3451480 or http://​dx​.doi​.org/​10​.2139/​ssrn​.3451480, (accessed 1/6/2021), 15; Yavar Bathaee, ‘The Artificial Intelligence Black Box and the failure of intent and causation’, 31 [2018] Harvard Journal of Law & Technology, 890 ff. and in particular 901 ff.; Drexl n11, 7–8. 14 Jean Marc Deltorn and Frank Macrez, ‘Authorship in the Age of Machine Learning and Artificial Intelligence’, [2018], Centre for International Intellectual Property Studies (CEIPI) Research Paper No. 2018-10, available at: SSRN: https://​ssrn​.com/​abstract​=​3261329, (accessed 1/6/2021), 7, citing Robert Schalkoff, Artificial Intelligence: An Engineering Approach, (McGraw-Hill 1990). 15 It shall be mentioned that the development of creative AI systems is not an entirely novel technology, since generative art has emerged and evolved since several decades ago. Among the oldest endeavors are listed ‘AARON’ (visual art works) (see: www​.aaronshome​.com) (accessed 1/6/2021) and ‘Cybernetic Poet’, developed by Ray Kurzweil (poems) (see: www​.kurzweilcyberart​.com) (accessed 1/6/2021). 16 See e.g. Hartmann et al. n12, 78: “AI systems are capable of generating almost the entire spectrum of work types mentioned in art. 2(1) of the Berne Convention […].” 17 http://​www​.nextrebrandt​.com (accessed 1/6/2021). 18 Algorithmic artists are often called ‘algorists’, see Roman Verostko, The Algorists, http://​www​ .verostko​.com/​algorist​.html (accessed 1/6/2021).

Copyright ownership challenge  253 programmers.19 Illustrations of the above include, for instance, AI-generated translation produced by applications such as Google Translate20 or DeepL Translator,21 AI journalism22 or AI applications that allow the creation of self-standing musical works (such as ‘Jukedeck’23 or ‘ΑIVA’24) upon assignment by any end-user. Similarly, other AI applications offer or augment creative abilities to human authors, such as FlowMachines25 in the music sector. Therefore, from a functional point of view, the output of creative AI systems may be divided into two main categories: (a) self-standing output that bears the characteristics of human-made works of art,26 that derive from the implementation of the AI system, either by the programmers that developed the AI system, or by end-users who interact with that system;27 (b) output that is used by human authors as source of inspiration and/or as component of a ‘traditional’ final work.28

19 See eg, Deltorn and Μacrez n14, 23, with reference to music creation applications. In that regard, see the description of the application ‘AIVA’ (www​.aiva​.ai) (accessed 1/6/2021): “A Creative Assistant for Creative People. Whether you are an independent game developer, a complete novice in music, or a seasoned professional composer, AIVA assists you in your creative process. Create compelling themes for your projects faster than ever before, by leveraging the power of AI-generated music.” Or the description of ‘Amper’ (https://​www​.ampermusic​.com/​) (accessed 1/6/2021): “All you have to do is go to the website and pick a genre of music and a mood. That’s it. You don’t have to know code or composition or even music theory in order to make a song with it.” 20 http://​tranlsate​.google​.com (accessed 1/6/2021). 21 http://​www​.deepl​.com (accessed 1/6/2021). 22 See on that topic, Hartmann n12, 58ff. It has to be noted that AI journalism features among the first AI-generated works case law, see People’s Court of Nanshan (District of Shenzhen) 24 December 2019 – Case No. (2019) Yue 0305 Min Chu No. 14010, Shenzhen Tencent v. Shanghai Yingxun, over “Dreamwriter’s” (“Robot Reporter”) creative output; Bo Zhou, ‘Artificial Intelligence and Copyright Protection – Judicial Practice in Chinese Courts’, [2020] available at: https://​www​.wipo​ .int/​export/​sites/​www/​about​-ip/​en/​artificial​_intelligence/​conversation​_ip​_ai/​pdf/​ms​_china​_1​_en​.pdf (accessed 1/6/2021). See already He Huifeng, ‘End of the road for journalists? Tencent’s Robot reporter “Dreamwriter” churns out perfect 1,000-word news story – in 60 seconds’, [2015] South China Morning Post, available at: https://​www​.scmp​.com/​tech/​china​-tech/​article/​1857196/​end​-road​-journalists​-tencents​ -robot​-reporter​-dreamwriter​-churns​-out (accessed 1/6/2021). 23 http://​www​.jukedeck​.com (accessed 1/6/2021). 24 See application AIVA (http://​www​.aiva​.ai), described as: “The Artificial Intelligence composing emotional soundtrack music” upon user’s command. 25 http://​www​.flow​-machines​.com (accessed 1/6/2021). FlowMachines is described as: “AI Assisted Composing System.” 26 Cf. Hartmann et al. n12, 78: “many AI productions resemble archetypal works, and belong to ‘the literary, scientific or artistic domain’ without any difficulty.” 27 See the distinction between ‘fully generative machines’ and ‘partially generative machines’ at Jane Ginsburg and Luke Ali Budiardjo, ‘Authors and Machines’, 34 [2019] Berkeley Tech. L. J. 343, 411 ff. 28 For this type of AI system in the field of musical composition, see e.g. FlowMachines (http://​ www​.flow​-machines​.com) (accessed 1/6/2021), which is described as “AI Assisted Composing System”. Recently the service FlowMachines Professional has been launched, see https://​www​.sonycsl​.co​.jp/​ press/​prs20200324/​ (accessed 1/6/2021).

254  Research handbook on intellectual property and cultural heritage AI and Copyright: Is there a Real (Ownership) Challenge? Undoubtedly, the AI–copyright law (and IP law in general) interface has recently been a trending – although not entirely new29 – topic both among copyright scholars30 as well as at the level of preparatory policymaking.31 Yet, technological advances have always had transformational influence on copyright law, and copyright law has proved to be (in the end) technology resistant. In fact, copyright law history is shaped by technological evolution,32 and black letter amendments or additions of the last decades usually reflected a need to adapt the applicable

29 See already Karl F. Milde, ‘Can a Computer Be an Author or an Inventor?’, 5 [1969] Journal of the Patent Office Society, 378 ff.; Tiimothy L. Butle, ‘Can a Computer be an Author – Copyright Aspects of Artificial Intelligence’, 4 [1982] Hastings Communications and Entertainment Law Journal, 707 ff; Pamela Samuelson, ‘Allocating Ownership Rights in Computer-Generated Works’, [1986] U. Pitt. L. Rev., 1185; Sam Ricketson, ‘The 1992 Horace S. Manges Lecture – People or Machines: The Bern Convention and the Changing Concept of Authorship’, 16 [1991–1992], Columbia-VLA Journal of Law & the Arts, 1–38. 30 The bibliography of the last five years is abundant and increasing in quantity. See indicatively the references cited herein. 31 At EU level, see especially EC, Communication from the Commission to the European Parliament, the European Council, the Council, the European Economic and Social Committee and the Committee of the Regions, ‘Artificial Intelligence for Europe’, [2018] COM (2018) 237 Final, 15; EC, Communication from the Commission to the European Parliament, the European Council, the Council, the European Economic and Social Committee and the Committee of the Regions, ‘Coordinated plan on Artificial Intelligence’, [2018], COM(2018) 795 Final, 19. See also two EC studies tenders: EC, ‘Trends and Developments in Artificial Intelligence – Challenges to the Intellectual Property Rights Framework’, Shaping Europe’s digital future, SMART 2018/0052, March 2019 and EC, CNECT/2020/OP/0009 – Study on Copyright and New Technologies: Copyright Data Management and Artificial Intelligence – Smart 2019/0038. Additionally, see the commissioned studies by EU institutions: M. Craglia and others (eds), Artificial Intelligence – A European Perspective, [2018]EUR 29425 EN, Publications Office, available at: https://​ op​.europa​.eu/​el/​publication​-detail/​-/​publication/​ed2148f3​-0288​-11e9​-adde​-01aa75ed71a1/​language​-el/​ format​-PDF/​source​-search, (accessed 1/6/2021), 66–67; Maria Iglesias Portela, Sheron Shamuilia and Aamanda Anderberg, ‘Intellectual Property and Artificial Intelligence – A literature review’, [2019] EUR 30017 EN, Publications Office of the European Union, Luxembourg, available at: https://​publications​ .jrc​.ec​.europa​.eu/​repository/​bitstream/​JRC119102/​intellectual​_property​_and​_artificial​_intelligence​_jrc​ _template​_final​.pdf (accessed 1/6/2021). Adopted documents by the European Parliament: European Parliament, Resolution on intellectual property rights for the development of artificial intelligence technologies, [2020], 2020/2015(INI). At the WIPO level, see especially WIPO Conversation on Intellectual Property (IP) and Artificial Intelligence (AI), available at: https://​www​.wipo​.int/​about​-ip/​en/​artificial​_intelligence/​conversation​ .html (accessed 1/6/2021), with three sessions already completed, focusing on AI and IP Policy (the next sessions focus on IP and Frontier Technologies, see https://​www​.wipo​.int/​about​-ip/​en/​frontier​ _technologies/​frontier​_conversation​.html (accessed 15/4/2022). Summaries of completed sessions may be found here: https://​www​.wipo​.int/​meetings/​en/​doc​_details​.jsp​?doc​_id​=​459091 and https://​www​.wipo​ .int/​meetings/​en/​doc​_details​.jsp/​doc​_id​=​527540 accessed 1/6/2021); WIPO Conversation on Intellectual Property (IP) and Artificial Intelligence (AI) Second Session, Draft Issues Paper on Intellectual Property Policy and Artificial Intelligence, WIPO/IP/AI/2/GE/20/1original, December 13, 2019 (which received over 250 submissions/comments from various stakeholders, available here: https://​www​.wipo​.int/​about​ -ip/​en/​artificial​_intelligence/​conversation​.html​#interventions) (accessed 1/6/2021). 32 See e.g., Mary L. Mills, ‘New Technology and the Limitations of Copyright Law: An Argument for Finding Alternatives to Copyright Legislation in an Era of Rapid Technological Change’, 65 [1989] Chi.-Kent L. Rev., 307 ff., 310.

Copyright ownership challenge  255 framework to challenges triggered by the ‘siren song’33 of new technologies.34 So, is this ‘AI fever’ justified? AI-generated works, an aspect of the so-called ‘4th Industrial Revolution’,35 bring a real transformational protection and ownership challenge for copyright law36 and, if so, what is the novel aspect of it, if any? The Creation–Authorship–Ownership Trio The challenge of protection and ownership of AI-generated works of art is connected with fundamental parameters of copyrightability: creativity and authorship. More precisely, the concept of copyright ownership presupposes the existence of conditions that would allow for the naissance of copyright protection and its subject matter themselves. From a pragmatic point of view, copyright recognition presupposes a two-fold factual reality: (a) the existence of a protectable subject matter (the work of art); and (b) its creation by an author (author-in-fact37). Legal approach builds copyright protection and ownership upon the above factual reality (authorship based on creation) and reserves, as a general rule, the creative ability38 and, subsequently, authorship (author-in-law),39 to humans (in principle, natural persons).40 This is why the concept of authorship is universally41 connected with (human)

33 James Grimmelmann, ‘There’s No Such Thing as a Computer-Authored Work – And It’s a Good Thing, Too’, 39 [2016] Columbia Journal of Law & the Arts, 403 ff., 416. 34 Purely indicatively, see at the international level the WIPO Internet Treaties, the US DMCA and at the EU level the EU Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society [2001] (OJ L 167, 22.6.2001, 10–19) and the EU Directive 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the Digital Single Market and amending Directives 96/9/EC and 2001/29/EC (OJ L 130, 17.5.2019, 92–125), which aimed at coping with technological advances of the last decades, especially with regards internet and digital technologies challenge. 35 On that topic, see e.g., Mark Skilton and Felix Hovsepian, The 4th Industrial Revolution Responding to the Impact of Artificial Intelligence on Business (Palgrave Macmillan 2018). 36 Affirmative approach by Dornis n15; Catherine Jewell, ‘Artificial intelligence: the new electricity’ [2019] WIPO Magazine, June 2019, available at: https://​www​.wipo​.int/​wipo​_magazine/​en/​2019/​03/​ article​_0001​.html (accessed 1/6/2021); Christian Peukert, ‘The Next Wave of Digital Technological Change and the Cultural Industries’ [2018], available at: SSRN: https://​papers​.ssrn​.com/​sol3/​papers​.cfm​ ?abstract​_id​=​3273110 (accessed 1/6/2021). 37 Terminology used by Bridy n4. 38 Cf. Bridy n4, 27, § 69, where reference is made to “copyright law’s underlying assumptions about creativity.” 39 Ramalho n9, 2: “The act of creation is traditionally equated with a human being.” Cf. Hartmann n14, 76: “‘Work’ and ‘author’ are two sides of the same coin. In copyright law, no work exists without an author. Conversely, absent a work, there will be no author; the question of authorship will only arise if it has been established that there is a work – an intellectual creation – to which authorship can be attributed.” 40 Cf. the term ‘humanness of authorship’ in Gervais n15, 2072 ff. For a meta-legal discussion over the definition of creativity and the inherent link between human nature and creativity, see Schönberger n3, 3 ff. See, however, EU Parliament Resolution n33, no. 15: “recommends that ownership of rights, if any, should only be assigned to natural or legal persons that created the work […] [emphasis added]”. 41 See in that regard, Jane C. Ginsburg, ‘The Concept of Authorship in Comparative Copyright Law’ [2003], 52 DePaul L. Rev., 1063 ff., Available at: https://​via​.library​.depaul​.edu/​law​-review/​vol52/​iss4/​3 (accessed 1/6/2021), passim; Ramalho n11, 10: “[…] at the international level and in the three jurisdictions concerned, the author in copyright law is necessarily a human being.”

256  Research handbook on intellectual property and cultural heritage creation42 and is typically subjacent to the concept of (initial) ownership in copyright law,43 which is attributed when the originality criterion regarding the creation in question, as product of specific human mind(s),44 is met. Of course, authorial characteristics of an agent that determine legal authorship are connected with the fact and outcome of creation (and, subsequently, of copyright-significant creativity), but may have variable content according to applicable law, extending from creative contribution or effort to (economic) initiative, arrangement or control of the creative process. This is why in some jurisdictions authorship may also be attributed to legal persons, which, however, are still fully controlled by humans. However, the general rule that authorial characteristics are connected with human intervention remains.45 Given the above, an ‘artificial authorship-in-fact’ based on ‘artificial creativity’ is not conceivable as such under the current copyright system. In addition, AI systems (machines) themselves cannot be owners of rights. As a consequence, the emergence of a non-human ‘creative’ agent and the subsequent non-obviousness or the lack of human authorship challenges the traditional pattern of copyright protection and ownership that flows from human authorship46 and derives from creation, within the context of AI-generated works. Therefore, in our view, ownership challenge (which also incorporates the copyrightability question) related with the outcomes of ‘artificial creativity’ is different in nature and scope in comparison with challenges connected with technological advances of the past, to the extent that it puts forward the question of adaptability of concepts such as authorship and ownership in AI-generated works,47 rather than the scope of patrimonial rights and their ability to assimilate new forms of exploitation of works.48 Besides, it seems that AI art is possibly revolutionizing various art sectors, by introducing a new (creativity) paradigm49 for the artistic world.50 In addition, the development of algorithmic creativity shows that AI-generative output may

42 Andres Guadamuz, ‘Do Androids Dream of Electric Copyright? Comparative Analysis of Originality in Artificial Intelligence Generated Works’ 2 [2017], Intellectual Property Quarterly, Available at SSRN: https://​ssrn​.com/​abstract​=​2981304 (accessed 1/6/2021), 5; from a UK law perspective: “Copyright law clearly defines the author of a work as ‘the person who created it’.” 43 Cf. Guadamuz n42, 5, indirectly and in a broader context: “Intellectual property is specifically directed towards the protection of the fruits of the human mind, and these works are given a set of limited ownership rights allocated to persons, both natural and legal.” 44 Grimmelmann n33, 658. 45 Cf. Ramalho n9, 10, making reference to ‘humanization’ of authorship. 46 See among others, Hartmann n12, 95: “Copyright ownership follows authorship. It is a universal rule of copyright law that, by default, copyright vests in the person having created the work.”; Enrico Bonadio and Luke McDonagh, ‘Artificial Intelligence as Producer and Consumer of Copyright Works: Evaluating the Consequences of Algorithmic Creativity”, 2 [2020] Intellectual Property Quarterly, available at: http://​eprints​.lse​.ac​.uk/​105272/​1/​Bonadio​_McDonagh​_IPQ​_2020​.pdf (accessed 1/6/2021), 2: “Under most copyright regimes around the world the author of the work is also the first owner of the copyright.” 47 Cf. Guadamuz n42, 5: “[machine learning] may prompt us to revisit the concepts of originality and creativity that rest at the heart of copyright protection.” 48 See in that regard Dornis n13, 5: “[…] in the first two technological revolutions, the issue at hand is not the accelerated duplication of creative works or their ubiquitous dissemination via the web. Rather, we are on the threshold of an age of substitution of human creativity by artificial creativity.” 49 See Gervais n13, 2070 ff. 50 Cf. Guadamuz n42, 6, referring to “new era of creation”.

Copyright ownership challenge  257 not be easily distinguishable from traditional human art.51 This endows AI-generated works of art with value52 and brings into the forefront the question of their protection and, ultimately, appropriation under copyright laws. At present, AI art cannot be considered anymore as a ‘niche’ or ‘futuristic’ technological evolution. In parallel, the discussion around the copyright protection and, more crucially, ownership challenge over AI-generated works of art is currently very vivid and significantly extensive. Therefore, it seems that there is an opportune momentum in order to take a time to stand and stare53 over the features of the copyright ownership challenge arising from AI-generated works and the elements of priority for formulating an appropriate response. The present chapter intends to contribute to that direction, by theoretically conceptualizing the grounds of the challenge, (1) before categorizing and critically assessing the possible responses to this universal challenge (2) and expressing some conclusive remarks (3), without focusing on a particular jurisdiction.

1.

THE GROUNDS OF THE COPYRIGHT OWNERSHIP CHALLENGE ARISING FROM AI-GENERATED WORKS

The ownership challenge of AI-generated works is rooted on the idiosyncratic technological aspects that characterize the AI art environment: (1) the multi-stage and multi-agent character of algorithmic creative process; and (2) the creative ability of the AI system to proceed autonomously to authorial decisions with limited or without human involvement. 1.1

The Multi-stage and Multi-agent Algorithmic Creative Process

To begin with, ownership challenge related with AI-generated works derives from the nature and multiple stages of the algorithmic creative process that is implemented in the background of the creation of AI works.54 In a nutshell, the algorithmic creative process is based on the analysis of adequate data by learning algorithms.55 This implies a multi-stage technical process, involving the implementation of machine learning techniques (machine learning workflow56

51 Cf. Dornis n13, 16: “the gap between artificial and natural intelligence will someday shrink beyond recognition.” The Turing Test (https://​en​.wikipedia​.org/​wiki/​Turing​_test) (accessed 1/6/2021) as well as the “Lovelace Test” are relevant in that regard. See Selmer Bringsjord, Paul Bello and David Ferrucci, ‘Creativity, the Turing Test, and the (Better) Lovelace Test’, 11 [2001] Minds and Machines, 3–27. See also the website http://​botpoet​.com (accessed 1/6/2021), for an implementation of Turing Test applied in poems; Schönberger n3, 6. 52 One should consider that the AI-generated painting Edmond de Belamy (https://​en​.wikipedia​ .org/​wiki/​Edmond​_de​ _Belamy) has been sold in Christie’s auction for $432,500, see https://​ www​ .christies​.com/​features/​A​-collaboration​-between​-two​-artistsone​-human​-one​-a​-machine​-9332​-1​.aspx (both accessed 1/6/2021). 53 Cf. for a similar approach in another legal field and occasion, Roger Brownsword, ‘The Theoretical Foundations of European Private Law: A Time to Stand and Stare’, in Roger Brownsword and others (eds), The Foundations of European Private Law (Hart Publishing 2011). 54 Cf. Bridy n4, 24, §61, where the term “procedurally generated works” is used. 55 Cf. Drexl et al. n11, 4. 56 Chiou n3, §8.

258  Research handbook on intellectual property and cultural heritage or AI system lifecycle57). Throughout this process, apart from eventual authorial decisions of the machine itself (see below), there may possibly intervene several (human) contributions of different level and type,58 while the components or by-products of that process may correspond to (pre-existing or developed) protectable subject matter per se. More precisely, the AI system is an infrastructure that possibly qualifies as protectable subject matter per se, under copyright law,59 as computer program.60 In addition, the content of training datasets that are used as input during the initial stages of training of the AI system consist also possibly of large quantities of copyrighted works of the same type as the type of anticipated artistic output,61 while the data sets as such may also be protected as databases.62 Also, the determination of the ‘operational logic’63 of the AI system, i.e., the implementation of machine learning process and the crystallization of a creative model, implies the development and use of programming know-how and the conception of training algorithms, which may also be valuable intellectual assets, even if they are not protectable as such by copyright law (but eventually are covered by an alternative IP regime, such as trade secret). The existence and combination of a group of pre-existing valuable and/or protectable components throughout the different stages of algorithmic creative process implies the existence and contribution of multiple agents. That said, apart from the agent who implements the AI system in order to generate the artistic output (the user of the system), several contributors may be detected in the upstream creative process of development of the AI system (the programmers/developers), which may include, among others, coders, goal selectors, data selectors, trainers, etc.64 Therefore, one aspect of the ownership challenge derives from the difficulty in determining decisive authorial acts in AI-generated works, within a multi-stage and multi-agent algorithmic creative process, which, in turn, complicates the designation of the beneficiary of legal protection over these works: whose agent contribution that intervenes throughout the algorithmic creative process, and which type of creativity input (if any) are significant and decisive from a copyright law perspective, so that authorship and ownership are attributed respectively over the generated output?

Hartmann et al. n12, 28. See for instance Hartmann et al. n14, 78, where the form of human intervention may correspond to “the development of the AI software, the gathering and choice of training data, the drawing up of functional specifications, supervising the creative process, editing, curation, post-production, etc.” 59 Cf. the term ‘author of the author’ used by Bridy n4, 21, §51 for a programmer of an AI system that generates works. 60 Cf. Hartmann et al. n12, 20. 61 This also raises the question of whether authors’ rights over the works used as training material also extend to outputs produced by AI systems, after being trained on these works. See on that question, among others Giovanni Sartor, Francesca Lagioia and Giuseppe Contissa, ‘The use of copyrighted works by AI systems: Art works in the data mill’ [2018], available at: SSRN https://​papers​.ssrn​.com/​sol3/​papers​ .cfm​?abstract​_id​=​3264742 (accessed 1/6/2021). 62 See however from an EU law perspective Josef Drexl and others, ‘Artificial Intelligence and Intellectual Property Law – Position Statement of the Max Planck Institute for Innovation and Competition of 9 April 2021 on the Current Debate’ [2021]. Max Planck Institute for Innovation & Competition Research Paper No. 21-10, Available at SSRN: https://​ssrn​.com/​abstract​=3​ 822924 or http://​ dx​.doi​.org/​10​.2139/​ssrn​.3822924, (accessed 1/6/2021) 3, pts 1 and 2 and ibid. 6 ff. 63 Hartmann et al. n12, 23. 64 See Bonadio and McDonagh n46, 13. 57 58

Copyright ownership challenge  259 1.2

The Creative Autonomy of AI Systems

Certainly, plurality of creative contribution and agents within the creativity process of protected works is not a novel context for copyright law (e.g., the case of audiovisual works). However, the original aspect in AI-generated works resides in the fact that the origin of creative contribution may not be attributed to the human factor (with the difficulties described before) but may derive from the so-called ‘artificial creativity’ of the AI system. The first question that needs to be clarified is whether the exotic concepts of ‘artificial creativity’ or ‘artificial authorship’ are nothing more than unspoken faces of already known and old questions of authorship attribution that have been answered already before the appearance of AI-generated works. In other words, are AI-generated works truly machine-generated? In that regard, one could ask why an AI system cannot be perceived as a mere creative tool or as a mechanical amanuensis employed by a person who is involved in some way with the production of the artistic outcome. Indeed, the use of machines or devices in the creation of works of art is certainly nothing new. The participation of computers and computer software in the creation of a work does not affect the authorship attribution to the manipulator of the machine, to the extent that the machinery employed corresponds to a mere creative tool that has been driven by the author (programmer or user of the program65) and has been used as a medium of exteriorizing the author’s creative activity. The mere fact that the AI work is an automated output of a machine (similar to the click of a photographic machine) is not per se an indication of authorless outcome. Therefore, why don’t AI-generated works fall into the category of machine-assisted or machine-mediated works? The black box that underpins AI creativity The distinctive aspect of the answer on the above question resides in the existence of strong authorial characteristics to the machine itself, which are referred to as AI (creative) autonomy. In fact, the algorithmic creativity process implemented by some AI systems based on neural networks and deep learning techniques is highly complex, as it is based on processing of vast amounts of data and on unpredictable and/or inexplicable/unexplainable interconnections between thousands of artificial neurons. As a consequence, the output (AI-generated work) that is generated by the implementation of such system is possibly the fruit of creative decisions that are unexplainable66 and unpredictable/unforeseeable (but not accidental or random) even for the programmers of the system67 and, thus, these decisions could be characterized as being made by the system itself. This situation is known as ‘artificial intelligence black box’.68 In that

For the binary paradigm of computer-/software-mediated work, see Gervais n13, 2069. On the ‘explainability’ question related with AI systems, see Hartmann n12, 24. 67 See Gervais n13, 2070. 68 On this issue, see Bathaee n13, 892: “Put simply, this means that it may not be possible to truly understand how a trained AI program is arriving at its decisions or predictions”; and ibid. p. 897: “[…] deep neural network […] often involves the use of thousands of artificial neurons to learn from and process data. The complexity of these countless neurons and their interconnections makes it difficult, if not impossible, to determine precisely how decisions or predictions are being made”; Guadamuz n42, under 3.2., referring to Google’s AI system ‘Deep Dream’ (www​.deepdreamgenerator​.com): “Even the creators of Deep Dream do not know exactly what happens at all stages of the production of an image. They comment that the artificial intelligence is perfectly capable of making its own decisions about what elements to enhance, and this decision is entirely independent of human input”; Drexl n11, question no. 65 66

260  Research handbook on intellectual property and cultural heritage scenario, AI works of art are not simply machine-assisted (such as the present chapter which is created with use of computer software) or machine-mediated (such as photographic works that cannot exist without the apparatus mediation), but they are machine-generated, to the extent that authorial creative decisions do not originate from human agents but rely (partially or completely) upon the machine itself.69 In that regard, the novel aspect with AI-generated works is that, on some occasions, the mechanical nature characterizes not only the creative process but also the creative decisions, which are not driven (at least directly and consciously) by the human factor that programs or uses the AI system.70 Accordingly, this leads to the conclusion that human creativity is not simply mediated by the AI system.71 In these cases, the ‘mere tool threshold’ or, inversely, the ‘autonomy threshold’ has been crossed by the AI system.72 Therefore, the second aspect of the ownership challenge resides on the function of the AI system as creative agent itself. Is there a possibility that AI-generated works do not reflect any human agent’s authorial decisions? This question implies the assessment of human– machine interplay and the detection of a link (if any) between human intellectual effort73 and the machine’s authorial decisions that determine the AI-generated work,74 so that copyright ownership may subsequently be attributed to human (or human-controlled) agents, instead of denying protection.

2.

POSSIBLE RESPONSES TO THE COPYRIGHT OWNERSHIP CHALLENGE ARISING FROM AI-GENERATED WORKS

The Main Assumptions of Any Possible Response to the Ownership Challenge From a pragmatic point of view, the ownership challenge arising from AI-generated works may receive various responses, which, however, are probably finite and they may be classified according to the main assumptions adopted towards the grounds of the ownership challenge, as described above: (a) the de lege artis assumption related with the threshold of autonomy of AI systems that is used as a benchmark for formulating the response and, cumulatively, and (b) the de lege ferenda (policy-oriented) assumption related with the desirability75 of designat-

9; more generally for the topic of AI black boxes, Bathaee n13, 907: “To be sure, we may be able to tell what the AI’s overarching goal was, but black-box AI may do things in ways the creators of the AI may not understand or be able to predict.” Theoretically, explainability of the output would be possible through reverse engineering, see Bathaee n13, 906 and more hesitantly Drexl et al. n11, 10. 69 As Bridy (n4, 2) eloquently puts it, it is not about computers enabling people to produce art and other creative works, but people enabling computers to produce art and other creative works. 70 Cf. Guadamuz n42, 1: “We are getting to the point at which vital creative decisions are not made by humans, rather they are the expression of a computer learning by itself based on a set of parameters pre-determined by programmers.” 71 See Bridy n4, 25, §62 making reference to “radically mediated relationship”. 72 Gervais n13, 2069. 73 Hartmann et al. n12, 69ff. 74 Cf. Hartmann et al. n12, 8: “the core issue is whether the AI-assisted output is the result of human creative choices that are ‘expressed’ in the output.” 75 Cf. Ramalho n9, 10, where there is a mention of “the will to protect”; Gervais n15, 2072, mentioning the normative reasoning that “someone must own rights in the machine production if that production has (commercial) value”.

Copyright ownership challenge  261 ing (upon certain criteria) a determined involved agent in the algorithmic creative process as beneficiary of legal protection (subjective exclusive personal rights: copyright or related/sui generis rights) over AI-generated works76 – in other words, the desirability of privatization of AI-generated works (in contrast to public domain status77). An Explanation: Why full autonomy is a valid assumption Autonomy may commonly be defined as “the ability to make your own decisions about what to do rather than being influenced by someone else or told what to do”.78 In the AI art context, autonomy of the AI system would correspond to the ability of the machine to make decisions related to the creation and publication of a work, derived from information gathered by the AI system itself.79 It is argued that autonomy may be full or partial80, in variable degrees, depending on the level/degree of human involvement within the algorithmic creativity process. However, it seems more pertinent to us to understand AI autonomy in absolute terms and under a binary distinction between autonomous and non-autonomous AI systems.81 Therefore, for the purposes of this section, autonomous AI systems will be qualified as those systems whose operation would not be driven or determined by any human involvement and/or that would be deprived of any82 human input, at any stage of their lifecycle.83 Similarly, AI systems

76 This seem to be the assumption accepted by the European Parliament in its recent Resolution (n33), no. 15: “Takes the view that technical creations generated by AI technology must be protected under the IPR legal framework in order to encourage investment in this form of creation and improve legal certainty for citizens, businesses […]”. 77 See on that topic Ramalho n9, 2, referring to the “dialectic between privatization and public domain”. 78 See Collins Dictionary, entry “autonomy”, https://​www​.collinsdictionary​.com/​dictionary/​english/​ autonomy. 79 Cf. the definition in Gervais n13, 2098. 80 For this type of reasoning, Ramalho n9, 4–5: “Autonomy can be defined as a matter of scale, according to the level of human involvement, and not necessarily in the binary state autonomous-non autonomous”; OECD Artificial Intelligence in Society (OECD Publishing 2019), available at: https://​ www​.oecd​.org/​publications/​artificial​-intelligence​-in​-society​-eedfee77​-en​.htmhttps://​doi​.org/​10​.1787/​ eedfee77​-en (accessed 1/6/2021), chap. 1: “AI systems are designed to operate with varying levels of autonomy.” 81 Cf. in that sense Evan Zimmerman, ‘Machine Minds: Frontiers in Legal Personhood’ [2015] available at SSRN: https://​ssrn​.com/​abstract​=​2563965 or http://​dx​.doi​.org/​10​.2139/​ssrn​.2563965 (accessed 1/6/2021), 14: “Autonomous is a binary category; either something is or is not autonomous.” 82 In that sense, United States Copyright Office, Compendium of U.S. Copyright Office Practices, 3rd edition, Available at https://​www​.copyright​.gov/​comp3/​docs/​compendium​.pdf (accessed 1/6/2021), § 313.2. Adde Simon Chesterman, ‘Artificial Intelligence and the Limits of Legal Personality’ 69(4) [2020], International & Comparative Law Quarterly, 819–844 (2020), NUS Law Working Paper No. 2020/025, Available at SSRN: https://​ssrn​.com/​abstract​=3​ 682372 (accessed 1/6/2021), 19, mentioning that “the word ‘any’ is key”. 83 For a similar approach, see WIPO Conversation on Intellectual Property (IP) and Artificial Intelligence (AI), Second Session, ‘Revised Issues Paper on Intellectual Property Policy and Artificial Intelligence’, WIPO/IP/AI/2/GE/20/1, May 21, 2020, no 12, p. 4, distinguishing between works “generated autonomously by AI” (AI-generated works) and AI-assisted works (that involve human intervention and/or direction). Same distinction adopted by EU Parliament Resolution n31, no. 14.

262  Research handbook on intellectual property and cultural heritage that operate autonomously in some (and not all) stages of the algorithmic creative process would be considered as non-autonomous.84 AI autonomy depends on the evolution of state of the art in AI or robotics. As “nobody knows the future of AI”,85 it cannot be accurately predicted86 when (and, finally, if) full autonomous AI systems (separated from human data input87) will be developed and become a mainstream technology, similarly to the current data-driven AI. For the time being, it is accepted (at least in legal literature88) that completely autonomous creative AI systems are a rather futuristic scenario.89 In particular, it is argued that under the current state of the art, there will always be a degree (even remote) of human intervention or human input or decision-making at one or more stages of the algorithmic creative process.90 However, according to the current trends,91 it

84 We understand that one drawback of the adopted distinction resides in the fact that it considers the assessment of autonomous or non-autonomous character of an AI system as a given fact. This, however, may sometimes be a tricky one. Nonetheless, it serves the needs of a theoretical investigation of the AI output ownership challenge as the one intended in the present chapter. 85 Philip Boucher, European Parliament, Briefing European Parliamentary Research, ‘How artificial intelligence works’, [2019] Scientific Foresight Unit (STOA) PE 634.420, 10; Blagoj Delipetrev, Chrisa Tsinarakli and Uroš Kostić, ‘Historical Evolution of Artificial Intelligence’, [2020] EUR 30221 EN, Publications Office of the European Union, Luxembourg, 2020, 25. 86 See where the unpredictable nature of technological evolution is a reason for proactive legal preparation: Zimmerman, n81, 2–3: “Although computers may not become brilliant overnight, several observers of the field consider such a thing a serious possibility, and technology has shown itself to be unpredictable. Despite the quip that artificial intelligence is always ten years away, a breakthrough may be just around the corner, and the law should be prepared […].” 87 Rafael Brown, ‘Property Ownership and the Legal Personhood of Artificial Intelligence’, 30 [2021], Information & Communications Technology Law, Available at https://​www​.tandfonline​.com/​ doi/​pdf/​10​.1080/​13600834​.2020​.1861714​?needAccess​=​true) (accessed 1/6/2021), 234. 88 There are different approaches beyond legal literature, see already Ray Kurzweil, The Singularity Is Near: When Humans Transcend Biology (Penguin Books 2006), who places the appearance of autonomous AI systems in the mid-21st century. 89 In that regard, see e.g. David Nersessian and Ruben Mancha, ‘From Automation to Autonomy: Legal and Ethical Responsibility Gaps in Artificial Intelligence Innovation’, 27 [2020] Mich. Tech. L. Rev. 55 ff., Available at: https://​repository​.law​.umich​.edu/​mtlr/​vol27/​iss1/​3, (accessed 21/6/2021) 64–65: “[…] autonomous AI today remains far from the hypothetical broad AI—the one capable of completing numerous cognitive tasks and called artificial general intelligence (AGI)”; Hartmann et al. n14, 78 and 100, but more moderated in 116: “While AI systems have become – and will become – increasingly intelligent and autonomous, this Report nonetheless assumes that fully autonomous creation or invention by AI does not exist, and will not exist for the foreseeable future.” Contra F. Patrick Hubbard, ‘“Sophisticated Robots”: Balancing Liability, Regulation, and Innovation’, 66 [2015], Fla. L. Rev. 1803 ff., Available at: https://​scholarship​.law​.ufl​.edu/​flr/​vol66/​iss5/​1 (accessed 1/6/2021). Also, Bruce H. Cottman, ‘How close is GPT-3 to Artificial General Intelligence?’, [2021] available at: https://​ towardsdatascience​.com/​how​-close​-is​-gpt​-3​-to​-artificial​-general​-intelligence​-cb057a8c503d (accessed 17/6/2021) commenting on the Google’s GPT-3 AI system as being the first step towards AGI. 90 See from a machine learning perspective Drexl et al., n13, 10–11: “Even if models appear ‘intelligent’, they generate output by merely relying on probability calculations […]. They are not autonomous (i.e., they do not ‘reason’ on their own) and need to be fine-tuned by machine learning experts.” Also, Bonadio and McDonagh n48, 13, citing Arthur Miller, ‘Copyright Protection for Computer Programs, Databases, and Computer-Generated Works’, 5 [1993], Harvard Law Review, 977 ff., 1045: “there is a person ‘behind every robot’.” 91 It is argued that at the current rate, AI resembling adult human intelligence may be achieved within 50 years, Brown n87, 209. It is not clear however whether intelligence and autonomy will grow in parallel.

Copyright ownership challenge  263 Table 13.1

Possible combinations (cases) of adopted assumptions towards ownership challenge

Response premises Assumption A: Autonomy of AI System Assumption B: Desirability of Privatization

Case 1

Case 2

Case 3

Full

Full

Partial

Case 4 Partial

Not necessarily

Sine qua non

Not necessarily

Sine qua non

of AI-generated Works

is safe to foresee that in the short-term future AI will continue to grow92 towards what is called ‘strong AI’93 and that the direct role of the human factor in the algorithmic creative process is likely to become more and more distant.94 In fact, “the majority of researchers now agree that Strong AI will be developed, without consensus on when this will happen”.95 Therefore, it is worth,96 from a theoretical point of view, to anticipate the possible ownership responses in the scenario of full autonomy of AI Systems. As a consequence, the possible responses to the ownership challenge may be organized on the basis of the matrix shown in Table 13.1, from which the below possible five normative options may be derived.

92 Blagoj Delipetrev, Chrisa Tsinarakli and Uroš Kostić, Historical Evolution of Artificial Intelligence, [2020] EUR 30221 EN, Publications Office of the European Union, Luxembourg, 2020, 24. 93 See Hartmann et al. n12, 35: “‘strong AI’, also called ‘super intelligence’ or ‘artificial general intelligence’ (AGI), [intending] to achieve or exceed the intellectual abilities of humans.” Bonadio and McDonagh n46, 13. Cf. Boucher n87, 8, where the future approaches on AI include artificial general intelligence (AGI), “which refers to AI that is not limited to specific domains, but performs intelligently in a wide range of contexts and problem spaces”, artificial super intelligence (ASI), “which refers to AI with higher levels of general intelligence than typical humans”, and singularity, “which, in this context, refers to the moment where AI becomes intelligent and autonomous enough to generate even more intelligent and autonomous AI.” 94 Bonadio and McDonagh n46, 13. 95 Hartmann et al. n12, 35. In that sense also Brown n87, 211: “[…] news of an advanced machine-learning computer defeating humans in various fields including law, continue to push the discussion closer to the possibility of a strong AI.” More affirmatively, Madeleine de Cock Buning, ‘Artificial Intelligence and the Creative Industry: New Challenges for the EU Paradigm for Art and Technology by Autonomous Creation’, in Woodrow Barfield and Ugo Pagallo, Research Handbook on the Law of Artificial Intelligence, Edward Elgar 2018, 511 ff., 518. Cf. Bridy n4, 3, §5: “As the state of the art continues to advance in AI and related areas, however, we are moving incrementally but surely into an age of digital authorship, in which digital works (i.e., software programs) will, relatively autonomously, produce other works that are indistinguishable from works of human authorship.” 96 It is however argued that “there is no reason to desire the development of such a system that being more intelligent and capable than any human life form, and being also independent, could pursue its own intended ends” and if the production of full autonomous AI systems becomes technically possible, they “should be banned, for they would be intrinsically dangerous, materializing some of those dystopic accounts that might be derived from science fiction”, see Andrea Bertolini, ‘Artificial Intelligence and Civil Liability’, [2020], Study requested by the JURI Committee of the European Parliament, Policy Department for Citizens’ Rights and Constitutional Affairs, Directorate-General for Internal Policies PE 621.926, available at: https://​www​.europarl​.europa​.eu/​RegData/​etudes/​STUD/​2020/​621926/​IPOL​ _STU(2020)621926​_EN​.pdf (accessed 1/6/2021), 36.

264  Research handbook on intellectual property and cultural heritage 2.1

Possible Ownership Responses Under the Assumption of Fully Autonomous AI Systems

Option 1: No appropriation According to the traditional pattern of copyright protection and ownership that flows from human authorship, fully autonomous AI systems would be considered as factual ‘authors’ but would not be automatically qualified as authors in legal terms and, consequently, owners of copyright themselves. In fact, AI systems are nothing more than things deprived of legal personhood.97 This means that fully autonomous AI systems would necessarily generate non-copyrightable output,98 like in the case of works entirely ‘created’ by nature99 or animals.100 Therefore, if the privatization of these works is not a sine qua non condition,101 autonomously AI-generated works would be and remain in the public domain. This option has the merit that it is in line and harmony with the traditional human-centric approach towards authorship concept.102 Nonetheless, it raises the concern of the eventual rise of ‘AI ghostwriting’, since it might be tempting for human agents to claim copyright ownership as being the alleged creator of the AI-generated work themselves.103 97 In that regard, we agree with Carys Craig and Ian Kerr, ‘The Death of the AI Author’ [2019], Osgoode Legal Studies Research Paper, Available at SSRN: https://​ssrn​.com/​abstract​=​3374951 or http://​ dx​.doi​.org/​10​.2139/​ssrn​.3374951 (accessed 1/6/2021), 5, that the attribution of authorship does not depend on the evolution or state of the art in AI or robotics and the eventual (full) (factual) autonomy of AI systems would not automatically equate to legal authorship, given that the concept of authorship is inherently linked with human contribution. 98 See, for instance, Hartmann et al. n12, 70: “a production that is wholly generated by an AI system without any human intellectual effort is excluded from copyright protection.” [emphasis added]; Drexl et al. n62, 5, pt. 21: “Whereas output generated ‘autonomously’ by AI would clearly not be eligible for copyright protection […]”; Guadamuz n42, 5: “[…] there is no such thing as non-human intellectual property rights”. Also, US Copyright Office Compendium, n84, § 313.2: “[…] the Office will not register works produced by a machine or mere mechanical process that operates randomly or automatically without any creative input or intervention from a human author. [emphasis added]” 99 In that sense, Bonadio and McDonagh n46, 11. 100 Cf. US Copyright Office Compendium n82, § 313.2: “The U.S. Copyright Office will not register works produced by nature, animals, or plants. Likewise, the Office cannot register a work purportedly created by divine or supernatural beings, although the Office may register a work where the application or the deposit copy(ies) state that the work was inspired by a divine spirit.” 101 Cf. in that sense Ramalho n9, 20: “In the field of copyright, we should take this uncertainty as an opportunity to rethink rationales for privatization in general, and where to place AΙs creations in that equation specifically.” 102 In that sense, see indicatively Enrico Bonadio and Nicola Lucchi, ‘How Far Can Copyright Be Stretched? Framing the Debate on Whether New and Different Forms of Creativity Can Be Protected’, 2 [2019] Intellectual Property Quarterly, available at SSRN: https://​ssrn​.com/​abstract​=​3495223 (accessed 1/6/2021), 25–26: “such changes may include relaxing the (human) authorship requirement, which […] would probably sanction the evolution of the copyright system from the law of authors to the law of copyrightable works.”; Peter Mezei, ‘From Leonardo to the Next Rembrandt – The Need for AI-Pessimism in the Age of Algorithms’, [2020] available at SSRN: https://​ssrn​.com/​abstract​=3​ 592187, 3, and references cited therein. 103 See on that topic Anne Lauber-Rönsberg and Sven Hetmank, ‘The concept of authorship and inventorship under pressure: Does artificial intelligence shift paradigms?’ 14 [2019] Journal of Intellectual Property Law and Practice, 570, 577; Dornis, n13, 39 ff.; Cf. Bridy n4, 25, §62: “This is particularly true when the works in question can easily be mistaken for human output, and the temptation is therefore great to cut the corner and attribute them directly to a human agent.”

Copyright ownership challenge  265 Alternatively, if desirability of privatization is an upheld assumption even in the absence of human authorial contribution,104 two ownership responses would then be available in case of fully autonomous AI systems: the recognition of (legal) authorship and subsequent ownership of the AI-generated work in favor of the AI system itself, or, less radically, and in the absence of (human) authorship (due to full autonomy of the AI system),105 the recognition of a related or sui generis right106 to non-authorial agents (natural or legal persons). Option 2: ‘Electronic’ copyright An AI system is currently considered as a thing rather than as a person.107 The attribution of copyright authorship and ownership to an AI system presupposes the statutory recognition of legal personhood (‘electronic personality’,108 ‘electronic personhood’,109 ‘e-personhood’110 or (creative) machine personhood111) in favor of this category of agent. The attribution of the It is interesting to see that a gallery selling paintings created by elephants retains all copyrights on photographs of paintings, even though it is clearly précised that: “Elephants are sentient beings and quite capable of making real art. REAL Elephant art is an original painting that is created by an elephant of its own volition, unaided in the creative process by humans. The words ‘original’, ‘own volition’ and ‘unaided’ are all keys to what makes one painting a real work of art.” See www​.elephantgallery​.com and terms at: https://​elephantartgallery​.com/​pages/​terms​-of​-use (both accessed 1/6/2021). 104 And, of course, the “post-modern death of the author” is also an upheld assumption, see Bridy n4, 3, §5. 105 In the complete absence of proximity of any human intervention with AI-generated works, even at the stage of creative initiative and conception of the creative output, the attribution of copyright authorship or ownership in favor of a human agent could theoretically be still possible, by means of a fiction, but such construction is not recommendable, given that authorship (even fictitious) would logically require a minimal nexus or proximity between fictitious author and creative outcome (unless if authorship could ‘heretically’ be attributed on the basis of acts of mere dissemination of an existing work). See in that sense, commenting on the UK model of computer-generated works, Ramalho n9, 12: “In fact, the scale of autonomy of AIs seems to work in inversely proportionate terms to the applicability of the regime of computer generated works: the more autonomous the AIs, the less likely the applicability of the regime would be, due to the lack of human intervention.” See also Craig and Kerr n97, 21, criticizing the use of a fiction (work for hire doctrine) in case of fully autonomous AI-generated works in that it would be equivalent to the unfounded pretension that an AI system is (in some relevant respects) human. Adde e contrario AIPPI, Adopted Resolution, ‘2019 Study Question. Copyright in artificially generated works’, [2019], 2019 AIPPI World Congress – London, available at: https://​aippi​.org/​wp​-content/​uploads/​2020/​ 05/​Resolution​_Copyright​_in​_artificially​_generated​_works​_English​.pdf (accessed 1/6/2021): “AI generated works may be eligible for protection other than Copyright protection (as set forth in the RBC), even without human intervention.” 106 For simplicity, we adopt a generic approach towards ‘copyright-type rights’, beyond copyright and in contrast with public domain. For a similar approach, see AIPPI Resolution n105, no 4. This functional approach of the term ‘related rights’ seems to be adopted in art. 14 of EU Directive 2019/790. 107 For a critical perspective on the dualistic categorization thing/person, see Visa A.J. Kurki, ‘Why Things Can Hold Rights: Reconceptualizing the Legal Person’, in Visa A.J. Kurki and Tomasz Pietrzykowski (eds), Legal Personhood: Animals, Artificial Intelligence and the Unborn (Springer 2017), 69 ff. 108 EU Parliament, REPORT with recommendations to the Commission on Civil Law Rules on Robotics, (2015/2103(INL)) Committee on Legal Affairs Rapporteur: Mady Delvaux, No 59. 109 Bertolini n96. 110 Konstantions Amoiridis, ‘The timeline of e-personhood: a hasty assumption or a realistic challenge?’ [2019], available at: https://​www​.​maastricht​university​.nl/​blog/​2019/​04/​timeline​-e​-personhood​ -hasty​-assumption​-or​-realistic​-challenge (accessed 1/6/2021). 111 Zimmerman n81, 38.

266  Research handbook on intellectual property and cultural heritage legal status would entail, among others, that an AI system would be the subject of legal rights and duties on its own112 and, subsequently, the subject of copyright. Recognition of legal personhood in subjects (living or not living) beyond humans is not a novel legal (fictitious) construction.113 The determination of legal personhood categories is ultimately artificially established by law.114 In fact, there are few examples where legal personhood has been attributed to non-human (and non-living) persons, among which in natural sights, such as a river.115 However, as a general rule, personhood is a proxy for humanity.116 In the same vein, legal personhood is recognized in favor of non-human entities which are established by humans and are aggregations of human actors,117 namely, the legal persons. From a copyright law perspective, the recognition of ‘electronic copyright’ in favor of (fully) autonomous AI systems would have the merit of factual consistency, to the extent that it would associate factual and legal authorship over the generated work. However, the recognition of AI authorship and subsequent ownership would be incompatible with the existent rationales of copyright monopolistic protection118 as well as with the mere (anthropocentric) concept of authorship based on human creative contribution that underpins the current system.119 Besides, electronic personhood would be a concept with greater implications and consequences beyond copyright law,120 as it would especially affect the own liability regime of AI systems,121 among These are considered to be the ‘main pillars’ of legal personhood, see Brown n87, 215. Relevant is also the discussion around legal personhood and in particular legal standing of animals in order to defend their copyright over photographs, which has been triggered by the famous case “Monkey Selfie”. See in that regard, Naruto v. Slater, No. 16-15469 (9th Cir. 2018), p. 16: “Because animals do not possess cognizable interests, it stands to reason that they cannot bring suit in federal court in their own names to protect such interests unless Congress determines otherwise.” [emphasis added] 114 In an unfortunate similar way, in the past, some humans were not considered as persons, see ‘Introduction’, in Visa A.J. Kurki and Tomasz Pietrzykowski (eds), Legal Personhood: Animals, Artificial Intelligence and the Unborn, Springer 2017, vii, referring to slaves as being considered as objects of property. On that topic as well as on the fluidity of human personhood in general see Zimmerman n81, 23. 115 See the Te Awa Tupua Bill passed in 2017 in New Zealand, by which Whanganui River became the first river in the world to have legal personhood. See https://​www​.spacelegalissues​.com/​space​-law​ -the​-te​-awa​-tupua​-bill/​. On that topic, with focus on the right to own property by such non-human persons, see Brown n87, 224 ff. 116 Zimmerman n81, 32. Cf. Horst Eidenmüller, ‘Robots’ Legal Personality’, [2017], available at: https://​www​.law​.ox​.ac​.uk/​business​-law​-blog/​blog/​2017/​03/​robots​%E2​%80​%99​-legal​-personality (accessed 1/6/2021): “Legal personhood, one can argue, is tied to humans because only humans understand the meaning of rights and obligations.” Critical, Brown n89, 215, mentioning that the concept of personhood has been misapplied due a “tendency to give an anthropocentric philosophical view of legal personhood that approximates the concept to humanity”. 117 Chesterman n82, 819–844, under I. 118 See in that regard, among others, Ramalho n9, 13–14; Bridy n4, 26, § 66, referring to the problem “of vesting rights in a machine and ascribing to a machine the ability to respond to copyright’s incentives.” 119 On that topic, see Craig and Kerr n99, passim. In fact, recognition of AI authorship would put into question the notion of creativity, since algorithmic and human creative process would be equated, notwithstanding the procedural character of the former. See further Boucher n87, 7: “the semblance of understanding, imagination or creativity fades once the mechanisms are exposed as strictly procedural.” 120 See, among others, Ramalho n9, 13: “[…] copyright would be only a piece in the constellation of legal standing of AIs, and that the question brings about serious reflections on the broader consequences of affording legal personhood to machines.” 121 On that topic see Gervais n15, 2086–2087. 112 113

Copyright ownership challenge  267 other things. In that regard, it seems that AI authorship would not be the starting point of such personhood construction, but rather an (secondary or side) aspect thereof.122 In any event, however, e-personhood would trigger serious and profound philosophical, bioethical and sociological questions that need to be addressed and researched in depth, prior to any legal amendment.123 From a copyright law perspective, there is a concern that the recognition of AI authorship would compete with human authorship and eventually downgrade its value,124 especially if we consider that the exercise of AI copyright would (or should125) be agented by (non-author) humans (in a similar way with what happens today with legal persons).126 In that sense, AI authorship would simply be a Trojan horse against human authorship, let alone the implications on the qualification of copyright as a fundamental human right. Option 3: Sui generis/related right The recognition of protection in AI-generated ‘works’ could be achieved by the establishment of an ad hoc and separate category of subjective ‘copyright-type’ exclusive right. In (continental) copyright law, this is generally made through the establishment of related (neighboring) or sui generis rights,127 aiming at the protection of contributions beyond creativity128 but connected to some extent with creative outputs. Apart from related rights of artists and interpreters, the usual ‘raison d’être’ (justification/rationale) that underpins this category of techno-economical rights is the protection of investment129 and, so that the (exclusive) reaping

122 In that sense, Grimmelmann n33, 414: “But if that day ever comes [day of attribution of authorship quality in computers], it will because we have already made a decision in other areas of life and law to treat them as persons, and copyright law will fall in line.” 123 This topic is not new, see e.g., Lawrence B. Solum, ‘Legal Personhood for Artificial Intelligences’, 70 [1992], N.C. L. Rev., 1231. Available at: http://​scholarship​.law​.unc​.edu/​nclr/​vol70/​iss4/​4 (accessed 1/6/2021). 124 In that sense, Bonadio and McDonagh n46, 12: “AI creativity could threaten the value of human authorship”; Schönberger n3, 10: “Copyright protection for machine output would ignore the lack of semantic foundation and sooner or later destroy the human incentive to still invest in intellectual undertakings. Why should anyone still care to create and undergo all the pains and existential insecurities a creative process entails, if a machine – that naturally cannot know similar troubles – was treated the same?” Cf. in more general terms, Eidenmüller n116: “[T]reating robots like humans would dehumanise humans.” From a policy perspective, EU Parliament Resolution n31, no 13: “[…] considers, in this connection, that it would not be appropriate to seek to impart legal personality to AI technologies and points out the negative impact of such a possibility on incentives for human creators; […].” 125 See Brown n87, 234, it is imperative on humans to retain the control and ability to intervene with regards strong AI, in order to protect humanity against the unimaginable ways in which AI could exercise its will over humans. 126 In the topic of human agency for the exercise of property rights of non-humans, see Brown n87, passim. 127 In some jurisdictions, related rights may constitute a particular version of copyright regime, such as the copyright over “subject matter other than works” of Australian law. See Part IV—Copyright in subject‑matter other than works of Australian Copyright Act 1968. 128 Schönberger n3, 11, note no. 109. 129 Ramalho n9, 16. From an EU law perspective, see the investment deployed for the aggregation of data in order to construct a database for the EU sui generis right, technological investment of record producer for the respective producer’s right or investments and organizational and financial contribution of press publishers that justify the attribution of EU publisher’s right (Rec. 54–55 and art. 15 DSM Directive).

268  Research handbook on intellectual property and cultural heritage of the economic benefits deriving from protected (valuable) subject matter is safeguarded and production of such subject matter is accordingly incentivized and fostered. By means of such construction, an agent would be vested monopoly but not authorship with regards to AI-generated works. As a consequence, this solution presents the merit of supporting ‘purification’ of the copyright regime130 by avoiding overstretching or abusing copyright law’s concepts, such as authorship, while offering a copyright-type protection system. However, the establishment of a completely novel regime of a copyright-type right requires clear, balanced and substantiated justification of the object, the subject, the conditions (threshold) of protection, the scope of the attributed right131 and its duration, among other things. Apart from the general consideration that such normative decisions need in-depth and evidence-based analyses that would substantiate the need and utility of such right,132 there are some additional difficulties in the case of AI-generated works, which relate to the selection of an appropriate threshold of protection, that would (fictitiously) establish the necessary link between human investment and AI production, when human proximity would be ab initio excluded in case of fully autonomously AI-generated works. In that regard, in proximity with Kummer’s präsentationstheorie133 and with the specific EU related right on previously unpublished but unprotected works (art. 4 of the Directive 2006/116/EC of the European Parliament and of the Council of 12 December 2006 on the term of protection of copyright and certain related rights (codified version)134), the introduction of a ‘weak or contained’ ‘disseminator’s right’ has been proposed in order to incentivize or reward the person who brings an – unprotectable under copyright law – AI-generated work to the public.135 The appropriation-by-dissemination proposal is interesting; however, the establishment of a two-gear system of protection136 of many categories of subject matter that, prima facie, bear the same morphological and creative characteristics with human-created

130 Cf. Bernt Hugenholtz, ‘Neighbouring Rights are Obsolete’, 50 [2019], IIC 1006–1011, who critically mentions the argument according to which the introduction of neighboring rights “would discourage these intermediaries from contractually wresting the rights from the authors and artists.” 131 See in that regard Hugenholtz n132: “[…] if we grant [neighboring rights], we need to ensure that they come with a clear threshold criterion and corresponding rules of scope.” 132 See in that regard Germany responses on Public Consultation on AI and IP Policy, available at: https://​www​.wipo​.int/​export/​sites/​www/​about​-ip/​en/​artificial​_intelligence/​call​_for​_comments/​pdf/​ ms​_germany​.pdf, comment A 13: “Now it seems that AI has developed rapidly even without a protection system. This could indicate that a protection system is not necessary.” Also, the experience of the EU sui generis right on databases shall also be taken into account, see in that regard Julien Chicot and others, ‘Study in support of the evaluation of Directive 96/9/EC on the legal protection of databases’, [2018] Final Report. A study prepared for the European Commission DG Communications Networks, Content & Technology, available at: https://​op​.europa​.eu/​en/​publication​-detail/​-/​publication/​5e9c7a51​ -597c​-11e8​-ab41​-01aa75ed71a1; EC, Staff Working Document, ‘Evaluation of Directive 96/9/EC on the legal protection of databases’, [2018] SWD(2018) 146 final {SWD(2018) 147 final. 133 M. Kummer, Das urheberrechtliche schützbare werk, (Stämpfli 1968), 75 ff. and ibid 143ff. 134 OJ L372, pp. 12–18. 135 Ramalho n9, 17 ff. 136 Cf. the distinction between photographic works and photographs of German Copyright Law (art. 72 UhrG), which, however, is based on originality criterion and refers only to this category of work. Recital 16 and art. 6 of Directive 2006/116/EC of the European Parliament and of the Council of 12 December 2006 on the term of protection of copyright and certain related rights allowed for such disparate treatment of non-original photographs: “The protection of other photographs should be left to national law.”

Copyright ownership challenge  269 copyrightable works would be problematic from a dogmatic and practical approach.137 In fact, this would probably complicate the rights clearance process, as users would need to verify in the first place the human or machinic origin of the indistinguishable creative output and anticipate the respective protective regime. 2.2

Possible Ownership Responses Under the Assumption of Partially Autonomous AI Systems

In fact, partial autonomy is generally considered to characterize the current state of the art of creative AI systems, especially as it concerns creative control in the conception and dissemination stage of AI-generated works.138 The assumption of partially autonomous AI systems inherently implies the acceptance of human intervention or human input or decision-making or other contribution at one or more stages of the algorithmic creative process. In that case, ownership of AI-generated works may be attached to the human contribution, which is considered – factually or legally – as being decisive, from a normative point of view. In that case, human ownership of the AI-generated work could be connected with a human agent, whose contribution would normatively be considered as decisive or meriting (on the basis of a given rationale) the attribution of a subjective right (copyright or related right) over the creative output. Depending on the premise adopted towards the desirability of privatization, the following options are available. Option 4: Copyright ownership based on factual authorship Copyright ownership deriving from factual authorship is based on the assumption of existence of a human author of the AI-generated work. This option requires the definition of criteria of legally significant authorship. According to this human-centric approach of copyright protection, authorial contribution is based on a given threshold of creativity and/or intellectual effort that attributes originality in the work and shall be causally linked with the creative AI output. In that regard, authorship and, consequently, ownership will be case-dependent and could be attributed to one or more human agents involved in the creative algorithmic process (programmer/coder, data selector, trainer, etc.)139 and/or to an end-user who interacts with the machine. This option would be compatible and in harmony with the traditional pattern of ownership that flows from human authorship and with the human-centric approach of copyright authorship. However, its main drawback is that a case-by-case assessment of decisive authorial contribution and its origin would be required, according to national law standards, as applied by national courts. Following that, it is very probable that no uniform response could be offered

See on that topic Ramalho n9, 18. See Hartmann et al. n12, 81: “[…] the use of highly advanced AI systems in the production of cultural goods does not imply that human beings have totally surrendered their vital role in the creative process to machines. Whereas the human creator has been partly or largely replaced by the machine in the execution stage of creative production, their role in the conception stage remains essential, while their role in the redaction stage may have become even more important than before – given that many AI-assisted outputs will probably require more redactional work than rough drafts produced by human beings. This leaves both the design choices in the conception phase, some calibration in the execution phase, and the editing and post-production choices at the redaction phase for human authors.” 139 For this categorization of human agents in the upstream algorithmic creative process, see Bonadio and McDonagh n46, 13. 137 138

270  Research handbook on intellectual property and cultural heritage with regards ownership of AI-generated work and, consequently, legal certainty as to the copyrightability of AI-generated works would be jeopardized, especially in a trans-border scale. Of course, this legal certainty deficit could be attenuated by the elaboration of some concrete criteria for detecting factual authorship especially for AI-generated works.140 Besides, under this option, the establishment of a creative causal link between human agent and output may not be safeguarded in all cases (e.g., in cases where the only human input is a simple selection of AI output), meaning that AI-generated works could remain unprotected, in case that human authorship detection fails. As a consequence, this option could not be retained in case that the desirability of privatization is a sine qua non assumption towards the AI-generated works ownership challenge. Option 5: Copyright or related right141 ownership based on fictitious authorship Copyright ownership could still flow from authorship, but as an alternative to the factual-based authorship, authorship, and, subsequently, ownership could vest by means of a legal fiction. Fictitious authorship would bypass factual authorship and its shortcomings, by horizontally determining the nature of contribution or nexus that is deemed to be authorial in the case of AI-generated works. Subsequently, fictitious authorship would indicate the human agent who is deemed to be responsible for this contribution, even in cases where (human) authorship-in-fact is difficult to be detected and/or established. Depending on the type of rationale used in order to justify copyright protection, there are several criteria that could be used in order to determine fictitious copyright authorship and ownership. In particular, fictitious authorship could derive either from genuine creative contributions (e.g., coding) or from non-creative contributions, such as initiative142 or arrangement of creative process, investment. Moreover, a fictitious author could be either a physical or legal person. Existing fictitious authorship models might be possibly relevant for the AI-generated works regime, such as the fiction of ‘computer-generated works’ provided for in UK copyright law143 and some common law jurisdictions144 (authorship/ownership in favor of the person who undertook the arrange-

140 Cf. EU Parliament Resolution n11: “The explanatory statement accompanying the Resolution clarifies in that context that ‘the elaboration of criteria’ for ‘own intellectual creation’ for copyrightable works produced by computers or robots is demanded.” From a Greek copyright law perspective see Theodoros Chiou, ‘Artificial Intelligence and Copyright law: who owns machine-generated creations?’, 2 [2020] DITE, 200 ff. and in particular §57. 141 See that expression in EC Communication, ‘Artificial Intelligence for Europe’, n31, 15, fn52. 142 See for instance Nina I. Brown, ‘Artificial Authors: A Case For Copyright In Computer-Generated Works’, 2 [2019], Science and Technology Law Review, available at: https://​doi​.org/​10​.7916/​stlr​.v20i1​ .4766234 (accessed 1/6/2021), 38ff., arguing for authorship fiction in favor of end-users, on the basis of ‘fixation’ of AI-generated work. 143 Section 9(3) of the UK Copyright, Designs and Patents Act (CDPA) [1988]: “In the case of a literary, dramatic, musical or artistic work which is computer-generated, the author shall be taken to be the person by whom the arrangements necessary for the creation of the work are undertaken.” In addition, according to CDPA s. 78(2) (c) and s.81(2), protection of computer-generated works does not entail moral rights. In favor of this model, see among others, Guadamuz n44. For a broader overview, see Jyh-An Lee, ‘Computer-Generated works under CDPA 1988’, in Reto Hilty, Jyh-An Lee and Kung-Chung Liu, Artificial Intelligence and Intellectual Property, Oxford University Press 2021, 177ff. 144 See section 21(f) of Irish Copyright Act [2000], section 5(2)(a) of New Zealand’s Copyright Act, section 1(1)(h) of South Africa’s Copyright Act [1978] and section 2(d)(vi) of India’s Copyright Act [1957].

Copyright ownership challenge  271 ments necessary for the creation of the work145), the fiction introduced under the ‘work for hire doctrine’ of US copyright law146 (authorship/ownership in favor of the employer or commissioner of the work) or the fictitious authorship in favor of the disseminator of the work.147 Fictitious attribution of authorship and, subsequently, ownership has the merit of promoting legal certainty and efficiency around the regime of AI-generated works, as the conundrum of factual authorship is bypassed, and a uniform (protective and predefined) response is offered under any factual circumstances. Therefore, this option would satisfy the privatization assumption towards AI-generated works challenge. However, beyond difficulties that may probably arise with regards the detection of the fictitious author, depending on the authorship criteria used,148 this fiction would be by definition in conflict with the principle of true (factual) author. As a consequence, it might not be compatible with droit d’auteur approach,149 especially if fictitious authorship is determined on the basis of non-creative criteria (such as investment) and is offered also in favor of legal persons.150 Alternatively, legal fiction could also be a component of a copyright-based protective regime that is not based on the concept of authorship, such as related or sui generis right. In that regard, the legal fiction would determine the human agent (natural or legal person) that would be considered as fulfilling the threshold of protection, be it proximity, investment or arrangement.151 Regarding this solution, the concerns expressed above would equally apply,152 except from those related with human proximity. In addition to that, such solution would have the merit of being adaptable under both droit d’auteur and copyright jurisdictions, as it would not affect the concept of authorship.

145 Cf. Guadamuz n42, under no. 5, referring to the “person who made possible the creation of procedural automated works.” 146 See 17 U.S.C. § 101 and 17 U.S.C. § 201(b). In favor of this model, Bridy n4, 26, § 66. 147 In that regard see the fiction of art. 11 § 1 of Greek Copyright Act (Law No 2121/1993): “Any person who lawfully makes available to the public anonymous or pseudonymous works is deemed as the initial holder of the economic and moral right towards third parties.” Similar approach seems to be suggested by Committee on Legal Affairs of the EU Parliament, (Rapporteur: Stéphane Séjourné), Draft Report, ‘On intellectual property rights for the development of artificial intelligence technologies’ [2020], (2020/2015(INI)), No 10: “Takes the view that consideration must be given to protecting technical and artistic creations generated by AI, in order to encourage this form of creation; considers that certain works generated by AI can be regarded as equivalent to intellectual works and could therefore be protected by copyright; recommends that ownership of rights be assigned to the person who prepares and publishes a work lawfully, provided that the technology designer has not expressly reserved the right to use the work in that way.” 148 See in that regard the critical comments on the UK model in Ramalho n9, 11. 149 See in that sense, Schönberger n3, 10: “The ‘work-made-for-hire’ doctrine as a door to entry suggested by BRIDY, as well as the UK statute law position, are in stark contrast to any system based on a droit moral understanding. Without a radical policy shift such ideas are not reconcilable with the majority of European national systems.” 150 Cf. in that sense Grimmelmann n33, 415: “For all present practical purposes, new copyright doctrines for computer-generated works are a terrible idea.” 151 In favor of this solution, Bonadio and McDonagh n46, 12 ff., with the argument of it being “a compromise against corporate will to obtain full copyright over AI creations.” 152 See §25 ff.

272  Research handbook on intellectual property and cultural heritage Table 13.2 Response

Taxonomy of available options of response towards ownership challenge, as parameterized on the basis of the assumptions adopted Case 1

Case 2

Case 3

Case 4

Full

Full

Partial

Partial

Not necessarily

Sine qua non

Not

Sine qua non

premises Assumption A: Autonomy of AI system Assumption B:

necessarily

Desirability of Privatization of AI-generated works Available options

1. No protection/

2. E-

3. Sui generis/

Public domain

personhood

related right

/‘Electronic’ copyright

4. Copyright 5a. Copyright

5b. Sui generis/

ownership

ownership

related right

based on

based on

based on fictitious

factual

fictitious

threshold of

authorship

authorship

protection

3. CONCLUSION In light of the above analysis, it seems that ownership of AI-generated works is a real challenge for the current copyright regime that possibly leads to the reconsideration of foundational concepts such as creativity and authorship. That ownership challenge may receive different responses, depending on the assumptions adopted towards AI autonomy and desirability of privatization, which can be summarized as illustrated in Table 13.2. The adoption of a response towards the ownership challenge seems to imply the examination of a third implicit assumption, which refers to the time factor and, in particular, whether the response is intended to face the ownership challenge in the short or long run, or, to put it differently, in terms of current or future AI. From a methodological point of view, a global approach and discussion towards and around the ownership challenge is certainly preferable, given the global character of AI art development and impact on copyright law.153 Additionally, previous experience from digital challenge teaches that the ‘same deadly siren song’154 of new technologies shall be rationally and prudently faced, without romanticism, by with strong dogmatic legal reasoning, given that desirability of privatization of AI-generated works (Case 2 and 4) seems to require more profound manipulation of the current author-centric approach of copyright law. In sum, the ownership challenge related with AI-generated works is in the first place an authorship challenge. Therefore, the discussion around the response towards this challenge is primarily a discussion about the future of copyright law. AI challenge shall thus be seen as an opportunity to globally reiterate and enhance the human-centric approach of copyright law, by prioritizing the satisfaction of the human author’s interests over the mere desirability of

See in that regard, AIPPI Resolution n107, No. 5. Grimmelmann n33, 416.

153 154

Copyright ownership challenge  273 privatization of AI-generated works under any circumstances, so that copyright law remains the author’s right in the 21st century and beyond.

PART II POLITICS AND POLICIES ASSOCIATED WITH PROTECTING CULTURAL HERITAGE BY IPRS

14. States’ discretion to classify IP subject matter as national cultural treasures Maria-Daphne Papadopoulou and Maria G. Sinanidou

INTRODUCTION Which would be the interference, the interrelationship, the concordance or even the confrontation between intellectual property (hereinafter IP) and cultural heritage? Looking more deeply at this problem, how should these concepts be realized in relation to the discretion afforded to states to classify their own national treasures if such a classification could involve IP and, foremost, copyright-protected subject matter? IP refers to the creations of the mind and aims to foster creativity and innovation, while copyright law constitutes the grounds on which authors and holders of related rights (shall) receive the reward in both economic and moral parameters that they deserve for their intellectual creations. Through the generous sharing of their creative expressions as formed with their ‘personal touch’1 and through the establishment of a solid legal system under which they are granted with absolute and exclusive rights over their works and other subject matters of protection, authors and rightsholders in general are contributing to the formulation of our cultural identity and to the enrichment of our cultural heritage through the passage of time. On the other hand, states have the right and the discretion to determine their national treasures in order to preserve their historical, social and cultural character and continuity. Although this is usually aligned to the prevention of illegally exported and to the restitution of cultural objects, it should not be deemed restrictively since it could also entail IP content. Providing for the basic pillars of our chapter, the definition of the term ‘national treasures’ comes first. More precisely, states apply a number of criteria which had been respectively established under different legal instruments in the area both at EU and international level. The main focus will be placed on Article 36 of the Treaty on the Functioning of the European

1 This rather poetic element of originality as the sole prerequisite for copyright protection had been determined by the Court of Justice of the European Union (CJEU) in the Painer case; Case C-145/10 Eva-Maria Painer v Standard VerlagsGmbH and Others [2011] ECR I-12533, para 92. The ‘originality’ threshold had been defined by the CJEU in a number of landmark decisions indicatively stating those at Infopaq case; Case C‑5/08 Infopaq International A/S v DanskeDagbladesForening [2019] ECR I-6569, at the Joined cases C-403/08 Football Association Premier League Ltd and Others v QC Leisure and Others and C-429/08 Karen Murphy v Media Protection Services Ltd [2011] ECR I-09083 and at the Football Dataco case; Case C-604/10 Football Dataco Ltd etc. v Yahoo! UK Ltd etc. [2012] ECLI:​EU:​ C:​2012:​115. It is briefly stated herein that the Court had dictated that a work is protected by copyright law insofar as it is original, meaning that it consists of the author’s own intellectual creation; It had been further clarified that such a creation shall reflect the author’s ‘personality’ and that this is the case if the author had been able to express their creative abilities in the production of the work by making free and creative choices stamping as such the work with their personal touch.

275

276  Research handbook on intellectual property and cultural heritage Union (TFEU) and on the Directive 2014/60/EU,2 since the national treasures’ exception constitutes a derogation from the fundamental principle of free movement of goods. Moreover, the classification of national cultural treasures may involve works which are still protected under copyright law (and IP subject matter in general) impinging as such on the exercise of exclusive rights that consists in more general terms of an intervention to the personal sphere of individuals. Consequently, the problem arising starts from the exploration of the state’s right to limit the monopoly afforded to IP and foremost to copyright holders by imposing to them additional burdens or even by expropriating a work in order to be classified as a national treasure. Following the mapping of this justified (?) interference, its edge limits are then investigated, implying the balance that should be achieved between, on the one hand, human rights as inalienable individual rights and, on the other hand, the general public interest. Could a state alienate copyright and related rightsholders from their rights in the name of the preservation of cultural heritage? Furthermore, under which conditions could such an interference take place? These questions will be explored in relation to the acquis communautaire and the conclusions that can be reached therefrom. In addition, it had been clearly dictated by the Court of Justice of the EU (CJEU) that Article 36 TFEU cannot be relied on to justify any derogations from the harmonized EU regime, while the EU human rights law is profoundly applicable in this field with regard to the implication of the fundamental rights to property and to the enjoyment of possession as they will be analyzed. Lastly, we will shed some light on national experiences. These cases provide for an insight of the approach followed by national institutional and judicial authorities in relation to the circulation and overall exploitation of works and cultural objects in general. Our aim is to build upon the existing thrust of thinking and to contribute to the debate on where the borderline should be drawn between private sphere and collective interest as aligned to the notions of ‘control of use’ or ‘deprivation’ of property that could also refer to IP. Although the prevalence of public interest seems self-evident, this shall not go without question and in any case with no limits. As a result, we argue that it must be ensured that copyright will not be excessively inflected, and that such an inflection will be appropriately restored. After all, if there is no copyright, or even if its exercise could be challenged with no appropriate safeguards, there will be no national treasures in the future.

THE LEGAL STATUS QUO OF CULTURAL PROPERTY AND THE INTERRELATION BETWEEN CULTURE, TRADE AND OVERALL MOVEMENT Cultural heritage and subsequently ownership and overall management of cultural goods are regulated by international treaties, EU law and national rules, which provide for rather differentiated forms and definitions. Although signifying a common objective – that of protection and safeguarding of cultural heritage – the instruments adopted display disparities, which are reflected when private and public international law is applicable, as in restitution claims.3 2 Directive 2014/60/EU on the return of cultural objects unlawfully removed from the territory of a Member State and amending Regulation (EU) No 1024/2012 (Recast)OJ L 159. 3 Guido Carducci, ‘The 1972 World Heritage Convention in the Framework of other UNESCO Conventions on Cultural Heritage’, in Francesco Francioni (ed.) The 1972 World Heritage Convention: A Commentary, (Oxford University Press 2008) 364.

States’ discretion to classify IP subject matter  277 The issue of illicit trafficking, return and restitution of cultural property has been addressed at international level by a number of benchmark instruments, while a number of resolutions have been also adopted by the United Nations General Assembly.4 Among these instruments, the 1970 UNESCO Convention on the Means of Prohibiting and Preventing the Illicit Import, Export and Transfer of Ownership of Cultural Property provides for a common framework for states parties to take measures addressed to the objectives indicated by its own title, further entailing the return of classified cultural property. It had been characterized as a ‘great step forward’ affording, among others, a “privileged status to cultural objects,”5 while it also provided for a uniform system for their classification. According to the definition provided under Article 1 of this Convention, cultural property means “property which, on religious or secular grounds, is specifically designated by each state as being of importance for archaeology, prehistory, history, literature, art or science.” Among the categories that such a property may fall within, property of ‘artistic interest’ is also explicitly included, being further analyzed among others to “(i) pictures, paintings and drawings produced entirely by hand on any support and in any material (excluding industrial designs and manufactured articles decorated by hand); (ii) original works of statuary art and sculpture in any material; (iii) original engravings, prints and lithographs; and (iv) original artistic assemblages and montages in any material.”6 Moreover, cultural property – as a part of a state’s cultural heritage – shall not only be construed as the property created by the individual or collective genius of nationals of the state concerned, but it also entails the ‘property of importance’ to that state that is created within its territory “by foreign nationals or stateless persons resident within such territory.” The same definition of cultural property is also adopted by the 1995 UNIDROIT Convention on stolen or illegally exported cultural objects (1995, Rome), which primarily regulates the private property rights of the original owner of a cultural object as well as of innocent buyers. Despite its complementarity to the 1970 Convention character, the UNIDROIT Convention displays a number of differences to the latter, the most significant of which is the expansion of its scope of application in order to cover not only stolen but also illicitly exported cultural objects. Culture in the broad sense is linked to the concepts of ‘circulation’ and ‘trade’. The said instruments as well as other treaties in the area such as the 1954 Convention and its two Protocols7 focus on the prevention, the prohibition and the dealing with illicit cross-border circulation of cultural objects, establishing restitution obligations for states parties at international level. The aim of these initiatives was the protection and the safeguarding of nations’ cultural heritage. Briefly setting the relevant framework, the General Agreement on Tariffs and Trade (GATT) established the obligation for World Trade Organization (WTO) members to provide for the principles of national treatment and of the most-favored-nation to cultural goods without having the right to impose any quantitative restrictions on them. 4 More at the following link: , as well as at which refers to the relevant action of UNESCO, accessed 11 May 2021. 5 Explanatory Report on the UNIDROIT Convention on Stolen or Illegally Exported Cultural Objects, p.  478 (accessed 12 May 2021). 6 See the relevant provision at the following link: (accessed 13 May 2021). 7 1954 Hague Convention for the Protection of Cultural Property in the Event of Armed Conflict; First Protocol (1954) and Second Protocol (1999) to the Convention.

278  Research handbook on intellectual property and cultural heritage Broadening the picture to the connection between cultural goods and their cross-border circulation, the provision of Article 8 of the UNESCO Declaration on Cultural Diversity8 is noteworthy, since it dictates that cultural goods and services consist of commodities of a unique kind and shall not be treated as consumer goods. The said objective is found almost under the same wording under Directive 2019/790/EU.9 Of course, the need to reach an appropriate equilibrium between diverging rights and interests is reflected in numerous legal initiatives and relevant actions.

THE ‘NATIONAL TREASURES’ EXCEPTION AND THE WAY TOWARDS THE ADOPTION OF DIRECTIVE 2014/60/EU The way the Parthenon lost its Marbles and the systematic actions that Greece undertakes for their return home consist of one of the most famous incidents of illicit export of cultural heritage. The recognition of the right of member states to preserve the traces of their historical background and cultural identity led to a derogation from the axiom of free movement of goods within the Union that was established under Article 30 of the Treaty of Rome (EEC).10 In particular, Article 36 TFEU (ex Article 30 TEC) provided among others that national treasures possessing artistic, historic or archaeological value should be subject to a special regime allowing as such member states to provide for prohibitions or restrictions in relation to their circulation. At national level, the protection of cultural heritage was achieved through the establishment of legal instruments devoted to the prohibition of export of national treasures from their territories; however, the term ‘national treasures’ displayed great disparities between member states,11 highlighting their distinct cultural policies and traditions.12 On the other hand, the approach of the EU towards this discretion of member states was more ‘restrictive’ as stemming from the rejection of the Draft Proposal of Directive 92/280/EC that allowed member states to define their protected cultural heritage in the manner they could consider as appropriate,13 namely in a broad manner.14 The Directive finally adopted listed 8 See accessed 13 May 2021. 9 Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the Digital Single Market and amending Directives 96/9/EC and 2001/29/ EC OJ L 130. 10 1957 Treaty establishing the European Economic Community (EEC). 11 Christopher Jernigan, ‘Protecting National Treasures in a Single-Market EC’ (1994) 17 B.C. Int'l & Comp. L. Rev. 153, 155–156. See a full analysis of the legal instruments adopted by member states and of the definitions provided therefrom as related among others to national treasures in the Study on preventing and fighting illicit trafficking in cultural goods in the European Union by the CECOJI-CNRS – UMR 6224 Contract No. Home/2009/ISEC/PR/019-A2 Annex Final Report [2011], Annex I accessed 28 May 2021. 12 Ibid. 13 Irini Stamatoudi, Cultural Property Law and Restitution: A Commentary to International Conventions and European Union Law (Edward Elgar Publishing 2011) 131. 14 This could also be regarded as an expression (even at EU level) of the movement of cultural property internationalism that is based upon the contribution of each people to the ‘culture of the world’ as stated by the 1954 Convention. Cultural property internationalism proposes that “everyone has an interest in the preservation and enjoyment of cultural property, wherever it is situated, from whatever cultural

States’ discretion to classify IP subject matter  279 national treasures by entailing the definition provided under the EEC, while it also contained an Annex that provided for 14 categories of protected items on the basis of their age and monetary value.15 This ‘restrictive’ attitude, though, was about to be changed with the adoption of Directive 2014/60/EU. At the same time, national cultural property forms a piece of the puzzle of the EU’s common cultural heritage. The TFEU explicitly refers to the desired elimination of “barriers that divide Europe.” The free movement of persons, services, capital and goods consists of the foundation of a closer union between EU citizens, further addressing the need to strengthen the unity of the economies of member states and to contribute to the progressive abolition of restrictions on international trade.16 Article 34 (ex Article 28 TEC) and Article 35 (ex Article 29 TEC) TFEU provide those quantitative restrictions on imports and exports, and all measures having equivalent effect in both cases shall be prohibited between member states. However, Article 36 TFEU provides for an exception to this clear prohibition, which explicitly entails “national treasures possessing artistic, historic or archaeological value.”17 In parallel, though, it is also explicitly provided that even in this case such prohibitions or restrictions on imports, exports or goods in transit shall not constitute a means of arbitrary discrimination or a disguised restriction on trade between member states. As analyzed in the relevant Commission Notice providing for Guides for Articles 35 and 36 TFEU,18 such quantitative restrictions can be justified only upon the reasons of public interest established under Article 36. In addition, they shall follow the principle of appropriateness and shall not exceed further from the objective pursued under the Treaty. In addition, member states cannot derogate from harmonized EU rules, while in cases of partial harmonization they may be explicitly allowed to maintain or adopt stricter measures, which are subject though to the prerequisite of their compatibility with EU law. In any case, the CJEU has the last word in terms of the member states’ compliance with the obligations set out by the EU legislator. Focusing on the implementation in practice of Article 36 TFEU, the Union legislature recognized the need to introduce simple and efficient arrangements to enable member states to “secure the return to their territory of cultural objects which are classified as national treasures within the meaning of the said Article 36” and had been unlawfully removed from their territory. These objectives were realized with the adoption of Directive 93/7/EEC. The recovery system established under this Directive intended to strengthen the position of member states in preserving their cultural heritage without intervening, though, on the means through which each nation could make use of the national treasures exception.19 or geographical source it derives”. Read more at John H. Merryman, ‘Cultural Property Internationalism’ (2005) 12.01 International Journal of Cultural Property 11, 39. 15 Supra n 13, p. 159. 16 As it had been stated among others in the Preamble of the TFEU. 17 The wording of Article 36 TFEU reads as follows: “The provisions of Articles 34 and 35 shall not preclude prohibitions or restrictions on imports, exports or goods in transit justified on grounds of public morality, public policy or public security; the protection of health and life of humans, animals or plants; the protection of national treasures possessing artistic, historic or archaeological value; or the protection of industrial and commercial property. Such prohibitions or restrictions shall not, however, constitute a means of arbitrary discrimination or a disguised restriction on trade between Member States.” 18 Commission Notice: Guide on Articles 34–36 TFEU https://​eur​-lex​.europa​.eu/​legal​-content/​EN/​ TXT/​PDF/​?uri​=​CELEX:​52021XC0323(03)​&​from​=​EN accessed 14 May 2021. 19 Commission of the European Communities, Second report on the application of Council Directive 93/7/EEC on the return of cultural objects unlawfully removed from the territory of a Member State, COM (2005) 675 final OJ L 74, pp. 3, 8.

280  Research handbook on intellectual property and cultural heritage However, the effectiveness of this Directive was considered limited due among others to the ‘strict eligibility criteria’ for cultural objects to fall within its scope of application that were further analyzed to the categories of objects provided under the said Annex20 and other financial and age prerequisites.21 As a result, a revision process was initiated that led to the adoption of Directive 2014/60/EU. One of the most significant differences between these two legal instruments refers to the expansion of the scope of the latter to cover “any cultural object classified or defined by a Member State under national legislation or administrative procedures as a national treasure possessing artistic, historic or archaeological value within the meaning of Article 36 TFEU.”22 Directive 2014/60/EU had established a new and rather improved legal framework at EU level aiming at ensuring the return of cultural objects within the EU. For this reason, it addressed the national treasures exception by extending its scope to all cultural objects which had been classified or defined as such by the national legislator. Recital (10) of Directive 2014/60/EU explicitly states that Article 36 TFEU recognizes (emphasis added) the diversity of national arrangements for protecting national treasures. It could be said that the use of this verb implies that the EU legislator accepts this states’ freedom and sovereignty. However, it then follows that the scope of the term ‘national treasures’ should be determined in the framework of Article 36 TFEU, and this provision allows for a derogation from the rule of free movement of goods within the Union only in certain cases. As a result, it is argued that national treasures should be defined as narrowly as possible. Complementary to this approach, it had been argued that these derogations should rely upon a causality test, meaning that they should be directly linked to the protection of national treasures,23 and that they should run in alliance with the principle of proportionality. According to the relevant argumentation, this does not undermine the protection of cultural heritage but only prevents ‘exploitative practices’ from member states.24 Moreover, in cases where the object (to be) classified as a national treasure is still falling within the term of IP and foremost copyright protection, this right of a state as aligned to the preservation of national treasures under the public interest interferes in the personal sphere of the respective rightsholders. As already stated above, especially in terms of copyright, its interrelation and interference with other fundamental rights and freedoms such as freedom

20 According to Article 1(1) of the Directive 93/7/EEC “‘cultural object’ shall mean an object which is classified, before or after its unlawful removal from the territory of a Member State, among the ‘national treasures possessing artistic, historic or archaeological value’ under national legislation or administrative procedures within the meaning of Article 36 of the Treaty, and belongs to one of the categories listed in the Annex or does not belong to one of these categories but forms an integral part of public collections listed in the inventories of museums, archives or libraries’ conservation collection.” 21 Maciej Górka, ‘Directive 2014/60/EU: A New Legal Framework for Ensuring the Return of Cultural Objects within the European Union’ (2016) (2) Santander Art and Culture Law Review 29, 30. 22 Directive 2014/60/EU, Recital 9. Consequently, it is provided thereto that the Directive covers “objects of historical, paleontological, ethnographic, numismatic interest or scientific value, whether or not they form part of public or other collections or are single items, and whether they originate from regular or clandestine excavations, provided that they are classified or defined as national treasures.” 23 Supra n 21, p. 45. 24 Sabrina Ferrazzi, ‘EU National Treasures and the Quest for a Definition’ (2019) 2 Santander Art and Culture Law Review 72.

States’ discretion to classify IP subject matter  281 of expression and of access to information25 consist of an equation in both theoretical and practical terms which is indisputably difficult to resolve. Since it consists of a separate issue of major significance that exceeds the scope of this chapter, the said reference is limited to the recalling of the widely recognized emergence of the human rights framework within the EU for copyright and in general IP systems.26 In this regard, the question that needs to be answered refers to whether member states are entitled to limit the rights of IP and in particular copyright owners within the framework of their discretion to define or classify their national treasures. If the answer to this question is affirmative, what could/should then be the limit of such an interference?

INTERNATIONAL INSTRUMENTS AND EU LAW Approaching the Core in Terms of Copyright Provided that national treasures refer to articles of artistic, historic or archaeological value, it is profoundly copyright – as related to the first aspect of the said criterion – that may be most often triggered when a state exercises its freedom to classify or define its own national treasures, although other industrial property rights such as that over industrial designs could also be respectively implied. For this reason and since it is impossible to cover the IP regime in its entirety, the focus will be placed upon copyright-protected content. Copyright law does not provide for any exception or limitation to the exercise of economic rights in relation to national treasures. In principle, no such limits – in relation to the classification or the definition of national treasures – are provided by IP law since the core of this issue does not refer to rightsholders but instead to the extent of the right of a state to invade the IP regime, having as such the right to prohibit the export and in general to restrict the movement of objects which may be still protected by copyright and IP law. Before moving to this states’ right, as it is inexorably intertwined with the relevant right to interfere with the right to property, we shall bear in mind that this interconnection between

25 In this regard, the judgment of the European Court of Human Rights (ECHR) in the case Ashby Donald and others v. France App no 36769/08 (ECHR, 10 April 2013) should only indicatively be cited in this regard, thus consisting of the first case where the ECHR held that a conviction based on copyright law for illegally reproducing or publicly communicating copyright-protected material can be regarded as an interference with the right of freedom of expression and information under Article 10 (freedom of expression) of the European Convention on Human Rights, further stating that “any judicial decision based on copyright law and restricting persons’ freedom of expression must be motivated as being necessary in a democratic society, apart from being prescribed by law and pursuing a legitimate aim.” Read more about the conflict between copyright and freedom of expression on the basis of an analysis of the case law of the Strasbourg Court, including this significant judgment, at Maria-Daphne Papadopoulou, ‘Freedom and expression and copyright: Two rights on conflict (?), Comment on the Decisions of the ECHR, Ashby Donald and others v. France and Neij and SundeKolmisoppi v. Sweden’ (2013) 1 DIMEE 98. 26 This is, among others, demonstrated by the “increasing involvement” of the ECHR in IP law disputes and overall regulation. Read more about this issue on the grounds of an analysis of the Court’s case law at Christophe Geiger and Elena Izyumenko, ‘Intellectual Property before the European Court of Human Rights’ in Christophe Geiger, Craig A. Nard and Xavier Seuba (eds) Intellectual Property and the Judiciary (Edward Elgar Publishing, 2018) 9.

282  Research handbook on intellectual property and cultural heritage copyright and cultural heritage was addressed by the EU legislator in the context of Directive 2019/790/EU. It is quite interesting that under this legal instrument, mandatory exceptions and limitations to copyright were for the first time introduced to such an extent concerning (among others) the preservation of cultural heritage. In particular, it is explicitly dictated under Article 6 that member states shall provide for an exception to certain economic rights “in order to allow cultural heritage institutions to make copies of any works or other subject matter that are permanently in their collections, in any format or medium, for purposes of preservation of such works or other subject matter and to the extent necessary for such preservation.” It could be said that even in these cases, the interference by the EU and national law to the individuals’ personal sphere is neither unlimited nor absolute. On the contrary, it is very carefully defined under the aim of reaching a fair balance between diverging – public and private – rights and interests, while in addition the three-step test shall be recalled, which applies to all exceptions and limitations.27 The Confrontation Between the States’ Interference to the Exercise of IP Rights as Property Rights An additional issue arising in this realm is related to the widely debated proprietary nature of copyright and IP rights in general. Although the close relationship between IP and property has been argued to rely upon the information–costs theory and its role for the delineation and enforcement of such rights as ‘exclusion rights’,28 the conceptualization of these rights as ‘possessions’ derives from the case law of the European Court of Human Rights, which had reached some very interesting conclusions in this regard. At first, the relevant legal framework at both international and EU level has to be provided. The 1948 Universal Declaration of Human Rights (UDHR) dictates under Article 17 that “everyone has the right to own property alone as well as in association with others” (1) and that “no one shall be arbitrarily deprived of his property” (2). Moreover, according to Article 27(2) UDHR, “everyone has the right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author.” At EU level, the 1950 European Convention on Human Rights also includes property in the criteria aligned to the prohibition of discrimination of rights and freedoms established therefrom. In addition, Article 1 of Protocol No. 1 is devoted to the protection of property, providing in particular that every natural or legal person is entitled to the peaceful enjoyment of his possessions. No one shall be deprived of his possessions except in the public interest and subject to the conditions provided for by law and by the general principles of international law. The preceding provisions shall not, however, in any way impair the right of a State to enforce such laws as it deems necessary to control

27 Exceptions and limitations to copyright shall only to be applied in certain special cases, they shall not conflict with a normal exploitation of the work, and they shall not unreasonably prejudice the legitimate interests of the rightholder. Article 7(2) of Directive 2019/790/EU, which refers to Article 5(5) Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society OJ L 167. 28 Where under this theory copyright had been characterized as a “more tort-like regime and patent law as a more property-like” one. Read more at Henry E. Smith, ‘Intellectual Property as Property: Delineating Entitlements in Information’ (2007) 116 Yale L.J. 1742.

States’ discretion to classify IP subject matter  283 the use of property in accordance with the general interest or to secure the payment of taxes or other contributions or penalties.

Moreover, the Charter of Fundamental Rights of the European Union provides for a similar but even more detailed provision. In particular, Article 17(1), entitled ‘Right to Property’, provides that everyone has the right to own, use, dispose of and bequeath his or her lawfully acquired possessions. No one may be deprived of his or her possessions, except in the public interest and in the cases and under the conditions provided for by law, subject to fair compensation being paid in good time for their loss. The use of property may be regulated by law in so far as is necessary for the general interest.

In addition, the protection of IP rights had been integrated into this provision under paragraph 2, which states: “Intellectual property shall be protected.” The introduction of a rule concerning the protection of IP rights within the context of the right to property could be argued as implying a direct connection between the tangible and intangible aspects of ownership that could result in the potential similar dealing of property rights and IP rights in terms of interferences to their exercise. However, as analyzed below, the extent of the protection afforded to IP rights under the EU human rights law (for the purposes of this chapter) is more complicated.

THE PROTECTION OF CULTURAL HERITAGE AS A JUSTIFIABLE PUBLIC INTEREST AND THE NATURE OF STATES’ INTERFERENCE TO PROPERTY AND IP RIGHTS The definition and scope of ‘national treasures’ as aligned to IP-protected subject matter triggers the relationship between individuals and the social context within which they live and create. In other words, it is a clash between private rights and the public interest that traverses the debate over the means through which cultural heritage should be protected. According to one point of view, the path that should be followed lies in the enhancement of private property rights since they are considered as benefiting public interest in preserving cultural heritage. On the contrary, according to the ‘social relations’ theory, IP rights are characterized as an “important instrument to mould social and cultural relations,” resulting in the conceptualization of IP in the wider context of culture’s development and strengthening of social cohesion.29 In this latter case, if IP rights should be construed as operating exclusively for the public benefit, then any potential interference would be more easily justified. However, and notwithstanding the fact that the interconnection of IP with culture and society is unquestionable, it is also true and intertemporally recognized (for instance in copyright law) that the said objectives can only be accomplished if a high level of protection is afforded and ensured to the respective rightholders. This axiom is actualized through the granting of the so-called monopoly over the protected content that assembles to private property rights, which entail notions of alienation, expropriation and deprivation. Consequently, the following analysis will be based upon this approach.

29 Lucky Belder, ‘The legal protection of cultural heritage in international law and its implementation in Dutch Law’ (2013) Utrecht University Repository 51–55.

284  Research handbook on intellectual property and cultural heritage Ownership of national treasures is analyzed in the following three types: the first refers to national treasures owned by the state or public entities, while the second concerns cultural objects that belong to churches and religious communities. Provided that these two types of national treasure consist often of res extra commercium, it is the third type of national treasure that is relevant to the subject matter of this chapter, namely the objects owned by non-public entities,30 entailing as such individuals and potentially IP rightsholders. However, in the field of IP and foremost copyright, the rights granted under the relevant regime are not aligned to the physical object – unless there is an agreement to the contrary – but instead they constitute assets of an intangible form. That means that in the event where a copyright-protected object would be classified or defined as national treasure, there are two property regimes that need to be taken into consideration (unless they belong to the same person): the property rights over the physical object and copyright as a bundle of both economic and moral rights over the work. In parallel, the term of cultural property had been undoubtedly widened during the last decades, extending accordingly the scope of application of the relevant protective regime. This expansion led to the dematerialization of cultural property in order to cover intangible cultural expressions which are further added to the scope of providing access to information.31 If this applies a posteriori to non-protected or no longer protected by the IP regime creative content, there is no reason to doubt that the rights granted under copyright law are not of a similar proprietary nature. At this point, it should be recalled that copyright is inherited as a form of intangible property, while IP subject matter in general is conceived as ‘assets’ of an economic value. This means on the one hand that the said dematerialization of cultural property could operate as the basis for the classification of IP-protected content as national treasures. On the other hand, it also means that IP rights constitute, or they should be at least considered, as property rights, especially in terms of a state’s interference to their exercise. As a result, the following analysis will explore the rules governing the intervention to property rights – as it is further analyzed to the concepts of ‘control of use’ and ‘deprivation’ – and their potential applicability to IP subject matter. Article 1 of Protocol 1 of the 1950 European Convention consisted of the foundations on which IP rights have been recognized to be inexorably aligned with the EU human rights protection regime,32 a conclusion that had been reaffirmed by the Strasbourg Court since it acknowledged IP rights as ‘possessions’ resulting to the application as such of the said provision to IP – irrespective of whether a violation of this right had been determined or not.33 Interpreting the norm of ‘possessions’ in the significant Balan v Moldova case,34 the Court 30 Anna Frankiewicz-Bodynek and Piotr Stec, ‘Defining “National Treasures” in the European Union. Is the Sky Really the Limit?’ (2019) (2) Santander Art and Culture Law Review 82, 83. 31 Read more about the protection of intangible cultural property in the rise of information society at Michael F. Brown, ‘Heritage Trouble: Recent Work on the. Protection of Intangible Cultural Property’ (2005) 12.1 International Journal of Cultural Property 40, 61. 32 This had also been repeatedly recognized at EU level both within the institutional framework and the interpretative role of the CJEU. 33 In the case Anheuser-Busch Inc v Portugal (2007) 45 EHRR 36, concerning the mere application for a trademark’s registration, the Court determined that IP “as such incontestably enjoyed the protection” of Article 1 of Protocol 1. However, this protection covers only existing possessions, meaning that “the hope that a long-extinguished property right might be revived could not be regarded” as such. accessed 21 May 2021. 34 Balan v Moldova (2008) ECHR 81.

States’ discretion to classify IP subject matter  285 stressed its autonomous meaning, highlighting in addition that it is not limited to ownership rights over physical goods. Furthermore, it determined that this norm may refer either to “‘existing possessions’ or assets, including claims, in respect of which the applicant can argue that he or she has at least a ‘legitimate expectation’ of obtaining effective enjoyment of a property right.” This case concerned the use by the state of a photograph in the issuing of national identity cards: the photographer claimed that his rights under Article 1 Protocol 1 were infringed due to this interference, which resulted in the unauthorized use of his work. The Court, after substantiating that the applicant/copyright owner had a ‘possession’ within the meaning of the respective provision, examined the purpose and lawfulness of the state’s interference. The Court accepted that issuing identity cards to the population serves an undoubtedly important public interest. However, it is apparent that this socially important aim could have been reached in a variety of ways not involving a breach of the applicant’s rights. For instance, another photograph could have been used or a contract could have been concluded with the applicant.

Consequently, the Court found that “the domestic courts failed to strike a fair balance between the interests of the community and those of the applicant, placing on him an individual and excessive burden,” assessing as such a violation of Article 1 Protocol 1. Similar requirements are provided under Article 17(1) EU Charter as referring again to the right to property, which nonetheless offers a more general, idealized form of protection. However, both provisions have a sliding scale of impact – with rightholders appearing to be protected more strongly against deprivation of possessions than simple (control of) use of possessions.35 Moreover, it should be stressed that Article 17 EU Charter was based upon Article 1 of Protocol 1.36 In terms of IP protection, the following wording is interesting: Protection of intellectual property, one aspect of the right of property, is explicitly mentioned in paragraph 2 (of Article 17) because of its growing importance and Community secondary legislation. Intellectual property covers not only literary and artistic property but also inter alia patent and trademark rights and associated rights [emphasis added].37

As a result, it can be said that the property status and nature of IP rights are accordingly recognized, meaning that the conditions under which any deprivation of property rights could be justified should apply directly or even mutatis mutandis also to IP rights. The same conclusion derives from the relevant theory, which considers IP as a form of property.38 However, and provided that the scope and the extent of protection under Article 17(2) ΕU Charter has not been clarified, it seems that there is still ambiguity on the exact manner in which clashes with IP rights should be dealt with.

35 Jonathan Griffiths and Luke McDonagh, ‘Fundamental rights and European IP law – the case of art 17(2) of the EU Charter’ in Christophe Geiger (ed.), Constructing European Intellectual Property Achievements and New Perspectives (Edward Elgar Publishing 2011) 11, 12. 36 Explanations relating to the Charter of Fundamental Rights [2007] OJ C 303. 37 Ibid. 38 See more at Christophe Geiger, ‘Intellectual Property Shall be Protected!? Article 17 (2) of the Charter of Fundamental Rights of the European Union: a Mysterious Provision with an Unclear Scope’ (2009) 31.3 EIPR 113, 117.

286  Research handbook on intellectual property and cultural heritage On the other hand, it has been argued that the employment of fundamental rights framework in copyright law – referring especially to the implication of Article 17(2) ΕU Charter – “will inevitably, and unjustifiably, reinforce right-holders’ economic position in the face of competing policy interests.”39 However, we consider that there is not and there cannot be any such reinforcement (even if justifiable) of copyright on the grounds of human rights law provided that copyright has a specific term of duration. If a work is classified as a national treasure following the expiration of term of protection, there is not any clash and any interference with copyright, provided of course that moral rights are still respected. In addition, this argument does not match with the case law determining the prevalence of the public interest and national policy in protecting cultural heritage over individual rights as well as other fundamental rights, such as freedom of expression, which had been considered as overriding copyright.40 However, the CJEU in the Pelham case accepted the opinion of the Advocate General, who had stressed that member states cannot rely upon national constitutional provisions to avoid the implementation of their unconditional and mandatory obligations with regard to the protection of copyright and related rightsholders as provided under EU acquis. As the Court respectively dictated, “by virtue of the principle of primacy of EU law, which is an essential feature of the EU legal order, rules of national law, even of a constitutional order, cannot be allowed to undermine the effectiveness of EU law in the territory of that State.” Provided that the protection of national treasures falls within the sole competence of member states, how could they simultaneously comply with the said obligation and reach an appropriate and foremost proportionate fair balance between these diverging rights and interests? The CJEU had stressed the non-absolute character of the principles41 provided under the EU law, meaning that “they must be viewed in relation to their social function.” Accordingly the Court had stated that the exercise of the right to property and the freedom to pursue a trade or profession may be restricted, provided that any restrictions in fact correspond to objectives of general interest pursued by the European Community and do not constitute in relation to the aim pursued a disproportionate and intolerable interference, impairing the very substance of the rights guaranteed.42

As a result, such restrictions are subject to the following conditions: (i) they must correspond to objectives of general interest pursued by the EU;43 (ii) they must be proportionate in relation to the aim pursued; (iii) they must not intolerably interfere to this right and freedom in relation to

39 Jonathan Griffiths, European Union copyright law and the Charter of Fundamental Rights – Advocate General Szpunar’s Opinions in (C-469/17) Funke Medien, (C-476/17) Pelham GmbH and (C-516/17) (2019) Spiegel Online (ERA Forum 20) 36, 42. 40 As in the Case C‑476/17 Pelham GmbH, Moses Pelham, Martin Haas v Ralf Hütter, Florian Schneider‑Esleben. [2019] ECLI:​EU:​C:​2019:​624. 41 As it is provided under Article 6(3) TEU: “Fundamental rights, as guaranteed by the European Convention for the Protection of Human Rights and Fundamental Freedoms and as they result from the constitutional traditions common to the Member States, shall constitute general principles of the Union’s law.” 42 Case C-200/96 Metronome Musik GmbH v Music Point Hokamp GmbH [1998] ECR I-01953. 43 It could be said that this runs in alliance with the choice made by the EU legislator to deal with the issue of national treasures within the EU trade law framework and the movement of goods and not under the aim of safeguarding national cultural heritage, since in that latter case member states would not be allowed to provide for differentiated protective schemes and definitions.

States’ discretion to classify IP subject matter  287 the aim pursued; and (iv) they must not impair the very substance of the right. The principle of proportionality is profoundly interconnected with the introduction into acquis communautaire of the fair balance principle that performs the basis on which any dispute shall be resolved. Such disputes may refer among others to the clashes between IP rights and the principle of free movement of goods. In these cases, though, the interference to IP rights has not been classified as a deprivation of property, where the payment of compensation is explicitly demanded under both the Strasbourg Court (which addressed instead the ‘control of use’ axiom) and the CJEU. Ιt was only in the Luksan case44 that the CJEU provided for an equation between the violation of the EU secondary law and the concept of deprivation. More precisely, the Court stated that “the fact that national legislation denies him the exploitation rights at issue would be tantamount to depriving him of his lawfully acquired intellectual property right.”45 On the grounds of this judgment of the Court, it has been said that “every violation of secondary EU law as a result of a lack of protection in domestic legislation is thus seen as a deprivation.”46 The prevalence of the concept of ‘control of use’ – as it would be aligned to that of ‘limitation’ instead of that of ‘deprivation’ and vice versa – is rather crucial. If there is a deprivation from the right to property, a compensation must be paid. In cases of limitations, there is not such an obligation. This is apparent especially in copyright law, where both EU and national law provide that neither a prior authorization is required nor a payment of remuneration. The examination of the lawfulness of a use under an exception or limitation to copyright is interconnected with the fulfillment of the three-step test, while all cases are subject to the principles of fairness and proportionality. This is not only deriving from the case law of the CJEU but also from that of the Strasbourg Court, which applies the fair balance test, according to which the public interest and the affected (individual) fundamental rights have to be proportionally balanced. In this regard, the EU Charter entails a clear mandate, dictating under Article 52(1) that Any limitation on the exercise of the rights and freedoms recognised by this Charter must be provided for by law and respect the essence of those rights and freedoms. Subject to the principle of proportionality, limitations may be made only if they are necessary and genuinely meet objectives of general interest recognised by the Union or the need to protect the rights and freedoms of others.

However, it had been said that in the case where the interference at issue can be defined as (a control of) use rather than a total deprivation of property, ‘particular flexibility’ is observed.47 This can be justified on the grounds that deprivation may cover a range of situations where the very substance of an individual right is extinguished. On the contrary, ‘control of use of property’ is considered as a less invasive measure. However, the qualification of a measure 44 Case C‑277/10 Martin Luksan v Petrus van der Let [2012] ECLI:​EU:​C:​2012:​65. This case concerned among others the compliance with EU acquis of national law under which the rights to exploit a cinematographic work were allocated exclusively and by operation of law to the film producer. The Court found that these rights as provided under EU law vest by operation of law, directly and originally, in the principal director. Consequently, national legislators are precluded from granting those exploitation rights by operation of law exclusively to the producer of the work from allocating those rights to the producer of the work. 45 Case C‑277/10 Martin Luksan v Petrus van der Let [2012] ECLI:​EU:​C:​2012:​65, para 70. 46 Martin Husovec, ‘The Essence of Intellectual Property Rights Under Article 17(2) of the EU Charter’ (2019) 20 German Law Journal 842, 848, 851, 854. 47 Supra n 35, p. 8.

288  Research handbook on intellectual property and cultural heritage as either deprivation or control of use of property is difficult in practice essentially because it cannot be easily assimilated to measures qualified in the existing case law or because a given series of measures may consist of disparate decisions belonging to various branches of domestic law. In such cases, the judge will normally consider that they must be examined in the light of the general principle of respect to the peaceful enjoyment of one’s possessions.48 The line of this reasoning leads to a new question: the states’ discretion to classify or define IP subject matters as national treasures should be considered as a limitation to the exercise of IP rights otherwise as a control of use or as a deprivation. In the first case, would the three-step test49 succeed? The preservation of cultural heritage consists of a certain special case, and in particular of an issue of general interest. Τhe concept of general or of public interest should be interpreted on an ad hoc basis, taking into account the political, cultural, social and economic situation of a given country. The protection of cultural heritage has been recognized by the Strasbourg Court as falling within the general interest realm, justifying such limitations not only to property rights/rights to possession but also to other fundamental rights and freedoms such as the freedom of expression and artistic freedom. In consequence, the Court provided for the prevalence of cultural heritage protection over those rights and freedoms, while it also accepted the prevalence of the right of the public to access objects constituting part of the universal culture and cultural heritage of mankind. What should be stressed is that according to the Court, such restrictions are applicable to both antiquities and objects belonging to the modern age.50 On these grounds, the legitimate interests of rightsholders could be considered as not being unreasonably prejudiced. However, the second step provides that exceptions or limitations shall not conflict with a normal exploitation of the work. If a work is classified as a national treasure, it cannot be further exploited since it loses the protection afforded under copyright law; it is then protected and preserved as a national treasure by the state under its respective right and duty. As a result, the rightsholder is alienated from the exclusive economic rights granted under copyright law. In this case, rights are not limited as in the cases of research, education and information, and even in the case of the preservation and promotion of cultural heritage, under the new mandatory exceptions established under Directive 2019/790 that were described above. In this case, the respective rightholder no longer has economic rights and interests over their work, resulting apparently in the failure of the second step; the classification/definition of national treasures not only conflicts with the normal exploitation of a work but also amounts to the termination of any exploitation. As a result, apart from the limitations imposed on member states when classifying or defining their national treasures at their own discretion, as stated above, they cannot interfere too deeply with a right to enjoy one’s possession and in general with ownership rights.51 In this regard, the judgment of the Strasbourg Court in the Beyeler case52 is rather crucial. This case concerned the exercise by Italy of the pre-emption right provided under a special national protective regime covering works of art of cultural and artistic interest in relation to

48 European Court of Human Rights, Guide on Article 1 of Protocol No. 1 to the European Convention on Human Rights: Protection of Property [2021], pp. 18–20 accessed 25 May 2021. 49 Supra n 27. 50 Supra n 30, p. 86. 51 Supra n 30, p. 90. 52 Beyeler v. Italy (2001) ECHR 2000-I 57.

States’ discretion to classify IP subject matter  289 a Vincent van Gogh painting (‘Portrait of a Young Peasant’). The painting was bought in 1977 by Mr Beyeler for a price of nearly €310,000. Given that he did not reveal his identity, the declaration of sale did not include his name. In 1983 Italian authorities were informed that he was the real purchaser. In 1988 the work was sold to the Peggy Guggenheim Collection for US$8.5 million. A few months later, Italy exercised its expropriation right, indicating that Mr Beyeler should be paid back the amount of the 1977 sale. The Court assessed that this action consisted of an interference with the right to the peaceful enjoyment of his possessions. However, it also affirmed the legitimate aim pursued under the control by the state of the market in works of art, thus serving “the purposes of protecting a country’s cultural and artistic heritage.” Even in this case, though, the Court highlighted that a fair balance should be achieved between this aim and the intervention to the private sphere. This prerequisite had not been fulfilled in this case at issue, resulting in the determination of a violation of Article 1. The Court ordered the payment by the Italian state to Mr Beyeler of a compensation for the pecuniary and non-pecuniary damage suffered of €1.3 million as well as of an amount of €55,000 for his court costs. What is very interesting is that the Court rejected the applicant’s allegation according to which Italy had no legitimate aim with regard to a work created by a Dutch painter, thus recognizing that “in relation to works of art lawfully on its territory and belonging to the cultural heritage of all nations, it is legitimate for a state to take measures designed to facilitate in the most effective way wide public access to them, in the general interest of universal culture.”53 Notwithstanding the fact that this last thinking would raise the debate over cultural nationalism and internationalism,54 the Court demonstrated the need (and the right) of the states to protect not only (purely) national cultural heritage but also universal culture. Although this case concerned property rights over the physical carrier – where the provision of Article 17(1) ΕU Charter is more than clear – and not copyright, the reconciliation of the compensation to be paid to the legitimate owner signifies the essential character and decisive importance of the fair balance principle as the sine qua non prerequisite for the lawfulness of such interferences. Recalling the categorization of national treasures that has been presented above, it had been clearly stressed that the classification of a “privately-owned cultural object as a national treasure requires payment of just compensation.”55 Consequently, the uncertainty emerging from the attempt to characterize the states’ interference as either deprivation or limitation to the rights affected in order to draw the line of the relevant competence and designate any further obligations, could be overcome by applying in this field the prerequisites set out by EU human rights law. The limitations imposed on member states in respect of free movement of goods are also applicable to ownership rights, meaning that also in this case the measures adopted cannot be arbitrary, discriminative and disproportionate. In addition, when this freedom clashes with the right to property, the prerequisites established under the 1950 ECHR and Protocol 1 must be taken into account, resulting to the payment of compensation by the state. If any deprivation 53 Ece Velioglu and Alessandro Chechi and Marc-André Renold, ‘Case Portrait of a Young Peasant – Beyeler v. Italy’ (2013) Art-Law Centre, University of Geneva. Platform ArThemis 3, 6. 54 See more at Anna Sljivic, ‘Why Do You Think It’s Yours – An Exposition of the Jurisprudence Underlying the Debate between Cultural Nationalism and Cultural Internationalism’ (1997–1998) 31 Geo. Wash. J. Int'l L. & Econ. 393, 438; Akira Iriye and Fen O. Hampson, ‘Cultural internationalism & world order’ (1997) 52.4 International Journal, Toronto 735; Joe Watkins, ‘Cultural Nationalists, Internationalists, and “Intra-nationalists”: Who's Right and Whose Right?’ (2005) 12.1 International Journal of Cultural Property 78, 94. 55 Supra n 53, p. 90.

290  Research handbook on intellectual property and cultural heritage from property rights requires compensation (as in the case of forced expropriations for the general interest), why would this states’ obligation established in order to address exactly the loss of the proprietors’ exploitation interests not be applicable to the IP regime provided that there is not a limitation in this field but a total forfeiting of the corresponding economic right over a work? In order to draw our final conclusions, a short presentation of some interesting judgments delivered by national courts follows. They shed some light on the manner through which national case law has dealt with the issue of the interaction between states’ freedom to define national treasures and individual rights.

NATIONAL EXPERIENCES The intended absence of a uniform definition concerning national treasures – contrary to the principle of autonomous and uniform interpretation of the EU acquis – led inevitably to divergencies of the national laws concerning the protection of cultural heritage. The first case to be cited here is closely aligned to the prior analysis of the sole competence of member states to define and classify the objects that should be subject to movement controls, while it also operates as a national example of the perception adopted by the Strasbourg Court in the Beyeler case. In addition, it constitutes a quite important case concerning a still protected by copyright work, although any reference to the copyright regime is – unfortunately – absent. A complaint was brought before the Regional Administrative Court of Lazio challenging a 2013 notice of denial from Italian authorities concerning the export/free circulation of a Salvador Dali painting.56 Examining the merits of the case at issue, which led to the rejection of the appeal as unfounded, the national court drew some significant conclusions. First of all, the Court affirmed that the examination of the particular importance of the work with regard not only to the undoubted significance of the artist himself but also in relation to the cultural context and the period within which it was created was correct, since the work consisted of a unique testimony of a phase and of an artistic expression of Dali, which was absent in Italian collections. Providing as such for the criterion of the rarity of the work, the Court further stated that no limitations emerge from national law and no differences apply when evaluating the artistic and historical relevance of an object in terms of the origin or the nationality of the author or the place of the refusal of export. As a result, it is possible to prohibit the export of foreign works (as in the Beyeler case), provided that their presence and maintenance in the territory is necessary to foster the knowledge over the culture represented in a given movable property consisting as such of a “material testimony of civilization” that operates as a tool for the training and growth of cultural community.57 Moreover, the Court’s opinion on Article 36 TFEU per se is also interesting. In particular, according to the Court this provision must not be interpreted restrictively, namely as an exceptional rule to the general principle of free

56 Elena Quarestani v. Ministero dei Beni, delle Attività Culturali e del Turismo [2017] Tribunale amministrativo regionale (TAR) Lazio No. 4395. 57 This criterion of the significance of a work for a nation’s cultural development as aligned to export denials and their conformity with the Constitution of Italy had been adopted by national courts also in the following cases: Elena Quarestani v. Ministero dei Beni, delle Attività Culturali e del Turismo [2012] TAR LazioNo. 7833.

States’ discretion to classify IP subject matter  291 movement of goods, since member states are exclusively competent to set out the framework for the protection of their cultural heritage. As to the Court’s decision, the TFEU excludes any harmonization of the respective national regimes while the EU bodies are limited to the adoption of actions of incentive as mostly aligned to the fostering of cooperation between member states. To confirm this interpretation, the Court stressed the absence of a definition of national treasures as well as of the norm of cultural heritage in EU legislative acts. It also emphatically posed that insofar as an artistic, historical or archeological bond is assessed which further results to an effective cultural interest, there are no other restrictions except from those provided under Article 36 TFEU and the respect to the principle of typicality and proportionality. The term ‘national’ is mostly associated to the concept of ‘national significance’, where the bond with the nation could also be the cultural environment, as in this case where the work at issue represented a specific artistic movement. Lastly, it is argued that the value of the work is also taken under consideration along with its so-called ‘marginal utility’.58 This last point highlights the issue of the copyright holder’s alienation from their resale right in the case where a work would be classified as national treasure. According to Article 1(1) Directive 2001/84/EC,59 member states are obliged to provide for the benefit of the author of an original work of art a resale right, which is defined by the EU law as an inalienable right that cannot be waived even in advance, and which is analyzed to the right to receive a royalty based on the sale price obtained for any resale of the work subsequent to the first transfer of the work by the author.60 This means that if Italy permitted the export of the Dali painting in this case at issue, and taking into account that the appellant was operating on behalf of the owner and of Christie’s SA, the painting would have been sold and maybe resold and the author/copyright owner would have received the royalties defined under the law. The next two cases took place in Greece – a country of origin – as well as Italy. Notwithstanding the fact that they do not refer to national treasures, they provide for the framework within which IP-protected content could be qualified as such. Article 20 of the Greek Law No. 3028/2002 on the Protection of Antiquities and Cultural Heritage in General is devoted to the qualification and the distinctions between movable monuments. Among other categories, this provision dictates that the term of movable monuments – as they will be qualified by the means of a decision issued by the Minister of Culture except from the ancient movable monuments, which are dated until 1453 and from 1453 to 1830 that are de jure protected – may also include: (i) newer cultural goods which are earlier than the last given hundred years and are characterized as monuments due to their social, technical, folklore, ethnological, artistic, architectural, industrial or generally historical or scientific significance; and (ii) the newest cultural goods that date back to the period of each last hundred years and are characterized as monuments due to their special social, technical, folklore, ethnological or in general historical, artistic, architectural, industrial or scientific importance.

Supra n 24, p. 71. Directive 2001/84/EC of the European Parliament and of the Council of 27 September 2001 on the resale right for the benefit of the author of an original work of art OJ L 272. 60 The resale right – droit de suite – is provided under Article 5 of the Greek Copyright Act accessed 22 May 2021. 58 59

292  Research handbook on intellectual property and cultural heritage On these grounds, the work of the world-famous writer Kazantzakis was the subject matter of Ministerial Decision, according to which a Committee was established in 2010.61 The tasks of this Committee were to proceed to the republishing of the works of Nikos Kazantzakis, with interpretive comments and notes by reputable scholars and with a typographic appearance that meets modern aesthetic requirements. In addition, the Committee had also to aggregate (a) all unpublished manuscripts (calendars, correspondence, etc.), looking for them wherever they are, in Greece or abroad, in the hands of institutions or individuals; and (b) all texts that have been published from time to time in magazines, reviews, newspapers, etc., which would then be published in single volumes, accompanied by interpretive comments and notes by expert scholars. However, the lawfulness of the said Decision concerning the establishment of the Committee62 was challenged by the holder of copyright over the literary work of Kazantzakis and the case was brought before the Council of State,63 which issued a landmark decision. In particular, the Council of State had stressed that the Committee was not merely assigned with the competence to carry out studies and make research over the literary work of Kazantzakis, but in addition it became competent to proceed to the republishing and to the translation from the outset of the works which had been already published and translated as well as to the publishing of unpublished works. However, the Council of State dictated that such an assignment violates copyright over the literary work, which had been inherited to the applicant provided that according to the Law No. 2121/1993 the term of protection lasts for 70 years following the death of the author (Kazantzakis died in 1957). That means that such successors are entitled among others to prohibit – without their prior authorization – the republishing, the new translations and the publishing of unpublished works – exactly as granted to the author of the work during their life irrespective of the value or the destination of the work. According to the Council of State, this right had been infringed since the Ministerial Decision is only indefinitely stating that the copyright belonging to the successors of Kazantzakis is not in the least affected by such publications, while it should provide that such publications and translations require the prior authorization of the copyright holders over the works. Consequently, the Council of State declared the said Decisions as null and void. Provided that there is not any relevant case law in this area, this decision is of major importance in terms of a case law recognition of the prevalence of copyright rejecting as such the state’s interference even if the latter was explicitly based upon the significance of the work of Kazantzakis. Taking into account the case law of the Strasbourg Court, it could be said that this intervention of the Greek state touched the core of copyright over the works at stake, resulting as such in the extinguishing of the respective absolute and exclusive powers; this would be profoundly qualified as deprivation and not a control of use of IP, which was dismissed by the Council of State. One more interesting case concerns the qualification as movable monuments of 357 paintings, engravings and sculptures which were found in the building complex of the former Royal Estate of Tatoi of Attica, which is owned by the Greek state on the basis of their particular

61 By the means of the Decision Ref. No. ΥΠΠΟΤ/"ΙΟΙΚ/Τ"ΠΕΦ/553/27.12.2010 of the Ministry of Culture and Tourism. 62 As well as of a second one concerning the appointment of the President of the Committee. 63 Council of State (Simvoulio tis Epikrateias) Decision No. 3921/2015.

States’ discretion to classify IP subject matter  293 historical value. As this Decision states,64 some very important Greek artists are standing out, such as Lytras, Gyzis, Altamouras, Volanakis, Tombros, Tetsis, etc., the works of which have special artistic value. It should be stressed that as in the case in Italy – although concerning different facts – the qualification of the Greek state concerned also works of foreign artists since they consisted of characteristic samples of the European painting and engraving from the mature Renaissance until the 20th century. An additional – although rather sensitive – criterion adopted by national authorities was the relation of those works of art – which were characterized as consisting of an interesting single and inseparable entity as a whole – with the collecting practices and the aesthetic preferences of the former royal family, while it was stated that it was especially important that these works cover the entire duration of the stay of Glücksburg in Greece from the arrival of George I to the departure of the former royal family in December 1967. On the same grounds, a second Ministerial Decision65 based the qualification as movable monuments of various items, which had been found on the same site – including nine (9) paintings from Greek artists which bore their signature – on the grounds of their special historical, social, technical, artistic, industrial, scientific significance, which were directly related to the former Royal Family during its stay in Greece, as well as to the activities and techniques which had been developed during this time for the production of agricultural products. What is also noteworthy is that this Decision included as movable monuments also clothing sets of women’s traditional costumes as well as an individual costume section – referring as such to the traces of cultural diversity and uniqueness – as well as archive material.

CONCLUSIONS The national treasures exception constitutes per se of a rule enhancing great divergencies in respect of its application at national level on the grounds of the discretion afforded to member states as they further represent differentiated cultural policies and traditions. As was analyzed, this freedom is not unlimited. In respect of the general principle of free trade – otherwise movement – of goods, Article 36 TFEU provides itself for the condition of the non-arbitrary discrimination or of a non-disguised restriction. On the one hand, the UDHR dictates that “no one shall be arbitrarily deprived of his property,” while the 1950 European Convention on Human Rights provides for the right of every natural or legal person to the peaceful enjoyment of possessions setting out for the exception of public interest under concrete conditions. In terms of property, a fair compensation must be paid for the loss occurred, while the use of property shall run in compliance with the necessity principle in terms of the general interest pursued. On the other hand, the protection of IP is also recognized at international, EU and national level through the establishment of exclusive rights to the respective rightsholders. In terms of copyright, any limitation refers to other fundamental rights and is always subject to the three-step test. In cases where a state would classify as a national treasure a work that had fallen into the public domain, there is not any problem, since exploitative rights are ‘sacri64 Decision No. ΥΠΠΟ/ΔΙΝΕΠΟΚ/Β’/95185/2861/01.10.2010 of the Minister of Culture and Tourism. 65 Decision No. ΥΠΑΙΘΠΑ/ΓΔΑΠΚ/ΔΝΠΚ/ΤΠΚΠΑ/1605/714/15/1/05.02.2013 of the Minister of Education, Religious Affairs, Culture and Sports.

294  Research handbook on intellectual property and cultural heritage ficed’ for the general interest of access to such creative content. However, when the term of protection had not yet expired, such an invasion into the private sphere of an IP rightsholder shall not be deemed as a limitation but as a deprivation. The recognition of a work as a national treasure and the moral reward deriving therefrom do not suffice for the forfeiting of the means through which that rightsholder could exploit in financial terms their work being able as such to continue to create. As a result, the protective regime applying to property owners in the case of deprivation under which they are entitled to a fair compensation should also be applicable to IP rightsholders. This conception runs in compliance – in terms of copyright law – with the EU acquis in terms of the exceptions and limitations provided to the authors’ and related rightsholders’ economic right, as in the case, for instance, of the exception provided to the reproduction right for private use, which had been established under Article 5(2)(b) of the InfoSoc Directive.66 It is interesting that the same rule of ‘fair compensation’ is also provided in this realm, aiming at redressing the damage suffered by an analogous interference to copyright for the sake of public interest. However, the definition of national treasures should not be expansively interpreted. Recalling the ruling of the CJEU in the Commission v. Italy case, it was concluded that apart from ‘national treasures’, all other types of cultural property fall within the free movement of goods principle. Within this context, it seems that only a narrow definition is capable of accomplishing the compromise that the EU legislator had tried to achieve. Moreover, the word ‘treasure’ comes from the Greek word ‘thesauros’, which means something extremely valuable. The choice of this word (instead of national ‘cultural objects’, for instance) indicates that such permitted import and export prohibitions shall refer only to cultural property of major importance for a nation. Recognizing that this approach in fact excludes to a significant extent IP-protected content from the states’ discretion to classify their own national treasures and that there are no such legislative boundaries under international and EU law, the solution lies only to the establishment and respect of the principles of EU law as enriched in national legal systems, according to which a fair balance must always be achieved, irrespective of the challenging path we have to follow in order to succeed.

66 According to this rule, “Member States may provide for exceptions or limitations to the reproduction right provided for in Article 2 in the following cases: (…) b) in respect of reproductions on any medium made by a natural person for private use and for ends that are neither directly nor indirectly commercial, on condition that the right holders receive fair compensation which takes account of the application or non-application of technological measures referred to in Article 6 to the work or subject-matter concerned.”

15. Intellectual property, cultural heritage, and human rights Peter K. Yu1

INTRODUCTION The relationship between intellectual property and human rights in the cultural heritage context is both complex and challenging. Although these two sets of rights frequently align, they also compete against each other. The resulting tensions and conflicts affect not only the relevant cultural groups but all of us. Even more challenging, there has so far been no consensus on how to protect cultural heritage. Nor are there generally agreed definitions of ‘culture’ and ‘cultural heritage’.2 As Raymond Williams reminded us, “culture is one of the two or three most complicated words in the English language”.3 Likewise, Lyndel Prott lamented that “the legal definition of the cultural heritage is one of the most difficult confronting scholars today”.4 Although a diverse array of conventions, protocols, declarations, laws, policies and guidelines has been established to protect cultural heritage and cultural diversity, many of these normative documents include definitions that were drafted on a text-by-text basis.5 It is therefore difficult to generalise definitions across a variety of contexts, including those at the intersection of intellectual property and human rights. This chapter begins by mapping the contours of the international human rights framework as it relates to intellectual property and cultural heritage. The chapter then offers three sets of illustrations covering situations in which tensions and conflicts between human rights and intellectual property rights may arise: (1) the production of user-generated content; (2) the reproduction of indigenous cultural heritage; and (3) the digitisation, sharing or dissemination of cultural materials by museums, libraries and archives. This chapter concludes by advancing a three-step balancing process to help resolve these potential tensions and conflicts.

1 Copyright © 2022 Peter K. Yu. Regents Professor of Law and Communication and Director, Center for Law and Intellectual Property, Texas A&M University. This chapter draws on research that the author conducted for earlier articles in the Temple Law Review, the SMU Law Review, UC Davis Law Review, as well as two book chapters published by Edward Elgar Publishing. 2 Janet Blake, ‘On Defining the Cultural Heritage’ (2000) 49 International and Comparative Law Quarterly 61, 67–8; Lyndel V. Prott, ‘Problems of Private International Law for the Protection of the Cultural Heritage’ (1989) 5 Recueil des Cours 215, 224. 3 Raymond Williams, Keywords: A Vocabulary of Culture and Society, revised edn (New York: Oxford University Press 1985) 87. 4 Prott (n 2) 224. 5 Blake (n 2) 63–4; 1 Lyndel V. Prott and P.J. O’Keefe, Law and the Cultural Heritage (Abingdon: Professional Books 1984) 8; Peter K. Yu, ‘Cultural Relics, Intellectual Property, and Intangible Heritage’ (2008) 81 Temple Law Review 433, 441–2.

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HUMAN RIGHTS FRAMEWORK As far as human rights are concerned, the starting points are often the Universal Declaration of Human Rights (UDHR) and the International Covenant on Economic, Social and Cultural Rights (ICESCR). Article 27(1) of the UDHR covers the right to take part in cultural life and the right to enjoy the benefits of scientific progress and its applications. Article 27(2) recognises the right to the protection of interests resulting from intellectual productions. Building on these two sub-provisions, the drafters of the ICESCR transposed these rights into binding international legal obligations. That covenant was adopted in December 1966 and entered into force close to a decade later. As with my past research on intellectual property and human rights, this chapter, for practical and analytical reasons, focuses on the positive rights stipulated in the UDHR and the ICESCR, in particular those enshrined in Article 15 of the Covenant.6 While the international political consensus achieved through these treaties is inevitably incomplete, the textual language will be important as we devise solutions to address the tensions and conflicts between human rights and intellectual property rights. Such language will also be instructive for analysing the scope, content and obligations of the relevant human rights. Despite the focus on the positivist conception of human rights in this chapter, some policymakers and commentators have taken a more philosophical approach, relying on first principles, moral philosophy and the concept of human dignity.7 This approach is not only defensible but can be complementary. For example, it can compensate for the positivists’ tendency to overlook those “goals and interests that have strong moral bases but [that] have yet to be recognized politically by the international community”.8 The Right to the Protection of Interests Resulting from Intellectual Productions Article 27(2) of the UDHR states expressly that “[e]veryone has the right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he [or she] is the author”. Tracking closely the UDHR language, Article 15(1)(c) of the ICESCR requires each state party to “recognize the right of everyone … [t]o benefit from the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he [or she] is the author”. Although intellectual property rights can be used to protect the moral and material interests covered in these provisions, not all aspects of intellectual property rights can be protected at the level of human rights. As the UN Committee on Economic, Social and Cultural Rights

6 Peter K. Yu, ‘Intellectual Property, Human Rights, and Methodological Reflections’ in Irene Calboli and Maria Lillà Montagnani (eds), Handbook of Intellectual Property Research: Lenses, Methods, and Perspectives (Oxford: Oxford University Press 2021) 184–6; Peter K. Yu, ‘Reconceptualizing Intellectual Property Interests in a Human Rights Framework’ (2007) 40 UC Davis Law Review 1039, 1047–75. 7 Richard Falk, ‘Cultural Foundations for the International Protection of Human Rights’ in Abdullahi Ahmed An-Na’im (ed), Human Rights in Cross-Cultural Perspectives: A Quest for Consensus (Philadelphia: University of Pennsylvania Press 1992) 44. 8 Peter K. Yu, ‘Ten Common Questions about Intellectual Property and Human Rights’ (2007) 23 Georgia State University Law Review 709, 716.

Intellectual property, cultural heritage, and human rights  297 (CESCR) declared in General Comment No. 17, the authoritative interpretive comment on Article 15(1)(c) of the ICESCR: Human rights are fundamental as they are inherent to the human person as such, whereas intellectual property rights are first and foremost means by which States seek to provide incentives for inventiveness and creativity, encourage the dissemination of creative and innovative productions, as well as the development of cultural identities, and preserve the integrity of scientific, literary and artistic productions for the benefit of society as a whole.9

In the Committee’s view, it is “important not to equate intellectual property rights with the human right recognized in article 15, paragraph 1(c)”.10 In general, the right to the protection of interests resulting from intellectual productions covers two types of interest: moral and material. While the protection of moral interests “safeguards the personal link between authors and their creations and between peoples, communities, or other groups and their collective cultural heritage”, the protection of material interests “enable[s] authors to enjoy an adequate standard of living”.11 Given the latter’s focus on the authors’ standards of living, it is important to recognise that Article 15(1)(c) does not give authors “the unqualified property-based interests in intellectual creations [or the full remuneration for their creative efforts], but rather … the narrow interest of just remuneration for intellectual labor”.12 Because the protections for moral and material interests serve different goals, the two types of interest are not always interchangeable.13 Indeed, a state party can offer inadequate protection to moral interests even though it has enacted strong copyright and patent laws to protect material interests. The most notable case is the United States. Although the country offers moral rights protection to works of visual art – such as paintings, sculptures and print photographs – such protection remains limited, especially when compared with the protections offered in continental Europe.14 The lack of protections for the moral interests in works outside the domain of visual art is particularly problematic. As if the differing levels of protection accorded to human rights and intellectual property rights were not challenging enough, some jurisdictions offer human rights-like protection that go beyond what international human rights instruments have recognised. In Europe, for instance, the right to property provision in Article 17(2) of the Charter of Fundamental Rights of the European Union explicitly covers intellectual property. In Anheuser-Busch, Inc v. Portugal, the Grand Chamber of the European Court of Human Rights also extended the protection of “the peaceful enjoyment of … possessions” in Article 1 of Protocol No. 1 to the

9 Committee on Economic, Social and Cultural Rights (CESCR), ‘General Comment No. 17 (2005): 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 or She Is the Author (Article 15, Paragraph 1(c), of the Covenant)’ (E/C.12/GC/17, 12 January 2006) para 1. 10 Ibid para 3. 11 Ibid para 2. 12 Yu, ‘Reconceptualizing Intellectual Property Interests’ (n 6) 1129. 13 Peter K. Yu, ‘The Anatomy of the Human Rights Framework for Intellectual Property’ (2016) 69 SMU Law Review 37, 55–6. 14 Roberta Rosenthal Kwall, ‘“Author-Stories:” Narrative’s Implications for Moral Rights and Copyright’s Joint Authorship Doctrine’ (2001) 75 Southern California Law Review 1, 22–43; Peter K. Yu, ‘Moral Rights 2.0’ (2014) 1 Texas A&M Law Review 873, 874–7.

298  Research handbook on intellectual property and cultural heritage European Convention on Human Rights to cover both registered trademarks and trademark applications of a multinational corporation.15 Such extension has attracted criticisms from human rights experts.16 As Jack Donnelly noted emphatically, “[c]ollectivities of all sorts have many and varied rights. But these are not – cannot be – human rights, unless we substantially recast the concept”.17 Article 15 of the ICESCR Article 27(1) of the UDHR states expressly that “[e]veryone has the right freely to participate in the cultural life of the community, to enjoy the arts and to share in scientific advancement and its benefits”. Tracking closely the UDHR language, Article 15(1)(a) of the ICESCR explicitly recognises “the right of everyone … to take part in cultural life”. Article 15(1)(b) further protects “the right … [t]o enjoy the benefits of scientific progress and its applications”. Although the CESCR has not issued any interpretive comment on Article 15 until the end of the fourth decade of the ICESCR, its release of General Comment No. 17 in January 2006 drew policy and scholarly attention to the right to the protection of interests resulting from intellectual productions. More than three years later, the Committee issued General Comment No. 21, which offered an authoritative interpretation of the right to take part in cultural life. In April 2020, at the early stages of the COVID-19 pandemic, the CESCR published General Comment No. 25, which explored the scope, content and obligations of the right to enjoy the benefits of scientific progress and its applications as well as the broader “relationship between science and economic, social and cultural rights”.18 With three general comments issued, the Committee has completed its interpretation of all three distinct rights in Article 15 of the ICESCR. Taking the position that “[c]ulture is an inclusive concept encompassing all manifestations of human existence”, the CESCR defined the right to take part in cultural life very broadly.19 This right comprises “three interrelated main components”: (1) participation; (2) access; and (3) contribution.20 As the Committee elaborated in General Comment No. 21: (a) Participation covers in particular the right of everyone … to act freely, to choose his or her own identity, to identify or not with one or several communities or to change that choice, to take part in the political life of society, to engage in one’s own cultural practices and to express oneself in the language of one’s choice. Everyone also has the right to seek and develop cultural knowl-

(2007) 45 EHRR 36 (Grand Chamber). CESCR (n 9) para 7; Farida Shaheed, ‘Copyright Policy and the Right to Science and Culture: Report of the Special Rapporteur in the Field of Cultural Rights’ (A/HRC/28/57, 24 December 2014) paras 41, 99. 17 Jack Donnelly, Universal Human Rights in Theory and Practice, 2nd edn (Ithaca: Cornell University Press 2003) 25. 18 CESCR, ‘General Comment No. 25 (2020) on Science and Economic, Social and Cultural Rights (Article 15(1)(b), (2), (3) and (4) of the International Covenant on Economic, Social and Cultural Rights)’ (E/C.12/GC/25, 30 April 2020) para 1. 19 Ibid para 10. 20 CESCR, ‘General Comment No. 21: Right of Everyone to Take Part in Cultural Life (Art. 15, Para. 1(a), of the International Covenant on Economic, Social and Cultural Rights)’ (E/C.12/GC/21, 21 December 2009) para 15. 15 16

Intellectual property, cultural heritage, and human rights  299 edge and expressions and to share them with others, as well as to act creatively and take part in creative activity; (b) Access covers in particular the right of everyone … to know and understand his or her own culture and that of others through education and information, and to receive quality education and training with due regard for cultural identity. Everyone has also the right to learn about forms of expression and dissemination through any technical medium of information or communication, to follow a way of life associated with the use of cultural goods and resources such as land, water, biodiversity, language or specific institutions, and to benefit from the cultural heritage and the creation of other individuals and communities; (c) Contribution to cultural life refers to the right of everyone to be involved in creating the spiritual, material, intellectual and emotional expressions of the community. This is supported by the right to take part in the development of the community to which a person belongs, and in the definition, elaboration and implementation of policies and decisions that have an impact on the exercise of a person’s cultural rights.21

By comparison, the right to enjoy the benefits of scientific progress and its applications seems less relevant to the subject of culture heritage. Nevertheless, the CESCR broadly interpreted ‘culture’ to encompass scientific endeavours in General Comment No. 25: Culture is an inclusive concept encompassing all manifestations of human existence. Cultural life is therefore larger than science, as it includes other aspects of human existence; it is, however, reasonable to include scientific activity in cultural life. Thus, the right of everyone to take part in cultural life includes the right of every person to take part in scientific progress and in decisions concerning its direction. This interpretation is also implied by the principles of participation and inclusiveness underlying the Covenant and by the expression, ‘to enjoy the benefits of scientific progress’. Such benefits are not restricted to the material benefits or products of scientific advancement, but include the development of the critical mind and faculties associated with doing science.22

The Committee’s position is unsurprising, considering that many cultural groups do not distinguish between science and culture – or, in the context of indigenous cultural heritage, traditional knowledge (TK) and traditional cultural expressions (TCEs). As the World Intellectual Property Organization (WIPO) noted in a recently updated booklet on the topic: The distinction between TK and TCEs does not necessarily represent any of the particular holders’ holistic comprehension of their own integrated heritage. For many holders, TK and its form of expression are seen as an inseparable whole. For example, a traditional tool may embody TK but also may be seen as a TCE in itself because of its design and ornamentation.23

Likewise, Christoph Antons observed, “in the world-view of many indigenous and local communities, cultural expressions are inseparable from the social and natural environment, in which they are produced”.24

Ibid. CESCR (n 18) para 10. 23 World Intellectual Property Organization, Intellectual Property and Genetic Resources, Traditional Knowledge and Traditional Cultural Expressions (Geneva: World Intellectual Property Organization 2020) 13. 24 Christoph Antons, ‘Introduction’ in Christoph Antons (ed), Traditional Knowledge, Traditional Cultural Expressions, and Intellectual Property Law in the Asia-Pacific Region (Alphen aan den Rijn: Wolters Kluwer) 4. 21 22

300  Research handbook on intellectual property and cultural heritage Other International Obligations Beyond Article 15, the ICESCR and the International Covenant on Civil and Political Rights have additional provisions that are relevant to the subject of cultural heritage, such as the right to self-determination, the right to education, the right to freedom of opinion and expression, the right to freedom of association and the right to privacy. In addition, cultural heritage has been the focus of a number of international human rights or heritage instruments. In October 2003, delegates of 190 countries adopted the Convention on the Safeguarding of Intangible Cultural Heritage, which was developed under the auspices of the UN Educational, Scientific and Cultural Organization (UNESCO). Entered into force in April 2006, this Convention sought to safeguard intangible cultural heritage, ensure its respect and appreciation, raise awareness of its importance and facilitate international cooperation and assistance. Two years later, delegates from 148 countries adopted the Convention on the Protection and Promotion of the Diversity of Cultural Expressions, which was also developed under the auspices of UNESCO. Entered into force in March 2007, this convention aimed “to protect and promote the diversity of cultural expressions[,] … to create the conditions for cultures to flourish and to freely interact in a mutually beneficial manner … [and] to encourage dialogue among cultures”. In September 2007, the UN General Assembly adopted the Declaration on the Rights of Indigenous Peoples, which has been available in draft form since August 1994. Particularly relevant to the subject of cultural heritage is Article 31(1), which provides: 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 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.

The mention of ‘intellectual property’ in this provision is notable because it not only specifies the modality of protection but also deviates from the more abstract focus on moral and material interests in the UDHR and the ICESCR.25 Since its adoption, this provision has found support in all three of the CESCR’s interpretive comments on Article 15.26

TENSIONS AND CONFLICTS In many situations, the three rights laid down in Article 15 of the ICESCR complement and reinforce each other. Leading examples include the protection of intangible cultural heritage through copyrights, trademarks (in particular, certification marks), patents, trade secrets, industrial designs, geographical indications and other forms of intellectual property rights, including sui generis arrangements. Nevertheless, when intellectual property rights are

Farida Shaheed, ‘Cultural Rights’ (A/70/279, 4 August 2015) para 36. CESCR (n 9) para 32; CESCR (n 20) para 37; CESCR (n 18) para 40.

25 26

Intellectual property, cultural heritage, and human rights  301 deployed to protect cultural materials, these rights can also create tensions and conflicts. This section provides three sets of illustrations. Production of User-Generated Content The first illustration concerns the production of user-generated content, such as digitally altered images, music remixes, video mash-ups, synchronised animations, machinimas, parodies and satires, and other fanworks. While the creation of the underlying copyrighted works implicates the right to take part in cultural life and the right to the protection of interests resulting from intellectual productions, the use of these works to create follow-on creations also involves the same rights, except that the bearers are users (and often the copyright holders of the user-generated content). In many follow-on creations, including most notably parodies and satires, the use of copyrighted works also implicates the users’ rights to freedom of opinion and expression. In the famous case of Eldred v. Ashcroft, the US Supreme Court took the position that the First Amendment to the US Constitution focuses on “the freedom to make – or decline to make – one’s own speech … [but] bears less heavily when speakers assert the right to make other people’s speeches”.27 However, there remains no consensus, especially at the international level, on whether the right to freedom of opinion and expression will vary based on whether the speech is one’s own or that of others. Moreover, as Frank La Rue, the former UN Special Rapporteur on the Promotion and Protection of the Right to Freedom of Opinion and Expression, reminded us, “[t]he right to freedom of opinion and expression is as much a fundamental right on its own accord as it is an ‘enabler’ of other rights”.28 In the digital environment, users who cannot exercise this right are unlikely to be able to effectively function and fully realise themselves.29 Any impact on the users’ rights to freedom of opinion and expression will likely affect their abilities to enjoy and exercise other human rights, including the rights covered in Article 15 of the ICESCR. It is therefore no surprise that countries have been slowly adopting new legislation to facilitate the production of user-generated content and to strike a better balance in the copyright system. Since its emergence in the mid-1990s, the transformative use doctrine in US copyright law has facilitated the creation of parodies, satires and other user-generated content.30 In June 2012, Canada introduced a new copyright exception for non-commercial user-generated content, charting a path for emulation by other jurisdictions.31 The Irish Copyright Review Committee also proposed a new copyright exception for innovation to foster greater transformative or innovative use of copyrighted works.32 In October 2014, the United Kingdom

537 U.S. 186, 221 (2003). Frank La Rue, ‘Report of the Special Rapporteur on the Promotion and Protection of the Right to Freedom of Opinion and Expression’ (A/HRC/17/27, 16 May 2011) para 22. 29 Laurence R. Helfer and Graeme W. Austin, Human Rights and Intellectual Property: Mapping the Global Interface (Cambridge: Cambridge University Press 2011) 322. 30 Marshall Leaffer, ‘Fair Use, Transformative Use and the First Amendment’ in Paul L.C. Torremans (ed), Intellectual Property Law and Human Rights, 4th edn (Alphen aan den Rijn: Wolters Kluwer 2020). 31 Peter K. Yu, ‘Can the Canadian UGC Exception Be Transplanted Abroad?’ (2014) 26 Intellectual Property Journal 175. 32 Irish Copyright Review Committee, Modernising Copyright (2013) 72–5. 27 28

302  Research handbook on intellectual property and cultural heritage added Section 30A to the Copyright, Designs and Patents Act 1988, creating a new copyright exception for caricature, parody or pastiche. At the regional level, Article 17(7) of the Directive on Copyright in the Digital Single Market requires EU members to ensure that users are able to rely on existing copyright exceptions for quotation, criticism, review and the purposes of caricature, parody or pastiche when uploading content and making it available through online content-sharing services. Before the adoption of this directive, the Court of Justice of the European Union, in Deckmyn v Vandersteen, also underscored the need to “strike a fair balance between [the interests of the copyright holder and] … the freedom of expression of the user of a protected work who is relying on the exception for parody”.33 From a human rights standpoint, the arrival of this new group of follow-on creators is interesting because it responded to a query raised more than seven decades ago when the UDHR was being drafted. At that time, some delegates questioned whether Article 27 belonged to the instrument. For instance, British delegate Freda Corbet reminded her fellow drafters that “the declaration of human rights should be universal in nature and only recognize general principles that were valid for all men [and women]”.34 Australian delegate Alan Watt also noted that “the indisputable rights of the intellectual worker could not appear beside fundamental rights of a more general nature, such as freedom of thought, religious freedom or the right to work”.35 In addition, delegates from India and the UK “felt that no special group should be singled out for attention”.36 Thanks to new technology and increased digital literacy, the ability to create is no longer limited to a small subclass of ‘intellectual workers’ or ‘creative labourers’. Instead, most individuals now have the ability to exploit the right to the protection of interests resulting from intellectual productions. As this community of creative individuals continues to grow, this right will become even more universal. To a large extent, the internet and the digital revolution have rendered irrelevant the once-heated debate about the appropriateness of Article 27. It has also made salient the two groups of authors whose human rights have been implicated by the production of user-generated content: the authors of the underlying copyrighted works and those of follow-on creations. Indigenous Cultural Heritage The second illustration relates to the unauthorised reproduction of indigenous cultural heritage. Although such reproduction could promote the right to take part in cultural life, the right to the protection of interests resulting from intellectual productions and the right to freedom of opinion and expression, we should not overlook its negative impact on the human rights of indigenous authors. Indeed, as we sometimes encounter in mass media or entertainment, indigenous creations can be used in culturally insensitive ways that harm the authors and their respective communities.37

[2014] ECLI:​EU:​C:​2014:​2132 (Grand Chamber). Johannes Morsink, The Universal Declaration of Human Rights: Origins, Drafting, and Intent (Philadelphia: University of Pennsylvania Press 1999) 221. 35 Ibid. 36 Ibid 220. 37 Yu (n 5) 456. 33 34

Intellectual property, cultural heritage, and human rights  303 Due to colonial and other reasons, indigenous cultural heritage has traditionally been left unprotected. Although policymakers and commentators have extolled the benefits of the public domain and actively call for open access arrangements, those arrangements pose challenges to indigenous communities.38 As Michael Brown pointed out, “from the indigenous-rights perspective, the public domain is the problem, not the solution, because it defines traditional knowledge as a freely available resource”.39 Likewise, Anupam Chander and Madhavi Sunder reminded us, “free and open access had the tendency to suggest ‘a commons where resources are up for grabs by the most technologically advanced’”.40 Because one’s success in the commons often depends on factors such as knowledge, wealth, power, access and ability, an open access approach does not benefit everybody equally. Taking note of the challenge posed to indigenous communities and their cultural heritage, policymakers and commentators have actively pushed for greater protection of traditional knowledge and traditional cultural expressions at the global level, in addition to protections that they have already received in some jurisdictions at the domestic level.41 In September 2000, WIPO established the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore.42 This committee sought to explore “the development of an international legal instrument or instruments for the effective protection of traditional cultural expressions and traditional knowledge, and to address the intellectual property aspects of access to and benefit-sharing in genetic resources”.43 In addition, countries and their supportive commentators and non-governmental organisations have pushed for defensive measures.44 In November 2003, Switzerland proposed an amendment to the Patent Cooperation Treaty Regulations that would explicitly enable national patent legislation to require the disclosure of the traditional knowledge and genetic resources used in inventions.45 Although the proposed requirement was optional, it would enable the

38 Anupam Chander and Madhavi Sunder, ‘The Romance of the Public Domain’ (2004) 92 California Law Review 1331, 1351–4; Graham Dutfield, ‘Legal and Economic Aspects of Traditional Knowledge’ in Keith E. Maskus and Jerome H. Reichman (eds), International Public Goods and Transfer of Technology under a Globalized Intellectual Property Regime (New York: Cambridge University Press 2005) 531. 39 Michael F. Brown, Who Owns Native Culture? (Cambridge, MA: Harvard University Press 2003) 237. 40 Chander and Sunder (n 38) 1356, fn. 131. 41 Christoph Antons and William Logan (eds), Intellectual Property, Cultural Property and Intangible Cultural Heritage (Abingdon: Routledge 2018) 191–256; Christoph B. Graber, Karolina Kuprecht and Jessica C. Lai (eds), International Trade in Indigenous Cultural Heritage: Legal and Policy Issues (Cheltenham, UK and Northampton, MA, USA: Edward Elgar Publishing 2012) 331–459; Matthew Rimmer (ed), Indigenous Intellectual Property: A Handbook of Contemporary Research (Cheltenham, UK and Northampton, MA, USA: Edward Elgar Publishing 2015) 497–592; Evana Wright, Protecting Traditional Knowledge: Lessons from Global Case Studies (Cheltenham, UK and Northampton, MA, USA: Edward Elgar Publishing 2020). 42 Daniel F. Robinson, Ahmed Abdel-Latif and Pedro Roffe (eds), Protecting Traditional Knowledge: The WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (Abingdon: Routledge 2017). 43 Yu (n 13) 84, fn. 193. 44 Shaheed (n 25) para 35. 45 World Intellectual Property Organization, ‘Proposals by Switzerland Regarding the Declaration of the Source of Genetic Resources and Traditional Knowledge in Patent Applications’ (PCT/R/WG/5/11

304  Research handbook on intellectual property and cultural heritage disclosed information to become part of international patent applications.46 Three years later, a group of developing countries advanced a similar proposal at the World Trade Organization (WTO) to amend the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement). Known widely as Article 29bis, this proposal called for the creation in all WTO members of a new disclosure obligation.47 Outside the intellectual property and trade arenas, there have been other developments. In June 1992, the Convention on Biological Diversity (CBD) was established to promote “the conservation of biological diversity, the sustainable use of its components and the fair and equitable sharing of the benefits arising out of the utilization of genetic resources”. Less than two decades later, the Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of Benefits Arising from Their Utilization to the Convention on Biological Diversity was adopted to promote the fair and equitable sharing of benefits arising from the utilisation of genetic resources. This protocol entered into force on 12 October 2014. Shortly before the establishment of the CBD, the UN Food and Agriculture Organization (FAO) adopted Resolution 5/89. Providing an agreed interpretation of the International Undertaking on Plant Genetic Resources for Food and Agriculture, this resolution recognised farmers’ rights, which included the rights of traditional farmers in indigenous communities.48 The International Undertaking eventually evolved into the International Treaty on Plant Genetic Resources for Food and Agriculture, which the FAO adopted in November 2001. Taken together, all of these international instruments have helped pave the way for greater protection of traditional knowledge.49 Nevertheless, it is not always easy to determine who owns what – and, by extension, how to protect the right to the protection of interests resulting from intellectual productions in the context of indigenous cultural heritage. Although there is a general “presumption that Western nations prefer private ownership and … indigenous peoples prefer group or common ownership”,50 not all indigenous cultural works or objects are intended to be communal. As the late Erica-Irene Daes, the former Special Rapporteur of the UN Sub-Commission on Prevention of Discrimination and Protection of Minorities, observed, “although heritage is communal, there is usually an individual who can best be described as Rev., 19 November 2003); Georges Bauer, Cyrill Michael Berger and Martin Girsberger, ‘Disclosure Requirements: Switzerland’s Perspective’ in Robinson, Abdel-Latif and Roffe (n 42). 46 Emanuela Arezzo, ‘Struggling around the “Natural” Divide: The Protection of Tangible and Intangible Indigenous Property’ (2007) 25 Cardozo Arts and Entertainment Law Journal 367, 381–2. 47 World Trade Organization, ‘Doha Work Programme – The Outstanding Implementation Issue on the Relationship between the TRIPS Agreement and the Convention on Biological Diversity: Communication from Brazil, China, Colombia, Cuba, India, Pakistan, Peru, Thailand and Tanzania’ (WT/GC/W/564/Rev.2, 5 July 2006). 48 Peter K. Yu, ‘A Tale of Two Development Agendas’ (2009) 35 Ohio Northern University Law Review 465, 534–6. The approaches taken in this treaty – for example, the acknowledgment that “plant genetic resources for food and agriculture are the raw material indispensable for crop genetic improvement” – does not always coincide with the worldviews of indigenous communities. Peter Drahos, Intellectual Property, Indigenous People and Their Knowledge (Cambridge: Cambridge University Press 2014) 85. 49 Keith Aoki, Seed Wars: Controversies and Cases on Plant Genetic Resources and Intellectual Property (Durham, NC: Carolina Academic Press 2008) 126–7; Kal Raustiala and David G. Victor, ‘The Regime Complex for Plant Genetic Resources’ (2004) 58 International Organization 277, 304; Yu (n 5) 439. 50 Sarah Harding, ‘Value, Obligation and Cultural Heritage’ (1999) 31 Arizona State Law Journal 291, 304.

Intellectual property, cultural heritage, and human rights  305 a custodian or caretaker of each song, story, name, medicine, sacred place and other aspect of a people’s heritage”.51 Likewise, Michael Harkin reminded us that the “masks and ceremonial objects of the Kwakiutl, items associated with the potlatch ritual, were not communal but intensely personal, having been created for, and owned by, specific individuals”.52 Exclusive possession and control can also be found in “some of the songs of the Suya, … the sacred objects of the Australian Aboriginal people” and “the story of [the] deeds” of a warrior in the Kiowa tribe.53 Given these complications, there is a general consensus that indigenous communities should be able to determine for themselves how their knowledge, innovations and practices are to be protected.54 Article 1(1) of the ICESCR declares emphatically that “[a]ll peoples have the right of self-determination”. Article 18 of the Declaration on the Rights of Indigenous Peoples further states that “[i]ndigenous peoples have the right to participate in decision-making in matters which would affect their rights, through representatives chosen by themselves in accordance with their own procedures”. As Professor Daes explained: Indigenous peoples have always had their own laws and procedures for protecting their heritage and for determining when and with whom their heritage can be shared. The rules can be complex and they vary greatly among different indigenous peoples. To describe these rules thoroughly would be an almost impossible task; in any case, each indigenous people must remain free to interpret its own system of laws, as it understands them.55

Likewise, Angela Riley observed, “for a tribe, determining the destiny of collective property, particularly that which is sacred and intended solely for use and practice within the collective, is a crucial element of self-determination”.56 Museums, Libraries and Archives The final illustration pertains to the unauthorised digitisation, sharing or dissemination of cultural works by museums, libraries and archives. By preserving cultural materials and promoting their availability and accessibility,57 cultural institutions help realise the right to take part in cultural life and the right to enjoy the benefits of scientific progress and its applications. 51 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, 28 July 1993) para 29. 52 Sarah Harding, ‘Defining Traditional Knowledge – Lessons from Cultural Property’ (2003) 11 Cardozo Journal of International and Comparative Law 511, 516. 53 Candace S. Greene and Thomas D. Drescher, ‘The Tipi with Battle Pictures: The Kiowa Tradition of Intangible Property Rights’ (1994) 84 Trademark Reporter 418, 427–33; Harding (n 50) 306. 54 Daes (n 51) para 27; Angela R. Riley, ‘Recovering Collectivity: Group Rights to Intellectual Property in Indigenous Communities’ (2000) 18 Cardozo Arts and Entertainment Law Journal 175, 204–05; Yu (n 5) 487–8. 55 Daes (n 51) para 27. 56 Riley (n 54) 204–05. 57 Lucky Belder, ‘Museums Revisited: The Position of the Museum in the New Governance of the Protection of Cultural Heritage and Cultural Diversity’ in Helle Porsdam (ed), Copyrighting Creativity: Creative Values, Cultural Heritage Institutions and Systems of Intellectual Property (Abingdon: Routledge 2015) 37; Darryl Mead and Fred Saunderson, ‘Libraries, Creativity and Copyright’ in Porsdam (above) 53; Wend Wendland, ‘Safeguarding Cultural Heritage, Protecting Intellectual Property and Respecting the Rights and Interests of Indigenous Communities: What Role for Museums, Archives

306  Research handbook on intellectual property and cultural heritage To the extent that they help current and future creators, these institutions also promote the right to the protection of interests resulting from intellectual productions. As the CESCR stated in General Comment No. 21, “[c]ultural heritage must be preserved, developed, enriched and transmitted to future generations as a record of human experience and aspirations, in order to encourage creativity in all its diversity and to inspire a genuine dialogue between cultures”.58 Taking note of the special role children have played “as the bearers and transmitters of cultural values from generation to generation”, the Committee further called on state parties to “take all the steps necessary to stimulate and develop children’s full potential in the area of cultural life”.59 Given the important roles played by cultural institutions, it is no surprise that countries have provided special exceptions in their copyright regimes. For example, Article 5(2)(c) of the EU Information Society Directive provides for an exception to the reproduction right “in respect of specific acts of reproduction made by publicly accessible libraries, educational establishments or museums, or by archives, which are not for direct or indirect economic or commercial advantage”. Section 108 of the US Copyright Act also creates a copyright limitation for the reproduction of copyrighted works by libraries and archives. Likewise, Section 1201(d) creates in the anti-circumvention regime a specific exemption for non-profit libraries, archives and educational institutions. When indigenous cultural materials are being digitised, shared or disseminated, the analysis becomes more complicated.60 To begin with, many indigenous communities hesitate to disclose culturally sensitive information, fearing that such disclosure would undermine the “unique spiritual and cultural character” of the relevant cultural works,61 reduce cultural privacy,62 open themselves to misappropriation or misuse or even endanger the survival of their communities.63 As a result, the goals of these communities often conflict with those of cultural institutions, which aim to serve a much larger, and often non-indigenous, population.64

and Libraries?’, https://​icme​.mini​.icom​.museum/​wp​-content/​uploads/​sites/​16/​2019/​01/​ICME​_2005​ _wendland​.pdf, accessed 25 September 2021. 58 CESCR (n 20) para 50(a). 59 Ibid para 26. 60 Molly Torsen and Jane Anderson, Intellectual Property and the Safeguarding of Traditional Cultures: Legal Issues and Practical Options for Museums, Libraries and Archives (Geneva: World Intellectual Property Organization 2010). 61 Chidi Oguamanam, International Law and Indigenous Knowledge: Intellectual Property, Plant Biodiversity, and Traditional Medicine (Toronto: University of Toronto Press 2006) 151. 62 Bruce Baer Arnold, ‘Dignity, Trust and Identity: Private Spheres and Indigenous Intellectual Property’ in Rimmer (n 41); Brown (n 39) 27–42; Yu (n 5) 455–9. 63 Christine Haight Farley, ‘Protecting Folklore of Indigenous Peoples: Is Intellectual Property the Answer?’ (1997) 30 Connecticut Law Review 1, 15; Angela R. Riley, ‘Indigenous Peoples and the Promise of Globalization: An Essay on Rights and Responsibilities’ (2004) 14 Kansas Journal of Law and Public Policy 155, 160; Wendland (n 57); Yu (n 5) 496. 64 Dev Gangjee, ‘Geographical Indications and Human Rights’ in Torremans, Intellectual Property Law and Human Rights (n 30) 858; Naomi Mezey, ‘The Paradoxes of Cultural Property’ (2007) 107 Columbia Law Review 2004, 2010; Yu (n 5) 471–2.

Intellectual property, cultural heritage, and human rights  307 Moreover, culture is never static, but dynamic, fluid and constantly evolving.65 Some cultural groups also focus more on the creative process than on the product of that process.66 A case in point is the Igbo mbaris in Nigeria. These artfully created structures have strong aesthetic appeal, yet they are seemingly ignored, and sometimes destroyed, after their completion. Many conservationists understandably want to collect these artifacts and facilitate their display in museums or other cultural institutions. Because these institutions will promote access and appreciation, they will help realise the right to take part in cultural life. As the CESCR made clear in General Comment No. 21, states should protect “the right of everyone … to know and understand his or her own culture and that of others through education and information”.67 To the extent that mbaris can be studied scientifically, the collection – and, where relevant, digitisation – will also promote the right to enjoy the benefits of scientific progress and its applications. Nevertheless, such a collection-driven approach does not sit well with the customs and preferences of the Igbo. As Sarah Harding observed: Collect[ors] choose to reify the objects themselves, placing them in hermetically sealed display cases, whereas in many instances, … indigenous peoples desire to preserve the spirit of the object over the object itself. Often the destruction, neglect, or seclusion of the object is, in fact, central to the preservation of the spirit, as is the case with the mbari house of the Igbo….68

Considering that “[t]he Igbo intentionally destroy or neglect their artfully created structures to ensure the vitality of the urge to recreate”,69 the collection and display of mbaris will prevent these artifacts from serving their cultural functions, thereby undermining the Igbo’s right to take part in cultural life.

THREE-STEP BALANCING PROCESS In light of these three sets of illustrations – as well as other situations involving competing human rights interests, such as the creation of appropriation art – it is worthwhile to think about ways to address the tensions and conflicts between human rights and intellectual property rights. Since the mid-2000s, a fast-expanding literature has emerged to identify ways to alleviate these tensions and conflicts. This chapter contributes to this debate by advancing a three-step balancing process that is informed by the text, drafting history and subsequent interpretations of Article 27 of the UDHR and Article 15 of the ICESCR.

65 Michael J. Balick, ‘Traditional Knowledge: Lessons from the Past, Lessons for the Future’ in Charles R. McManis (ed), Biodiversity and the Law: Intellectual Property, Biotechnology and Traditional Knowledge (London: Earthscan 2007) 280; Harding (n 50) 334; Susan Scafidi, Who Owns Culture?: Appropriation and Authenticity in American Law (New Brunswick: Rutgers University Press 2005) xii. 66 Arezzo (n 46) 371; Harding (n 50) 309; Yu (n 5) 476–8. 67 CESCR (n 20) para 15(b). 68 Harding (n 50) 312. 69 Ibid 309.

308  Research handbook on intellectual property and cultural heritage Human Rights Primacy To address the tensions and conflicts between human rights and intellectual property rights, policymakers, commentators and intergovernmental organisations have identified two diametrically opposed approaches: the conflict approach and the co-existence approach.70 While the former views the two sets of rights as being in fundamental conflict, the latter considers them essentially compatible. Although scholars were once divided between these two approaches, most of them, especially those subscribing to a positivist conception of human rights, now recognise that some aspects of intellectual property rights are protected in international or regional human rights instruments while other aspects do not have any human rights basis. Given the differing levels of protection, it is important to separate the conflicts between human rights and intellectual property rights into internal and external conflicts.71 While internal conflicts exist only within the human rights regime – thereby requiring approaches to resolving competing fundamental rights, which will be discussed in greater detail below – external conflicts suggest that intellectual property rights have expanded beyond the requirements of international or regional human rights instruments. To resolve the latter, state parties can apply the principle of human rights primacy. Endorsed by the UN Sub-Commission on the Promotion and Protection of Human Rights in Resolution 2000/7 and reaffirmed in Resolution 2001/21, this principle subordinates the non-human rights aspects of intellectual property rights to human rights obligations.72 Intra-Provision Balancing Once a state party has addressed the external conflicts, it needs to balance the right to the protection of interests resulting from intellectual productions with other competing human rights.73 To help make this balancing manageable, this section calls on the party to first focus on the balancing within Article 15 of the ICESCR before expanding to other human rights. This approach, which prioritises intra-provision balancing, is strongly supported by the drafting history of both the UDHR and the ICESCR. It takes account of the strong interdependent relationship between Article 27(1) and (2) of the UDHR and Article 15(1)(a), (b), (c) and (3) of the ICESCR. Although the paragraphs concerning these disparate rights were analysed, debated and voted on separately, they were often discussed close in time. These different paragraphs were also included in the same article for one obvious reason: they serve common

70 Laurence R. Helfer, ‘Human Rights and Intellectual Property: Conflict or Coexistence?’ (2003) 5 Minnesota Intellectual Property Review 47, 48–9; Paul L.C. Torremans, ‘Copyright (and Other Intellectual Property Rights) as a Human Right’ in Torremans, Intellectual Property Law and Human Rights (n 30) 246–7; Yu (n 8) 709–11. 71 Peter K. Yu, ‘Intellectual Property and Human Rights in the Nonmultilateral Era’ (2012) 64 Florida Law Review 1045, 1091–6; Yu, ‘Reconceptualizing Intellectual Property Interests’ (n 6) 1075–123. 72 Sub-Commission on the Promotion and Protection of Human Rights, ‘Intellectual Property and Human Rights: Sub-Commission on Human Rights Resolution 2001/21’ (E/CN.4/Sub.2/RES/2001/21, 16 August 2001) para 3; Sub-Commission on the Promotion and Protection of Human Rights, ‘Intellectual Property Rights and Human Rights: Sub-Commission on Human Rights Resolution 2000/7’ (E/CN.4/Sub.2/RES/2000/7, 17 August 2000) para 3; Yu, ‘Reconceptualizing Intellectual Property Interests’ (n 6) 1092–3. 73 CESCR (n 9) para 35.

Intellectual property, cultural heritage, and human rights  309 goals and are “intrinsically linked” to each other.74 As Farida Shaheed, the former Special Rapporteur in the Field of Cultural Rights, declared, “[t]he right to science and culture – understood as encompassing [the three rights enshrined in Article 15 of the ICESCR] – offers a particularly promising framework for reconciliation”.75 Given this interdependent relationship, a misinterpretation of one paragraph of Article 15 may adversely affect a state party’s ability to fulfil the objectives of the other paragraphs – either by taking away the synergistic effect or by creating obstacles to the full realisation of those objectives. The converse is also true: the proper interpretation of one paragraph will help the party realise the objectives of the other paragraphs. In General Comment No. 17, the CESCR noted that the paragraphs in Article 15 of the ICESCR are “at the same time mutually reinforcing and reciprocally limitative”.76 The same can also be said of Article 27(1) and (2) of the UDHR. In an earlier work, I advocated the use of the sustainable development concept to reconcile the competing objectives of the provisions in Article 27 of the UDHR and Article 15 of the ICESCR.77 As the Brundtland Commission declared, “sustainable development is a process of change in which the exploitation of resources, the direction of investments, the orientation of technological development, and institutional change are all in harmony and enhance both current and future potential to meet human needs and aspirations”.78 I use this concept specifically because societies not only need to meet their current needs by striking an appropriate balance in the intellectual property system, but they also need to preserve the potential for future generations to meet their own needs. For a subject that involves considerable cross-generation developments such as cultural heritage, the sustainable development concept can be very helpful, not to mention its relevance to the UN Sustainable Development Goals. While Target 11.4 calls for “[s]trengthen[ed] efforts to protect and safeguard the world’s cultural and natural heritage”, Targets 8.9 and 12.b underscore the need to “promot[e] local culture and products”. Inter-Provision Balancing Once a state party has completed intra-provision balancing, it can expand the balancing exercise beyond Article 15 of the ICESCR to cover all other human rights. To improve effectiveness, the party should start with those rights that directly conflict with the right to the protection of interests resulting from intellectual productions before moving on to the remaining rights.79

74 Ibid para 4; Audrey R. Chapman, ‘Core Obligations Related to ICESCR Article 15(1)(c)’ in Audrey Chapman and Sage Russell (eds), Core Obligations: Building a Framework for Economic, Social and Cultural Rights (Antwerp: Intersentia 2002) 314; E.S. Nwauche, ‘Human Rights – Relevant Considerations in Respect of IP and Competition Law’ (2005) 2 SCRIPT-ed 501, 503–04. 75 Shaheed (n 16) para 4. 76 CESCR (n 9) para 4. 77 Peter K. Yu, ‘Intellectual Property and the Information Ecosystem’ (2005) Michigan State Law Review 1, 19. 78 World Commission on Environment and Development, Our Common Future (Oxford: Oxford University Press 1987) 46. 79 Yu, ‘Reconceptualizing Intellectual Property Interests’ (n 6) 1118–19.

310  Research handbook on intellectual property and cultural heritage One may question whether the proposed three-step balancing process can be reconciled with the “universal, indivisible and interdependent and interrelated” nature of human rights, as emphasised in Paragraph 5 of the Vienna Declaration and Programme of Action. Nevertheless, this process does not presume a hierarchy of rights, which the drafters of both the UDHR and the ICESCR have rejected. Rather, it outlines a sequence that calls on state parties to tackle conflicts that are the most challenging or that can benefit from reconciliation before moving on to areas that pose no or more limited conflicts. Even though the proposed process helps make it more manageable to resolve internal conflicts between human rights and intellectual property rights, there are inevitable conflicts that are difficult to resolve. To help address these conflicts, commentators have offered a wide variety of approaches. For example, they have discussed the distinction between true conflicts and false conflicts, drawing on conflict-of-law jurisprudence and scholarship.80 They have also “explored the use of hierarchies, balancing techniques, the proportionality doctrine, and interpretations by reference to external norms – such as scientific norms in relation to the right to enjoy the benefits of scientific progress and its applications”.81 In addition, the Ontario Human Rights Commission introduced a Policy on Competing Human Rights, which outlined a process for reconciling competing human rights claims and providing case-by-case accommodation of individual and group rights.82 In prior works, I advocated the use of the just remuneration approach to help foster compromises.83 Under this approach, “authors and inventors hold a right to remuneration (rather than exclusive control) while individuals obtain a human rights-based compulsory license (as opposed to a free license)”.84 The CESCR, the European Court of Human Rights and the Court of Appeal of England and Wales have embraced similar approaches.85 To minimise tensions and conflicts between domestic law and international or regional human rights instruments, a growing number of governments, intergovernmental and non-governmental organisations, policymakers and academic commentators have also called for greater use of human rights impact assessments and monitoring mechanisms.86

CONCLUSION Article 27 of the UDHR and Article 15 of the ICESCR offer protection to three distinct but interrelated rights: the right to take part in cultural life, the right to enjoy the benefits of sci-

80 Sharon E. Foster, ‘The Conflict between the Human Right to Education and Copyright’ in Torremans, Intellectual Property Law and Human Rights (n 30) 381–4. 81 Yu (n 13) 78–9. 82 Ontario Human Rights Commission, ‘Policy on Competing Human Rights’, http://​www​.ohrc​.on​ .ca/​en/​policy​-competing​-human​-rights, accessed 25 September 2021. 83 Yu, ‘Reconceptualizing Intellectual Property Interests’ (n 6) 1095–105. 84 Yu (n 13) 80. 85 CESCR (n 9) para 24; Laurence R. Helfer, ‘The New Innovation Frontier Revisited: Intellectual Property and the European Court of Human Rights’ in Torremans, Intellectual Property Law and Human Rights (n 30) 64–66; Yu, ‘Reconceptualizing Intellectual Property Interests’ (n 6) 1096–99. 86 Peter K Yu, ‘Digital Copyright Enforcement Measures and Their Human Rights Threats’ in Christophe Geiger (ed), Research Handbook on Human Rights and Intellectual Property (Cheltenham, UK and Northampton, MA, USA: Edward Elgar Publishing 2015) 461.

Intellectual property, cultural heritage, and human rights  311 entific progress and its applications and the right to the protection of interests resulting from intellectual productions. Engaging with these rights, as well as other human rights, this chapter highlights the complexities involved in the interplay of intellectual property and human rights in the cultural heritage context. While these rights frequently align, they have also competed against each other. To help address the resulting tensions and conflicts, this chapter advances a three-step balancing process. I hope this process will not only help illuminate the interrelationship between the different human rights implicated in the cultural heritage context, but it will also strengthen the human rights protections for both original and follow-on creators.

16. ‘Best practices’ to protect indigenous knowledge? Jessica C. Lai

INTRODUCTION Are there such things as best practices for the protection of folklore, traditional cultural expressions (TCEs), traditional knowledge (TK) and genetic resources (GRs)? In this chapter, I outline and discuss various approaches to addressing Indigenous peoples’ concerns regarding their knowledge. However, in doing so, I argue that they are far from ‘best practices’, as they perpetuate Western, modernistic and colonial ideals and constructs. In particular, they frame Indigenous knowledge as ‘other’. More problematic, they distract us from creating potentially meaningful mechanisms for protecting Indigenous knowledge. The terms used when discussing Indigenous knowledge reflect its categorisation as ‘other’. The term ‘folklore’ implies that there is something primitive, quaint and unreal about it. It is distinct from ‘modernity’. ‘Traditional cultural expression’ has the same implications. Yet, the stories of Indigenous peoples are based on their histories, genealogies, connection to the land and tied to scientific observations of their surroundings. Moreover, Indigenous understandings of the world, their stories, art forms and methods are constantly in development. They are not static.1 Similarly, ‘traditional knowledge’ implies a difference from ‘modern knowledge’. Rather than being ‘new’, rational and objective knowledge, TK is presumed to be discovered, old and obtained through subjective methodology. In reality, Indigenous knowledge is potentially no less dynamic, rational and objective than Western knowledge in relation to its context. After all, all knowledge is situated – affected by its social, political and historical context. Indigenous knowledge is merely gained from different methodology and typically not as abstracted, when compared with Western knowledge. However, it is no less ‘true’ than Western knowledge from its situated perspective. Put another way, Indigenous knowledge is knowledge. It exists in all realms of the life, to explain physical phenomena, for agriculture, sustenance and health, environmental preservation, development, art, custom, politics and trade, for example. It is not neatly contained as folklore/TCEs or TK, primitive, stuck in (typically pre-colonial or pre-settler) times and the antithesis of property and the commodified. Indigenous knowledge is in constant development and many Indigenous peoples are open to commercialising much of their knowledge (Okediji 2019, 311). Madhavi Sunder (2007, 109) summarised the romantic framing of Indigenous knowledge well:

1 Ruth Okediji (2019) explained that “In the 1960s, the tendency of the United Nations (‘U.N.’) to blend protection and preservation of physical property with the concept of cultural heritage set the stage for a view of traditional knowledge as a kind of static artifact.”

312

‘Best practices’ to protect indigenous knowledge?  313 It is often believed that this knowledge has existed for millennia and, remarkably, that it has remained static over time. We are told that proper authorship cannot be determined because the knowledge has passed through oral tradition and was not written down. Even if inscribed, we may not locate a single author; traditional knowledge is often communally held. Now mix in the historic conception of indigenous and third-world peoples as the anti-West: anti-commodification, anti-property, and anti-markets. The result is that, partly because of the difficulties of fitting poor people’s knowledge into western frameworks and partly because this knowledge is valued as the opposite of property, the wealth of creative knowledge and capacity for knowledge-creation of the poor is often overlooked.

The framing matters because it results in the belief that Indigenous knowledge is not capable of being the subject of intellectual property. This means that it is not given the same legal protection and does not get the attendant rights and investment and commercialisation opportunities. Instead, it is presumed to constitute ‘raw materials’ in the public domain, wherefrom it can be taken and turned into intellectual property. As discussed in this chapter, the consequence of this is that many of the mechanisms used and currently being supported to address Indigenous concerns are more about facilitating access to Indigenous knowledge through Western constructs, rather than about how to recognise and protect Indigenous knowledge as knowledge. The following section of this chapter discusses approaches that blur the public and private binary, namely the domain public payant system and extension of the Creative Commons model. This is followed by a look at two approaches that interface with existing intellectual property. These are databases to be used by patent offices and disclosure of origin requirements in patent law. The final approaches addressed are prior informed consent (PIC) and access and benefit sharing (ABS) agreements. These approaches are then critiqued before suggestions for a way forward are made.

BLURRING THE PUBLIC AND THE PRIVATE Domaine Public Payant A domaine public payant system is a ‘paying public domain’. Originally introduced to apply to folklore, it allows for the descendants of authors of folklore to be compensated for its use. This system was used in the 1976 Tunis Model of Law on Copyright for Developing Countries and the 1977 Bangui Agreement, which stated that works of folklore that are in the public domain “may be used without restriction, subject to the payment of a fee”.2 Per the domaine public payant system, the source community has no decision-making ability over the use. They are simply compensated for the use. Put another way, it is not a property-based system, as the descendants are not given exclusive rights. It creates a liability rule – no one can deny a user’s ability to use a work, however the user must pay for that use. Suggestions have been made that a domaine public payant system could be implemented in the TK context. This would involve compulsory licensing to require that users of TK pay source communities for the use of their TK (de Werra 2009, 169–171). Like the domaine public payant system, the source communities would not have any right to object to third-party use, but merely to be compensated for it.



2

See also WIPO 2010, annex, paras 55–58.

314  Research handbook on intellectual property and cultural heritage Whether for folklore or TK, domaine public payant systems blur the line between the public and the privatised. This is because they require payment for use of something that is in the public domain. While this might help to shift the perception that Indigenous knowledge is free for the taking, it does nothing to change the presumption that Indigenous knowledge is in the public domain. Closely connected to this, these systems have been criticised for failing to address the issue that Indigenous peoples are sometimes more interested in control over their knowledge and the ability to maintain their stewardship, sometimes requiring the prevention of non-steward use, rather than remuneration (Taubman 2005, 532). Put another way, Indigenous peoples often want the control that comes with exclusive rights. The aspiration of control is not only based on a narrow desire to prevent spiritual or cultural offence, or the possibility to gain economically, vis-à-vis a static and discrete piece of knowledge. It also stems from the fact that Indigenous knowledge is not frozen, but dynamic and in constant development. Indigenous peoples want to meaningfully partake in that development. This might be for economic reasons, but might also be because the knowledge forms part of the socio-cultural fabric of a community. The perception of Indigenous knowledge as static that is imbedded in domaine public payant systems is further problematic because it inherently presumes that there is a clear author or inventor. That is, the systems presume that there is an obvious person or community to be compensated, which is not always the case. In addition, it is worth noting that such systems (like collective rights management for copyright) involve large administrative undertakings. There would potentially need to be collecting societies and clear methods and avenues of distribution. Extension of the Creative Commons It has been proposed that the Creative Commons could be extended to address Indigenous knowledge (Anderson 2010; Anderson and Christen 2013, 105). Like the domaine public payant, the Creative Commons creates space between the public domain and the propertised. It does so by licensing copyright works in a manner contrary to the ‘all rights reserved’ precept of copyright. In essence, the Creative Commons licences give works that are propertised public-domain-like qualities. Copyright owners can use Creative Commons licences on their works, stipulating which exclusive rights they wish to retain and which they wish to waive. For example, the licence may require that a use be contingent upon the user attributing the original author, likewise sharing their work, not making any derivatives, or only making non-commercial use. The Creative Commons was created as a means to resist the perceived modern-day tendency to overprotect works to the detriment of the public domain, and consequently future creativity and freedom of expression (Lessig 2004, 8–9). Jane Anderson (2010, paras 3.3.2.4–3.3.2.5) has argued that expanding the Creative Commons and its licence system to encompass ‘indigenous-knowledge-specific licences’ is generally advantageous because the licensing agreements could be developed in a culturally appropriate manner, to directly address Indigenous peoples’ perspectives and concerns.3 Such a ‘TK Licence’ has been created by Anderson and Christen in 2010, and includes a requirement of attribution and stipulates either commercial or non-commercial (Local Contexts, ‘TK 3 Cf. the proposal to extend the Fairtrade Label to indigenous goods and services and the development of standards required for obtaining the certification mark (Graber and Lai 2011, 300).

‘Best practices’ to protect indigenous knowledge?  315 Licences’). Anderson and Christen also created a TK Label, which goes together with works in the public domain to indicate that a work has been put in the public domain in a way that is fair and equitable, or explaining what fair and equitable use means for a particular work in the public domain (Local Contexts, ‘TK Labels’). The text accompanying the set labels can be customised for specific community rules, governance and protocols, indicating rules and responsibilities around access and use. There are analogous biocultural labels (Local Contexts, ‘BC Labels’). Creating standardised licences for such purposes comes with difficulties. For example, Indigenous peoples are by no means homogenous and the licences have to be flexible enough to reflect the needs of different Indigenous peoples (Anderson 2010, paras 3.3.2.2 and 3.4.3.1). From a more fundamental perspective, the Creative Commons is problematic because it requires the subsistence of copyright. It functions through copyright owners deciding which rights they wish to retain, and the public gains because the rights that are waived are essentially placed into a pseudo public domain, where they can be used in a way that would otherwise constitute copyright infringement. In contrast, much Indigenous knowledge is presumed to be in the public domain, where it can be freely used. By extending the Creative Commons approach through TK Licences and Labels, the public domain does not change in scope – there is no exclusive right that is waived and nothing is removed from the public domain. Instead, TK Licences and Labels are a more like an information system – they inform users about how they should behave rather than how they are legally obligated to act.

INTERFACING WITH INTELLECTUAL PROPERTY Databases and Registers There is considerable discussion around the establishment of TK databases for patent examiners to use as prior art to potentially reject applications based on novelty or inventive step. Proponents argue that such databases can reinforce the integrity of the patent system, particularly if shared with major patent offices, so long as: ● the databases are created together with Indigenous peoples; ● the data is given voluntarily, so that Indigenous peoples trust them; and ● the data is held in confidence and given legal protection, so they do not end up being a source to be mined by potential users who would otherwise never have access to such information (Anderson 2010, para. 3.4.2.1; Taubman and Leistner 2008, 87–89; von Lewinski 2008, 524–525; Wright 2020, 211, 235 and 240–241). Margo Bagley (2019) has strongly critiqued databases of Indigenous knowledge, stating that the presence of knowledge in a database does not necessarily mean that it will be found by patent examiners. If it is found and used, Bagley discussed how USPTO examiners are required to cite any reference used to reject claims, which would result in publication of information in that database (Bagley 2019, 337–339). Furthermore, the applicant could still re-draft the claim to avoid the prior art (Bagley 2019, 340). Thus, Bagley argued that databases do not offer any “additional protection from misuse that the traditional knowledge does not already have, it is simply making the knowledge more easily accessible” (2019, 340).

316  Research handbook on intellectual property and cultural heritage As with all the mechanisms discussed, databases presume that knowledge is static. Indeed, inclusion in a database could also have the effect of freezing knowledge in time (von Lewinski 2008, 524–525). Furthermore, databases cannot be used for information that a community decides is sacred, if not also secret, and not to be recorded (von Lewinski 2008, 524–525). More fundamentally, Bagley (2019) stated that it is a fallacy to call defence mechanisms, like databases, ‘protection’. She asked, “But what is the knowledge in the database being defensively protected from?” (Bagley 2019, 332). Defensive protection alone offers only illusory protection, as while databases might prevent third-party patents, they do not protect against third-party use (Bagley 2019, 337). Only ‘offensive’ protection would allow source communities to exclude third-party use and undertake exclusive exploitation as they see fit (Bagley 2019, 347). Similarly, Ruth Okediji (2019, 296) has stated that “the term defensive ‘protection’ for traditional knowledge, while a nice rhetorical move, ultimately is misleading. The various tools highlighted under this approach protect the administration of intellectual property rights, not traditional knowledge.” In addition, by calling defence mechanism ‘protection’, we might give policymakers the false sense that they have done enough and there is no uncompensated and unregulated use of Indigenous knowledge. In this vein, patent examiners may feel that searching the databases suffices, when much information will not be in the databases. More still, by calling defensive mechanisms ‘protection’, we mask the fact that the ‘protection’ actually “serve[s] as a tool of conversion-transforming indigenous and local peoples’ knowledge into a category of non-property” (Okediji 2019, 296). It is mere prior art. Disclosure of Origin A further method to bridge Indigenous peoples’ concerns with the intellectual property system is through requiring that patent applicants disclose, for example, the country of origin of any genetic material or biological resources and any TK (perhaps limited to that related to GRs) used in, or to create/make, an invention (Yu 2008, 438; Heath and Weidlich 2003, 80–81; UN 2009, 53–57; de Werra 2009, 150). A compulsory disclosure mechanism could be implemented with appropriate and proportionate consequences upon failure to comply. Disclosing the source of GRs and related TK could potentially allow for ABS and the verification of PIC (PIC and ABS are discussed below) (WIPO 2007, paras 30–31).4 A disclosure of origin requirement is seen as a way to meet Indigenous peoples’ concerns with the patent system without changing the system in any substantial way (Kongolo 2008, 47–49). In Okediji’s (2019, 273) words: “it is consistent with the institutional constraints under which WIPO operates, it aligns well with the policy objectives of the patent system, and it foreshadows a key role for patent offices in enforcing terms of access to genetic resources and traditional knowledge.” Okediji views a disclosure of origin requirement as a balanced 4 Note that New Zealand’s Patents Act 2013, ss 15 and 226, states that a Māori advisory committee is to advise the Commissioner of Patents on whether “(a) an invention claimed in a patent application is derived from Māori traditional knowledge or from indigenous plants or animals; and (b) if so, whether the commercial exploitation of that invention is likely to be contrary to Māori values.” This is for the purpose of assessing whether the commercial exploitation of an invention would be contrary to morality or public order. A disclosure of origin requirement could, firstly, help the Commissioner to decide whether it is necessary to approach the Māori advisory committee and, secondly, assist the Māori advisory committee to locate the implicated communities.

‘Best practices’ to protect indigenous knowledge?  317 means to ensure access to knowledge, while not de-valuing that knowledge. She stated (2019, 317): What is needed are levers to facilitate access to critical information that helps modern science without undermining the sources of the material/information. Not only would a disclosure of origin rule facilitate stewardship and oversight of the most economically valuable band of genetic resources and traditional knowledge, it could meaningfully signal to other firms the value located in certain indigenous communities, or shed insight on new sources of biological or genetic data, thus lowering overall information costs.

Correctly calibrated, a disclosure of origin requirement can “inject more, not less, information into the innovation ecosystem, thus benefitting scientific endeavor more broadly” (Okediji 2019, 319). Furthermore, any disclosed information would become potentially part of international patent applications, increasing transparency (Yu 2008, 437–438). At the same time, Okediji (2019, 296) acknowledged that addressing traditional knowledge in distinct areas of global patent administration may serve to undermine the interests of indigenous people and local communities. Among many groups, genetic resources and traditional knowledge are viewed as inseparable components of a dynamic system of learning and knowledge production. Dividing traditional knowledge into discretely managed components and regulating each component in disparate parts of the global IP framework harms the worldview and value system of indigenous people and local communities.

For this and other reasons (discussed further below), Okediji additionally argued for positive rights over Indigenous knowledge. A further critique of the disclosure of origin requirement is that many issues arising from the patenting of inventions derived from Indigenous knowledge and associated GRs do not relate to patent law per se. Patenting is one of the latter parts of the process to develop a product or service and bring it to market, such that patent law has limited scope to address issues such as the appropriateness of how research was undertaken, or whether there was PIC and ABS (Patenting of Life Forms Focus Group 1999). Patent law typically interests itself in the end product as compared with the prior art (and perhaps to morality and ordre public). It does not usually trouble itself with the research process by which the end product was created,5 unless this affects novelty or obviousness. Indeed, as few research and development ventures reach the patenting stage, a requirement of disclosure of origin would seldom address Indigenous concerns.

FACILITATING ACCESS AGREEMENTS There is significant push for the implementation of law regarding PIC and ABS agreements (e.g., Robinson 2015; Robinson 2012; Adhikari and Lawson 2018). As the name suggests, PIC broadly pertains to obtaining informed consent before using Indigenous knowledge, and 5 Note, however, that the European Patent Office has rejected patent claims on the basis that, at the filing date, the claimed invention could only be prepared using a method that involved the destruction of a human embryo; G 0002/06 Warf/Stem cells [2009] EPOR 1; C-34/10 Brüstle v Greenpeace (2011) OJ C 362/5.

318  Research handbook on intellectual property and cultural heritage ABS is about making access to Indigenous knowledge contingent upon an agreement to share benefits (such as any future royalties and technology transfer). Because of their root in the Rio Convention for Biological Diversity, PIC and ABS are mostly about GRs and connected knowledge. There are inherent problems with PIC in relation to Indigenous peoples. There is potentially the issue that it is not truly informed. This can be a result of researchers not taking the time and care to fully explain what they plan to do. As stated by Donna Ngaronoa Gardiner (1997, 51–52): When scientists have been challenged about the ethical concerns regarding ‘informed consent’, the response has tended to be that the Indigenous peoples would not understand any way. … In the event of a community saying no to the experimentations, Western scientists view that resistance as being based on ignorance and misunderstanding of the project’s aspirations. These attitudes reflect beliefs about western racial superiority – that western science knows best, – even if the subjects of that science do not consent. This is also a symptom of arrogance and the belief that any innumerable number of experiments can be undertaken in the name of science. The fact that Indigenous populations may not consent because of a fundamental difference in world view is of little consequence to unscrupulous companies and scientists. … Do the individuals who are giving these samples know what is happening to them? Are they consulted about further applications of the scientific findings? Are they assured of a share in any of the benefits? In almost all cases the communities have no idea as to what is being done with their gene material.

There are also bargaining power issues,6 such that – rather than being fair – ABS agreements might consolidate the power imbalance between parties (Taubman 2008, 261; Cabrera and Fred-Perron 2018, 206–207). This brings into question how most ABS agreements affect a provider community in the long term. For example, how the agreements impact the community’s relationship with and understanding of the knowledge and resource, or whether the source community indeed benefits from the agreement, either financially or in terms of capacity-building and support for the community’s ways of knowing. The bargaining power disparities might have to be addressed with regulations about what ‘informed’ means and to provide government funding or other support to Indigenous communities. However, even if agreement is reached, it might be difficult for source communities to monitor compliance and/ or enforce the agreement. PIC and ABS generally face the problem that it can be difficult to know from whom one should obtain PIC and negotiate for ABS (Lindstrom 2009, 296; Heath and Weidlich 2003, 82; Mead 1996). It might be difficult to locate the relevant individual or community, or to know whether having elder/leader consent suffices, or one requires a majority consensus or something else (Mead 1996). Power, jurisdiction and rights might be distributed differently and of different scope than as within a Western system. What constitutes ‘consent’ might vary significantly between communities. Obtaining PIC is particularly problematic when a GR or knowledge crosses community or state borders (Taubman 2008, 257; Ruiz Muller 2017; Frankel 2017). Failing to correctly navigate this can create inter- and intra-community tension (Forsyth 2013, 1–2). This can make it preferable for the potential user to deal with the state (Lindstrom 2009, 298–299). However, allowing the state to act as the ‘holder’ of knowledge 6 See Merson (2001) on how colonisation, globalisation and the green revolution have created inequity, which continues to affect power relations, despite decolonisation.

‘Best practices’ to protect indigenous knowledge?  319 and GRs might have the effect of freezing knowledge, “as bureaucratic procedures would be introduced that would undermine the non-state context in which it is generated” (Forsyth 2013, 5). Furthermore, there are issues about if and how the state might distribute any gains (Yu 2008, 469; Heath and Weidlich 2003, 8). Indeed, even if benefits reach the source community, distribution within the community can raise concerns. Furthermore, proponents of PIC and ABS ignore the effect of Western paradigms on Indigenous communities and how they might change such communities. Miranda Forsyth (2013, 7) has stated that: the commercialization potential of traditional knowledge today and increased awareness of Western intellectual property rights are likely to alter the way people view exchanges of traditional knowledge and what they use it for … This may lead to the use of powers of exclusion and control in a non-customary way.

Moreover, there is a tendency to romanticise PIC and ABS, overlooking the fact that they might bring out or perpetuate existing inequities within the source community. For example, negotiating with the ‘leaders’, ‘owners’ and ‘holders’ (those with more power within a community) might result in the marginalisation of those with less power in the community. As Forsyth also noted, in some communities, it is normal for the powerful (typically elder males) to contravene or change customary rules to their benefit, and this might be expected (Forsyth 2013, 8). As an outsider or observer, one might never learn of this. The voices of the marginalised may have no means to be heard. In this vein, customary laws might be hegemonic and gendered, and PIC and ABS might lead to gains only falling into the hands of men (Forsyth 2013, 12). PIC and ABS might even allow powerful men to take resources or rights from women and other marginalised groups (Forsyth 2013, 12; Sunder 2007, 115). It is also possible that potential users bring with them their own biases and cultural constructions. To illustrate, the West is not free from age and gender biases, and Western negotiators might be socialised to believe that it is older men who must be ‘in charge’ and/or who have the relevant rights to grant consent. Thus, the Western negotiators might consult with older men, rather than the women who might in fact be the knowledge holders.7 It is, thus, not surprising that Graham Dutfield and Uma Suthersanen (2019) have stated that ABS is only effective and equitable if the GRs and associated TK are sufficiently static, and there are clear norms between the knowledge holders and the TK and GRs, tied to specific geographic locations. Yet, this is seldom the reality. One can also argue that PIC and ABS agreements are only ‘fair’ and ‘equitable’ from one perspective. They support one value system over another (De Jonge 2011, 128). PIC and ABS are Western in construct and based in contract. They are ultimately about a provider community providing access to a user, so that they can expropriate intellectual property. In other words, PIC and ABS agreements reflect the belief that Indigenous knowledge constitutes ‘raw materials’ in the public domain, over which Indigenous peoples are wardens rather than cultivators (Sunder 2007, 105–108). Not cultivated, Indigenous knowledge is framed as being 7 E.g., Sunder (2007, 121–122) stated, “As a new study by the National Commission on Women in India shows, intellectual property laws even implicate physical security. The Report argues that TRIPs, which recharacterized women’s farming knowledge as ‘raw materials’ for corporations to appropriate, has reduced women’s profits and led to a corresponding rise in violence against women.” Citing Indian National Commission for Women 2005.

320  Research handbook on intellectual property and cultural heritage incapable of being the subject of intellectual property. It is for the West to access Indigenous knowledge (possibly through agreement and payment) and turn it into knowledge that can be intellectual property. Thus, PIC and ABS embody a capitalist model, facilitating appropriation and commodification. This is not to say that the source community does not gain anything from PIC and ABS – it might. However, PIC and ABS are not about valuing Indigenous knowledge systems the way we value the intellectual property system, but about creating mechanisms that allow for Indigenous knowledge to be taken. Moreover, PIC and ABS allow for this to happen under the guise of being ‘fair’ and ‘equitable’ in the eyes of the West. They gloss over the fact that PIC and ABS underscore the belief that Indigenous knowledge cannot be the subject of intellectual property. It is for Western entities to swoop in, abstract knowledge and create intellectual property. After all, the source communities do not end up with intellectual property, the users do.

DISTRACTIONS FROM MEANINGFUL CHANGE Overall, the approaches discussed in the foregoing highlight an uneasy juxtaposition. On the one side, there is recognition that Indigenous knowledge is different because it is more holistic, communal, tied to history, land and people, and is not necessarily served by intellectual property’s assumption that creators are rational actors with economic motivations (Judd 2019, 255). Yet, on the other side, all the approaches use paradigms that are based on law and economics justifications for protection of the intellectual – they are about financial rewards and incentives to create and to facilitate transactions/commodification.8 This uneasy juxtaposition reflects intellectual property’s legitimacy or existential crisis.9 Namely, that the justifications for intellectual property do not match up with the knowledge systems of all peoples and, indeed, intellectual property can be harmful to the poor, non-Western and women (Lai 2021; Barwa and Rai 2003; Cook and Kongcharoen 2010). As a result of this crisis, Western intellectual property proponents are scrambling to make intellectual property and its related constructs fit (Okediji 2019, 285), whether through pushing the idea that geographical indicators can be used to protect Indigenous knowledge, creating contracts (TK Licences and ABS) to control access and use, or increasing patent office access to prior art. None of the approaches involve any fundamental or substantive changes to intellectual property. Behind all of them is the presumption that Indigenous knowledge is in the public domain. Indigenous peoples are not recognised as authors and inventors of intellectual prop8 Cf. Taubman (2019, 386), who argues that intellectual property “need not be about commodification and defined by ‘propertisation’ as such.” Instead, intellectual property can be framed as providing Indigenous peoples “a say, a degree of leverage over their knowledge, their distinctive signs and symbols, and their cultural works.” 9 Taubman (2019, 383) stating “the same traditional knowledge debate has also provided an opportunity for – or even, in some instances, compelled – the conventional IP policy community to reflect deeply about the central tenets of the IP system, its core principles and cultural assumptions, and indeed its very legitimacy and fundamental policy rationales. … Critics of IP from the Indigenous perspective have helped open up a more pluralistic and inclusive view about the nature of what the IP system can and should be, whom it should benefit, and how.”

‘Best practices’ to protect indigenous knowledge?  321 erty. Instead, Indigenous knowledge is cast as ‘raw materials’ in the public domain (upstream), which allows for it to be mined and turned into ‘real intellectual property’ (downstream). Sunder has critiqued this dichotomy, arguing that it is a consequence of the deconstruction of the ‘romantic author’. She postulated that pointing out that no author creates out of thin air, but builds on things that came before, has resulted in calls to protect the public domain from enclosure.10 This has inadvertently reinforced binaries of who is or is not an author or inventor, or who should be contributing to the public domain and who can take therefrom and obtain intellectual property (Sunder 2007, 105–106). In Sunder’s words, “reifying the negative has the perverse effect of congealing poor people’s knowledge as the object of property, the raw material from which real intellectual property is derived, and obscures its status as the subject of property, deserving of the label intellectual property in its own right” (Sunder 2007, 107).11 Thus, the public domain is employed as a further means to disadvantage and subordinate disempowered groups (Chander and Sunder 2004, 1335). After all, the “recognition of boundaries in any direction – property or the public domain – can effectuate displacement of those whose interests are most easily obscured by the discourse of ‘balance’ in IP law” (Okediji 2019, 301–302).12 Yet, because the public domain is romanticised, its socio-political underpinnings and consequential distributive effects, benefitting those in power, remain opaque. That opacity hides the fact that the public domain is just as open to regulatory capture as the propertised (Salzberger 2006, 52–54). Placed in the public domain, Indigenous knowledge is free for use and propertisation through Western methodologies, which turns it into something that the law protects.13 Therefore, the discussed approaches make it easier for Western companies to expropriate Indigenous knowledge. They thereby perpetuate a Western, modernistic and colonial understanding of knowledge – namely, that Indigenous knowledge is primitive, old and too closely connected to nature to be property. Also problematic, these approaches give users of Indigenous knowledge the sense that their use is fair and ethical, because they have paid for it, there was consent and they have not been granted intellectual property when they should not have been. This places a veneer over the fact that the approaches embody Western ideals of property and contracts, and biased definitions of legally protected knowledge. We need to recognise that Indigenous knowledge systems are intellectual property systems. Thus, Indigenous knowledge can constitute the subject matter of intellectual property. A first step towards this is that we need to stop calling it ‘traditional knowledge’ and call it what it is, ‘knowledge’. After all, Indigenous people’s knowledge is developed through rational and objective observations. It is not ‘nature’ or mere ‘raw materials’. Similarly, we need to stop using the terms ‘folklore’ and ‘traditional cultural expressions’, as this is pejorative and places knowledge automatically in the public domain. Following this, we need to stop focusing on the ways in which Indigenous knowledge is different or ‘other’. Depending on the source community, it might be different in scope, in the way it is understood and in its social, cultural and spiritual context. These factors are important. However, we should not

Sunder cites Boyle (1996) as the relevant deconstructor of the romantic author. Emphasis in original. 12 See also Okediji (2018, 15), who notes that “asserting the public domain appears to be principally about protecting existing beneficiaries of the IP system.” 13 Boetang (2007, 349) notes that categorising Indigenous knowledge as ‘traditional’ feminises it “in its encounter with masculinized modernity”. See also Sherman and Wiseman (2006, 260). 10 11

322  Research handbook on intellectual property and cultural heritage let them distract us from recognising that this does not mean Indigenous peoples’ knowledge is not knowledge, that Indigenous peoples do not have ‘property systems’, or that there are no utilitarian (commodification) aspects to these systems. Indigenous peoples most certainly have rules that regulate the relationship between people and things, and people to one another vis-à-vis things. Some of those rules are very similar to Anglo-American ideals of property relationships, and Indigenous peoples are most certainly open to developing their knowledge and commercialising aspects of it. Another way to view this is that there are dangers of overstating the distinction between ‘traditional knowledge’ and ‘modern knowledge’. Both are social constructs. No one creates entirely one or the other. We are all individuals who act within a community. In the copyright context, Carys Craig (2011, 106) stated that the shared understanding that absolutely independent creation is possible “manifests some sort of shared human neurosis”. Furthermore, we are all individuals operating within a set of social relations that determine our value systems and our socially constructed sense of right and wrong. This recognition that Indigenous knowledge can be the subject of intellectual property does not mean that it must be protected by existing Western intellectual property forms, such as patents, copyright and trade marks (see, e.g., Fisher 2019, 365). However, we need to recognise and protect Indigenous knowledge in a way that recognises its value and that gives Indigenous peoples the ability to create and capture further value. Okediji has opined that, perpetuating the construction of Indigenous knowledge as not constituting the subject matter of intellectual property does not make sense from a utilitarian perspective. While different from Western knowledge (its level of abstraction and the methods used to create and know), Indigenous knowledge forms an important part of the knowledge ecosystem. Biopiracy confirms this. Thus, we need to incentivise the generation of Indigenous knowledge, and simply using defensive mechanisms, including PIC and ABS, does not do adequately do this. In Okediji’s words (2019, 312), ‘offensive’ rights are needed for Indigenous knowledge to ensure that the norms, values, and local institutions that sustain the production of traditional knowledge continue to perform these roles. There needs to be sufficient incentive to sustain the viability of traditional knowledge systems as a source of knowledge both for indigenous groups and for the international community at large.

From a different perspective, we need to ensure that Indigenous peoples have incentives to maintain their knowledge systems, as otherwise they will be incentivised by the existing intellectual property system to create in a Western way. This deprives the knowledge system of diversity of knowledge, which results in poorer creation and innovation. Put another way, we do not want everyone to create in the same way, within the same narrow categories of knowledge. Innovation is better served when there is diversity in ways of knowing and knowledge types. Moreover, as argued by Sunder (2019, 121), failing to recognise exclusive rights in Indigenous knowledge is not only negative for knowledge development, but also for social and cultural development, as well as for distributive justice: Intellectual property law is essential to development, not just in the narrow sense of efficiency but in this broader view of expanding capability for central freedoms. Surely, copyrights and patents determine our access to basic needs, from educational materials to life-saving medicines. What is less obvious is that failure to be recognized as an author or inventor may impede one’s access to

‘Best practices’ to protect indigenous knowledge?  323 these essential life goods by diminishing one’s material wealth and the capability for living a full life. Stated differently, the implications in intellectual property rights go well beyond incentives for innovation; these rights are related to questions of cultural relations, social development, and GDP growth.

Value is not only economic, but also cultural and spiritual. A rich Indigenous knowledge system can result in the flourishing of a community – financially, culturally and spiritually. Utilitarian (law and economics) justifications for intellectual property and a ‘healthy’ public domain do not address who gives to the public domain, but who gains intellectual property protection. They ignore issues relating to wealth distribution and access to goods and services (Sunder 2007, 122). However, we cannot ignore these issues, particularly not in the information age, as failure to recognise Indigenous peoples as creators of knowledge will inhibit their ability to partake effectively in the burgeoning knowledge economy. Moreover, this failure casts Indigenous peoples as mere providers of raw materials, who then require access to the ‘real intellectual property’.

THE WAY FORWARD? Lawyers are obsessed with the law and its role in regulating people’s behaviour. But law reform does not necessarily result in proportionate practical change. It typically only does so if the reform runs parallel with social and cultural change. This is because the law inescapably relies on human interpretation and discretion, and policing and enforcing the law is resource-intensive. This means that a significant part of recognising Indigenous knowledge as the subject of intellectual property involves changing social perceptions and understandings of Indigenous knowledge. There must be education and sensitisation to liabilities and responsibilities (Taubman 2019, 396), thereby raising public awareness, support and engagement (Fisher 2019, 370). To illustrate, it is important to educate people that Indigenous knowledge is not static or necessarily old, that it is not automatically in the public domain for the taking. Along these lines, Forsyth (2013, 14–24) has called for a non-proprietary ‘toolbox’ approach, which could be tailored depending on the exact local situation, ranging from the intellectual property related (such as strong authenticity-branding schemes), the intellectual property adjacent (such as ABS), creating protocols and guidelines, supporting cultural festivals, to adverse publicity and shaming. Other extra-legal methods might include empowering Indigenous peoples so that they can control and market their own knowledge products (Sunder 2007, 118), or “consumer boycotts, reprimands from trade organizations or affiliate groups, professional disciplines on researchers or scientists involved, or organized campaigns to expose the firm’s behavior to the public” (Okediji 2019, 317). These practical solutions simultaneously provide some immediate benefits to Indigenous peoples while educating the public about Indigenous knowledge. In the long run, legal recognition of Indigenous knowledge as capable of constituting intellectual property is important, because intellectual property is the mechanism by which the law recognises knowledge of value or worthy of protection. In turn, this propertisation can facilitate the capture and creation of value. It dictates control, use and access. Regarding the development of the legal mechanisms to protect Indigenous knowledge, it should go without saying that this needs to be done together with the local Indigenous peoples. The exact individuals and communities with whom to engage, and the meaning of consultation

324  Research handbook on intellectual property and cultural heritage and co-development, can only be context specific. Finally, policy- and lawmakers need to recognise that what is legally protected as intellectual property is not inherent. Its categories and scope are social constructs. Once we acknowledge that the kinds of knowledge and knowledge forms that existing intellectual property protects is a political decision, we need to be willing to change the construct of intellectual property to protect a diversity of knowledge.

REFERENCES Primary Sources C-34/10 Brüstle v Greenpeace (2011) OJ C 362/5. G 0002/06 Warf/Stem cells [2009] EPOR 1. Bangui Agreement (1977). Rio Convention on Biological Diversity, 1760 UNTS 79; 31 ILM 818 (opened for signature 5 June 1992, entered into force 29 December 1993). Tunis Model of Law on Copyright for Developing Countries (1976).

Secondary Sources Anderson, Jane E (2010) ‘Indigenous/Traditional Knowledge & Intellectual Property’, Centre for the Study of the Public Domain, Issue Paper (accessed 7 May 2021). Anderson, Jane E and Christen, Kim (2013) ‘“Chuck a Copyright on it”: Dilemmas of Digital Return and the Possibilities for Traditional Knowledge Licenses and Labels’, 7(1–2) Museum Anthropology Review 105. Bagley, Margo A (2017) ‘Of Disclosure “Straws” and IP System “Camels”’ in Daniel F Robinson, Ahmed Abdel-Latif and Pedro Roffe (eds), Protecting Traditional Knowledge (Abingdon: Routledge) 85. Bagley, Margo A (2019) ‘The Fallacy of Defensive Protection for Traditional Knowledge’, 58 Washburn Law Journal 339. Barwa, Sharmista and Rai, Shirin M (2003) ‘Knowledge and/as Power: A Feminist Critique of Trade Related Intellectual Property Rights’, 7(1) Gender, Technology and Development 91. Boetang, Boatema (2007) ‘Walking the Traditional-Modernity Tightrope: Gender Contradictions in Textile Production and Intellectual Property Law in Ghana’, 15 American University Journal of Gender, Society and Law 341. Boyle, James (1996) Shamans, Software, and Spleens: Law and the Construction of the Information Society (Cambridge, MA: Harvard University Press). Cabrera, Jorge and Fred-Perron, Medaglia (2018) ‘Current Status and Future Research Agenda on Benefit-Sharing in International Sustainable Development Law’, 17 Journal of Korean Law 179. Chander, Anupan and Sunder, Madhavi (2004) ‘The Romance of the Public Domain’, 92 California Law Review 1331. Cook, Lisa D and Kongcharoen, Chaleampong (2010) ‘The Idea Gap in Pink and Black’, NBER Working Paper No. 16331 (accessed 7 May 2021). Craig, Carys J (2011) Copyright, Communication and Culture: Towards a Relational Theory of Copyright Law (Cheltenham: Edward Elgar). De Jonge, Bram (2011) ‘What is Fair and Equitable Benefit-sharing?’, 24 Journal of Agriculture and Environmental Ethics 127, 128. de Werra, Jacques (2009) ‘Fighting Against Biopiracy: Does the Obligation to Disclose in Patent Applications Truly Help’, 42 Vanderbilt Journal of Transnational Law 143. Dutfield, Graham and Suthersanen, Uma (2019) ‘Traditional Knowledge and Genetic Resources: Observing Legal Protection through the Lens of Historical Geography and Human Rights’, 58 Washburn Law Journal 399.

‘Best practices’ to protect indigenous knowledge?  325 Fisher, William (2019) ‘Why is Traditional Knowledge Different from All Other Intellectual Property?’, 58 Washburn Law Journal 365. Forsyth, Miranda (2013) ‘How Can Traditional Knowledge Best Be Regulated? Comparing a Proprietary Rights Approach with a Regulatory Toolbox Approach’, 25(1) The Contemporary Pacific 1. Frankel, Susy (2017) ‘The Challenge of Cross-Border Protection of Traditional Knowledge’ in Daniel F Robinson, Ahmed Abdel-Latif and Pedro Roffe (eds), Protecting Traditional Knowledge (Abingdon: Routledge) 325. Graber, Christoph B and Lai, Jessica C (2011) ‘Indigenous Cultural Heritage and Fair Trade – Voluntary Certification Standards in the Light of WIPO and WTO Law and Policymaking’, 29(3) Prometheus 287. Heath, Christopher and Weidlich, Sabine (2003) ‘Intellectual Property: Suitable for Protecting Traditional Medicine?’, Intellectual Property Quarterly 169. Indian National Commission for Women (2005) ‘Impact of WTO on Women in Agriculture: A Report by Research Foundation for Science, Technology and Ecology’. Judd, Patricia L (2019) ‘The Difficulties in Harmonizing Legal Protections for Traditional Knowledge and Intellectual Property’, 58 Washburn Law Journal 249. Kongolo, Tshimanga (2008) Unsettled International Intellectual Property Issues (Alphen aan den Rijn: Kluwer Law International). Lai, Jessica C (2021) Patent Law and Women: Tackling Gender Bias in Knowledge Governance (Abingdon: Routledge). Lessig, Lawrence (2004) Free Culture (New York: The Penguin Press). Lindstrom, Lamont (2009) ‘Kava Pirates in Vanuatu?’, 16 International Journal of Cultural Property, 16, 291. Local Contexts, ‘BC Labels’ (accessed 3 May 2021). Local Contexts, ‘TK Labels’ (accessed 3 May 2021). Local Contexts, ‘TK Licences’ (accessed 4 May 2021). Mead, Aroha (1996) ‘Genealogy, Sacredness, and the Commodities Market’, 20(2) Cultural Survival: Genes, People and Property (accessed 7 May 2021). Merson, John (2001) ‘Bio-prospecting or Bio-Piracy: Intellectual Property Rights and Biodiversity in a Colonial and Postcolonial Context’, 15 Osiris 282. Ngaronoa Gardiner, Donna (1997) ‘Hands Off Our Genes: A Case Study on the Theft of Whakapapa’ in Leonie Pihama and Cherryl Waerea-i-te-rangi Smith (eds), Cultural and Intellectual Property Rights. Economics, Politics & Colonisation, vol. II (Auckland, NZ: International Research Institute for Māori and Indigenous Education, University of Auckland) 44. Okediji Ruth L (2018) ‘Traditional Knowledge and the Public Domain’, CIGI Papers No. 176. Okediji Ruth L (2019) ‘A Tiered Approach to Rights in Traditional Knowledge’, 58 Washburn Law Journal 271. Patenting of Life Forms Focus Group (1999) Māori and the Patenting of Life Form Inventions (Wellington, NZ: Ministry of Commerce). Robinson, Daniel F (2012) ‘Towards Access and Benefit-Sharing – Best Practice Pacific Case Studies’, (accessed 4 May 2021). Robinson, Daniel F (2015) Biodiversity, Access and Benefit-Sharing: Global Case Studies (Abingdon: Routledge). Ruiz Muller, Manuel (2017) ‘The Legal Protection of Widely Shared and Dispersed Traditional Knowledge’ in Daniel F Robinson, Ahmed Abdel-Latif and Pedro Roffe (eds), Protecting Traditional Knowledge (Abingdon: Routledge) 122. Salzberger, Eli M (2006) ‘Economic Analysis of the Public Domain’ in Lucie Guibault and P Bernt Hugenholtz (eds), The Future of the Public Domain: Identifying the Commons in Information Law (Alphen aan den Rijn: Kluwer Law International) 27. Sherman, Brad and Wiseman, Leanne (2006) ‘Towards an Indigenous Public Domain?’ in Lucie Guibault and P Bernt Hugenholtz (eds), The Future of the Public Domain: Identifying the Commons in Information Law (Alphen aan den Rijn: Kluwer Law International) 260. Sunder, Madhavi (2007) ‘The Invention of Traditional Knowledge’, 70 Law and Contemporary Problems 97.

326  Research handbook on intellectual property and cultural heritage Taubman, Anthony (2005) ‘Saving the Village: Conserving Jurisprudential Diversity in the International Protection of Traditional Knowledge’ in Keith E Maskus and Jerome Reichman (eds), International Public Goods and Transfer of Technology. Under a Globalized Intellectual Property Regime (Cambridge: Cambridge University Press) 521. Taubman, Anthony (2008) ‘Analysis of Different Areas of Indigenous Resources. Genetic Resources’ in Silke von Lewinski (ed.), Indigenous Heritage and Intellectual Property: Genetic Resources, Traditional Knowledge and Folklore (2nd edn, London: Kluwer Law International) 181. Taubman, Anthony (2019) ‘New Dialogues, New Pathways: Reframing the Debate on Intellectual Property and Traditional Knowledge’, 58(2) Washburn Law Journal 373. Taubman, Anthony and Leistner, Matthias (2008) ‘Analysis of Different Areas of Indigenous Resources Traditional Knowledge’ in Silke von Lewinski (ed.), Indigenous Heritage and Intellectual Property: Genetic Resources, Traditional Knowledge and Folklore (2nd edn, London: Kluwer Law International) 59. UN (2009) Department of Economic and Social Affairs, Secretariat of the Permanent Forum on Indigenous Issues, State of the World’s Indigenous Peoples (New York: United Nations). von Lewinski, Silke (2008) ‘Final Considerations’ in Silke von Lewinski (ed.), Indigenous Heritage and Intellectual Property: Genetic Resources, Traditional Knowledge and Folklore (2nd edn, Alphen aan den Rijn: Kluwer Law International) 507. WIPO (2007) Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore, Document submitted by Switzerland, ‘Declaration of the Source of Genetics Resources and Traditional Knowledge in Patent Applications: Proposals by Switzerland’, Eleventh Session (WIPO Doc. WIPO/GRTKF/IC/11/10, 2007). WIPO (2010) Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore, Secretariat, ‘Note on the Meanings of the Term “Public Domain” in the Intellectual Property System with Special Reference to the Protection of Traditional Knowledge and Traditional Cultural Expressions/Expressions of Folklore’ (WIPO Doc. WIPO/GRTKF/IC/17/INF/8). Wright, Evana (2020) Protecting Traditional Knowledge: Lessons from Global Case Studies (Cheltenham: Edward Elgar). Yu, Peter K (2008) ‘Cultural Relics, Intellectual Property, and Intangible Heritage’, 81 Temple Law Review 433.

17. Intangible cultural heritage, intellectual property and the public domain Charlotte Waelde1

In 2003 Valdimar Hafstein was at a meeting of the UNESCO Convention Committee listening to a speech by the Bolivian rapporteur exhorting delegates to finalise what would become the 2003 Convention for the Safeguarding of the Intangible Cultural Heritage (2003 Convention). Reference was made to three decades of work on developing a safeguarding regime for intangible cultural heritage (ICH), referring by implication to a letter sent to UNESCO in 1973 by the then Bolivian Minister. In the letter the Minister lamented the absence of an international regime and referred to filching from his country’s intangible heritage. ICH in Bolivia was “undergoing the most intensive clandestine commercialization and export, in a process of commercially oriented transculturation destructive of the traditional cultures”. Hafstein unearthed the original letter and accompanying memorandum from archives in Paris. The memorandum narrates examples of this ‘filching’. The current revalorization of folk arts due to their notable invasion of the consumer market is currently giving rise to the de facto situation of which the following examples afford a rundown. … In the musical sphere, there are instances of melodies being wrongfully appropriated by persons unconnected with their creation who register them as their own compositions to secure to themselves the benefits conceded by copyright regulations. … In the sphere of the dance, … folk dances are appropriated by other countries wholly unconnected with their genesis to be passed off by them, even in international competitions, as folk dances of their own. … In the realm of popular art, … there are similar filchings, as in the case of countries which reach the point of industrializing themes and techniques from the traditional patterns of the cultures of particular population groups and offering them at cut prices on the international markets with no statements of origin— …2

In May 2021 Reuters – and many other news sources – reported that Mexico had accused Zara, Anthropologie and Patowl of cultural appropriation. It was alleged that Zara had used a pattern distinctive to the Mixteca Community of San Juan Colorado; Anthropologie had used a design developed by the Mixe community of Santa Maria Tlahuitoltepec; Patowl had copied a pattern from the Zapoteco community in San Antonino Castillo Velasco.3 In the intervening 43 years (1973 to 2021) there have been extensive international and domestic legal, political, cultural and social efforts in the space that the intellectual property 1 The chapter is one of the outputs of the HIPAMS project. With thanks to all members of the team: Ananya Bhattacharya, Harriet Deacon, Rajat Nath, Anindita Patra, Diego Rinallo, June Taboroff, Benedetta Ubertazzi and to the communities in West Bengal with whom we worked. 2 Quoted in Hafstein, Valdimar Tr. (2014) ‘Protection as Dispossession: Government in the Vernacular.; In Cultural Heritage in Transit: Intangible Rights as Human Rights, D. Kapchan (ed.) 25–57. University of Pennsylvania Press: Pennsylvania. 3 2021 Mexico accuses Zara, Anthropologie & Patowl of cultural appropriation. Reuters Press https://​www​.reuters​.com/​article/​mexico​-culture​-fashion/​mexico​-accuses​-zara​-anthropologie​-patowl​-of​ -cultural​-appropriation​-idUSL3N2NH0A4.

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328  Research handbook on intellectual property and cultural heritage (IP) regime calls the public domain, and which for ICH are the “the practices, representations, expressions, knowledge, skills – … – that communities, groups and, in some cases, individuals recognize as part of their cultural heritage”.4 The purpose of this contribution is to examine ‘the public domain’ with particular reference to the use of the concept of misappropriation within the context of ICH and commercialisation of ICH. This discussion will add to the academic debate on the complexities that can and do arise when the regimes of IP and ICH collide.5 The differences in philosophical underpinnings and economic objectives of the IP and ICH regimes have been repeatedly highlighted by scholars.6 [IP] is based on the individualism of private law and intrinsically future-oriented in its focus on innovation. Heritage law instead has no economic objectives, being based on public law and thus centring on public (rather than individual) interests and conceiving heritage as defined by a relationship with the past (Lixinski 2020). The two regimes are particularly at odds relative to the actual object of their protection: while IP instruments aim to protect the products of a given cultural practice, the ICH Convention focuses on the social and cultural processes themselves (Bortolotto 2007).7

The argument is that while the aim of using the IP concept of misappropriation within the context of ICH at the conceptual level may be to stop third parties taking from ‘the public domain’, the effect can be to threaten the processual nature of ICH through ascribing to ICH, by implication, a quasi-property right. While this elision of concepts can cause challenges at the regulatory level, on a practical level IP can be used as a tool by communities without commodifying their ICH. This will be illustrated by reference to thinking about the public domain as it emerged and developed within the project team during a British Academy funded interdisciplinary project ‘Celebrating local stewardship in a global market: community heritage, intellectual property protection and sustainable development in India’ (HIPAMS for short (Heritage Sensitive Intellectual Property and Marketing Strategies)). The central research question for the project was: how can marketing and intellectual property help marginalised communities harness their intangible cultural heritage to contribute to sustainable livelihoods? Two sub-questions with the linking thread of the public domain emerged: would claiming IP rights in (contemporary) ICH artefacts have implications for the processual nature of ICH? And, how might IP help communities address misappropriation?

INTERNATIONAL DEVELOPMENTS CONNECTING IP AND ICH While there is a long history of collaboration between the World Intellectual Property Organization (WIPO) and UNESCO seeking avenues for the protection of ICH/traditional 4 2003 Convention for the Safeguarding of the Intangible Cultural Heritage (2003 Convention) Article 2.1. 5 Bortolotto, C. (2020) ‘Commercialization without over-commercialization: normative conundrums across heritage rationalities’, International Journal of Heritage Studies, DOI: 10.1080/13527258.2020.1858441. 6 Lixinski, L. (2020). ‘Commercializing Traditional Culture: Promises and Pitfalls in the Convergence of Intellectual Property Law and Cultural Heritage Law.’ Annali Italiani Del Diritto d’autore, Della Cultura e Dello Spettacolo: 1–15. 9. 7 Bortolotto, n 5 p 7.

Intangible cultural heritage, intellectual property and the public domain  329 cultural expressions (TCE) and traditional knowledge (TK), each has fundamentally different aims and objectives. The international IP regime is led by WIPO, which spearheads many of the efforts at IP approximation and harmonisation among signatory states. In 1967 and 1971 attempts were made to introduce protection for folklore through a revision of the Berne Convention,8 but due to conceptual and definitional challenges, the only amendment resulted in Article 15(4), which makes possible the protection of “unpublished works where the identity of the author is unknown…”. Subsequently, and from the mid-1990s, WIPO embarked on a project to gather information about TCEs and TK9 with a view to agreeing a treaty that would provide protection through IP.10 The WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore produced a draft treaty in 2004,11 as amended several times with the latest iteration being from 2019.12 Agreement still eludes the members of WIPO with a large number of issues remaining unresolved. The negotiations within UNESCO in relation to safeguarding ICH are younger. While the position of indigenous communities and their ICH has been of concern at the international level for many years in UNESCO, it took the intervention of the Minister of Bolivia in 1973 to galvanise the organisation into action. The negotiations were finalised in the 2003 Convention for the Safeguarding of the Intangible Cultural Heritage (2003 Convention). The 2003 Convention provides a system that seeks to safeguard ICH but not to ascribe property rights in ICH. The differences in approach to subject matter has been described by Farah and Tremolada: IP “aims at protecting the proprietary rights and economic interests of individuals (human or corporate), whereas … [ICH] relies on the pre-preservation of the common heritage of a specific community or group”.13 According to the 2003 Convention, ICH is the practices, representations, expressions, knowledge, skills, which are manifested in performing arts, social practices, rituals and festive events and traditional craftsmanship. The ICH is embodied and intangible, it exists for a transient moment in time, and exemplifies the performative, fluid and processual nature of ICH as it passes from generation to generation. The manifestations of ICH are neither mutually exclusive nor exhaustive and are both performative and processual, such as performing arts and rituals, as well as tangible, such as instruments, objects and artefacts. The operative word is ‘manifested’; the ICH is the intangible practices, representations, expressions, knowledge and skills manifested through these practices and in these artefacts. While the 2003 Convention does not address ownership of the ICH, it places the community at the centre. The 2003

Diplomatic Conferences of Stockholm in 1967 and Paris in 1971. Traditional cultural expressions (TECs) and traditional knowledge (TK) are not wholly interchangeable with ICH but cover similar ground. ICH will be used in this chapter except when referring specifically to WIPO initiatives. 10 Drahos, P. (2014) Intellectual Property, Indigenous People and their Knowledge, Cambridge University Press: Cambridge, UK. Wendland, W. (2019) ‘Protecting indigenous knowledge: a personal perspective on international negotiations at WIPO’, WIPO Magazine. 11 WIPO/GRTKF/IC/7/3. 2004. The Protection of Traditional Cultural Expressions/Expressions of Folklore: Overview of Policy Objectives and Core Principles. 12 WIPO/GRTKF/IC/40. 13 Farah, P. and Tremolada, R. (2015) ‘Conflict between intellectual property rights and human rights: A case study on intangible cultural heritage’. Oregon Law Review, 94, 125–177. 8 9

330  Research handbook on intellectual property and cultural heritage Convention’s Ethical Principles (2015)14 state that the communities and groups concerned should be the ones to define what their ICH is, what value it has to them, and how to manage it. This processual, intergenerational and community-oriented nature of ICH stands in contrast to the regime of IP, which is mainly relevant for the individual, fixes ‘original’ practices at a moment in time where they become ‘works’, bounded by state-granted exclusive rights and able to be bought and sold in a marketplace. Examples relevant for this discussion include copyright and performers’ rights which are rooted in and initially owned by the individual author and performer and exist for a limited time. Copyright gives to the owner exclusive rights over reproductions of creative works mostly when they are fixed;15 performers’ rights give to performers rights over performances and their fixations.16 Both can give to the author and performer moral rights of attribution and to object to derogatory treatment. One key feature of copyright and other rights within the IP regime is that of the public domain. The public domain includes materials in which an IP right does not exist, for instance, because it does not meet the criteria for protection, is covered by the exceptions to and limitations on IP, and it is where third parties can and do take and use works and parts of works without payment or permission, or in relation to which IP protection has expired. Through Western eyes the public domain may include the recent takings by Anthropologie, Zara and Patowl and the examples given in the memorandum accompanying the Minister of Bolivia’s letter in 1973; through the eyes of the ICH communities, these are the ICH and its manifestations. While it is unlikely that any new form of IP protection will emerge for ICH at the international level, the 2003 Convention and its operational directives (ODs)17 contemplate the use of existing IP rights by ICH communities. Article 13 talks about state parties adopting appropriate legal measures to “ensure the safeguarding, development and promotion of the intangible cultural heritage present in its territory”. The ODs18 provide that it is through the application of, among other things, IP rights that states parties should endeavour to ensure “that the rights of the communities, groups and individuals that create, bear and transmit their intangible cultural heritage are duly protected when raising awareness about their heritage or engaging in commercial activities”. This does not, however, call for the creation of new IP rights in ICH as stressed by the decision of the Intergovernmental Committee (the Committee) in its draft decision on the nomination of Međimurska popevka, a folksong from Međimurje (No. 01396)19 for inscription on the Representative List of the Intangible Cultural Heritage of Humanity (Representative List). The Committee stated that the Convention does not seek to establish a system of ownership “such as through geographical indication and intellectual property”.20 In other words, IP would not be used to propertise ICH: the public domain, in its Western conception, remains untouched.

14 Ethical Principles for Safeguarding Intangible Cultural Heritage available at https://​ich​.unesco​ .org/​en/​ethics​-and​-ich​-00866. 15 Berne Convention for the Protection of Literary and Artistic Works, Sept. 9, 1886. 16 Rome Convention 1961; WIPO Performances and Phonograms Treaty 1996; Beijing Treaty on Audiovisual Performances 2012. 17 Operational Directives for the Implementation of the Convention for the Safeguarding of the Intangible Cultural Heritage Adopted by the General Assembly of the States Parties to the Convention 2nd session (UNESCO Headquarters, Paris, 16 to 19 June 2008), as amended. (ODs) 18 ODs paras 104 and 173(b). 19 Decision of the Intergovernmental Committee 13.COM 10.b.9. 20 Ibid.

Intangible cultural heritage, intellectual property and the public domain  331

PRODUCTS, PROCESSES AND THE PUBLIC DOMAIN Policymakers within UNESCO have always anticipated that ICH communities could and would use their ICH to achieve economic and socio-cultural sustainable development. However, how that might be done and what the limits might be were never thought through and the dominant concern prevailed: that through embracing the market ICH would become overcommercialised, commodified, and community control would be lost.21,22 In other words, the processual nature of ICH would become commodified through the property nature of IP. Paragraph 116 of the ODs provides: Commercial activities that can emerge from certain forms of intangible cultural heritage and trade in cultural goods and services related to intangible cultural heritage can raise awareness about the importance of such heritage and generate income for its practitioners.

It is notable that the wording does not refer to the commercialisation of the ICH as such, but that commercial activities can emerge from forms of ICH, and that goods and services related to ICH can generate income for the practitioners. As will be discussed below, this raises a distinction between ICH, which is not protectable by IP, and goods and services the construction or performance of which are rooted in ICH which can be so protected separately from the ICH. This reflects certain central tenets of IP, such as the idea/expression dichotomy in copyright law: ideas are unprotectable, while the expression of ideas, when fixed – such as the dance or the painting – can be protected. It is also the space between property and the public domain: commercial activities can emerge from manifestations of ICH, but the ICH per se is not fixed or commodified. Paragraph 102 of the ODs go on to highlight that commercialisation could “facilitate the misappropriation or abuse of the knowledge and skills of the communities, groups or individuals concerned”.23 The use of the term misappropriation when referring to skills and knowledge could inadvertently threaten the processual nature of ICH at least on a conceptual level. ‘Misappropriation’ is often referred to in ICH literature and beyond but with little clarity as to

21 Akagawa, N. and Smith, L. (eds) (2018) Safeguarding Intangible Heritage. London: Routledge; Harding, S. (2018) ‘Contemporary Intangible Cultural Heritage and Right of Exclusion’ in Research Handbook on Contemporary Intangible Cultural Heritage: Law and Heritage, C Waelde, C Cummings, M Pavis, H Enright (eds) Edward Elgar: Cheltenham. Kirshenblatt‐Gimblett, B. (2004) ‘Intangible heritage as metacultural production’. Museum International, 56 (1–2), 52–65. Lixinski, L. (2013) Intangible cultural heritage in international law. Oxford: OUP. Bortolotto, C. (2007) ‘From Objects to Processes: UNESCO’s Intangible Cultural Heritage.’ Journal of Museum Ethnography 19: 21–33. Bortolotto, C. (2020) ‘Commercialization without over-commercialization: normative conundrums across heritage rationalities’, International Journal of Heritage Studies, DOI:​10​.1080/​13527258​.2020. 22 The result, as noted by Lixinski, is that commercialisation opportunities are often claimed by others: “…the market and its effects do not go away. … The market is there, what happens is that [the market] is not covered by the ICHC with its promise of safeguarding of ICH for the benefit of communities. Instead, the benefits ultimately go elsewhere, either to the State which already reaps most of the other privileges arising from the implementation of the ICHC, or to third parties, who can exploit ICH through IP or other private law means.” Lixinski, n 6, para 24. See also Lenzerini, F. (2008) ‘Indigenous Peoples’ Cultural Rights and the Controversy over Commercial Use of Their Traditional Knowledge’, in Cultural Human Rights, F Francioni and M Scheinin (eds) Martinus Nijhoff: Netherlands. 23 Para 117 emphasises the need to avoid commercial misappropriation.

332  Research handbook on intellectual property and cultural heritage what it means or what harm it targets.24 It is a term borrowed from IP, while skills and knowledge are the ICH. Paragraph 102(d) of the ODs thus elides the two. There is no internationally agreed definition or meaning of misappropriation and it is used differently according to the context. In some common law countries, the heart of misappropriation is a call to fairness or ‘basic moral feelings’25 which seeks to regulate unfair conduct. A case based on misappropriation generally does not require the public to be confused or misled; rather the issue is a third party taking advantage of the effort or investment that has been put into building reputation, such as in a mark26 or in the gathering of news.27 For some countries the parties must be in competition and the misappropriation results in harm.28 Misappropriation is, in other words, a loose moral conviction against parasitism or free-riding on the coattails of someone else’s investment.29 “You shall not reap where you have not sewn” or you must not plough “with someone else’s calf”.30 The challenge with misappropriation is that where it is recognised, the boundaries of what can and can’t be misappropriated are opaque. When used loosely in the context of ICH, it is assumed that there is a ‘right’ in what is misappropriated. It is only a small step from there for some writers to assume that there is a property right in the ICH which is misappropriated: “Misappropriations occur where the use of intangible cultural property occurs without the consent of its holders.”31 As ICH can be misappropriated, the argument progresses, then ICH must be an (intangible property) right. This language is found in paragraph 102. Because knowledge and skills can be misappropriated, and knowledge and skills are elements of the ICH, the ICH must be an (intangible) property right. This thinking thus uses Western IP concepts and logic to challenge takings from ICH without payment or permission. In other words, it challenges the Western view that the ICH is in the public domain. However, in so doing, it elides the processual nature of ICH and the fixed nature of IP. While referring to misappropriation in the context of ICH may be a tactic to exert control over ICH by reducing

24 The use of the term appropriation is often used by proponents of cultural rights. See e.g Greaves, T. (ed.) (1994) Intellectual Property Rights for Indigenous Peoples: a sourcebook, Society for Applied Anthropology. Oklahoma City USA. Ziff, B. and Pratima, R.V. (eds) (1997) Borrowed Power: Essays on Cultural appropriation. Mandelker, BS. (2000) ‘Indigenous People and Cultural Appropriation: Intellectual Property problems and solutions’ 16 Canada Intellectual Property Review 367. 25 Visser, D. (2012) ‘Misrepresentation and Misappropriation: Two Common Principles or Common “Basic Moral Feelings” of Intellectual Property and Unfair Competition Law’ in A. Ohly (ed.) Common Principles of European Intellectual Property Law, Mohr Siebeck Tübingen 247–254. cf. Wadlow, C. (2013) ‘A riddle whose answer is “tort”: A reassessment of International News Service v Associated Press’, Modern Law Review 76. 26 L’Oreal v Bellure [2010] EWCA Civ 535. 27 International News Service v. Associated Press 248 U.S. 215 (1918). 28 Ibid. 29 Note also the discussion in Paterson, R.K. and Karjala, D.S. (2003) ‘Looking Beyond Intellectual Property in Resolving Protection of the Intangible Cultural Heritage of Indigenous Peoples’, 11 Cardozo J. Int’l & Comp. L. 633. 30 Lobe, A., ‘Der Hinweis auf fremde gewerbliche Leistung als Mittel zur Reklame’, MuW XVI (1916–1917), 129. A focus on ‘reaping where one has not sown’, suggests that free-riding is itself wrongful. Under the common law approach to unjust enrichment and restitution, it is not usually actionable to reap a benefit. Gordon, W.J. (2003) Intellectual Property. Available at SSRN:  https://​ssrn​.com/​abstract​=​ 413001, p 637 31 Wuger, D. (2004) ‘Prevention of Misappropriation of Intangible Cultural Heritage Through Intellectual Property Laws’ in Poor People’s Knowledge: Promoting Intellectual Property in Developing Countries, J. Michael Finger and Philip Schuler (eds), 183.

Intangible cultural heritage, intellectual property and the public domain  333 what is seen through the Western lens of IP as the public domain, what it does is to ascribe property-like thinking to ICH, thus calling into question its processual nature. It should be remembered that ICH exists whether or not it is on the UNESCO register or one of the national registers. Overuse of the call to misappropriation in the context of ICH is only one – albeit for many persuasive32 – avenue of thinking. Moving away from this ‘authorised ICH discourse’,33 a different approach may be to accept that knowledge and skills cannot be misappropriated within the sense discussed above (or better still, not to use the terms misappropriation), and ask instead what harms arise when ICH is used inappropriately by third parties.34 The distinction between the two is articulated by Bendix and Hafstein: The subject of cultural property is by default exclusive, subject to misappropriation and entitled to restitution; the subject of cultural heritage tends rather to be an inclusive subject, a collective ‘we’ that is entreated to stand together to prevent degradation and loss rather than theft by another.35

The ICH and IP regimes would be kept apart through a distinction between the processual knowledge and skills that make up the core of ICH and unprotectable by IP; and the artefacts, recordings and other works that hold or fix the ICH skills, which could be protectable by IP. The acknowledged difficulty with this strategy is that it does nothing to enable communities to exert control over their ICH. In other words, it does nothing to resist the Western perception that ICH is ‘in the public domain’.

IP, ICH AND THE PUBLIC DOMAIN IN PRACTICE – THE CASE OF HIPAMS The question of control over manifestations of ICH arose in the HIPAMS project. As it relates to the public domain, two questions arose: would claiming IP rights in (contemporary) manifestations of ICH have implications for the processual nature of ICH? And, how might IP help communities address misappropriation within the meaning of the 2003 Convention? The HIPAMS team36 worked with four heritage communities in West Bengal: Patachitra painters (Patuas) from Naya village in Pingla; Chau dancers from Purulia and Chau mask-makers from Charida; and Baul and Fakir community members from Nadia, Murshidabad, Birbhum, Bardhaman and Bankura. ● Patachitra is the practice of painting a story on a scroll which is unrolled as the Patua performs the story through song, or ‘pater gaan’.  Patachitra is said to date back more than 2,500 years. Stories depicted on the scrolls can now be religious or secular and often Ibid. Bortolotto, C. (2020) ‘Commercialization without over-commercialization: normative conundrums across heritage rationalities’, International Journal of Heritage Studies, DOI:​10​.1080/​13527258​ .2020. 34 For a discussion on harms that can arise through inappropriate use of ICH by third parties, and how these can be addressed by IP, see Harding, n 5. 35 Bendix, R. and Hafstein, V.T. (2009) ‘Culture and Property. An Introduction.’ Ethnologia Europaea 39(2): 5–10. 9. 36 The team consisted of academic experts in IP, marketing and heritage from Europe, and an NGO, www​.banglanatak​.com, based in Kolkata, India. For details of the project see www​.hipamsindia​.org 32 33

334  Research handbook on intellectual property and cultural heritage deal with ethics and morality and contemporary issues, such as 9/11 and the coronavirus pandemic.37 ● Purulia Chau is a dynamic acrobatic dance in which the dancers wear costumes of characters from Indian epics. The dancers’ costumes include elaborate masks made by the mask-makers from Charida. The masks are made by hand on a base of wood, covered by cloth, paper and glue, and adorned with clay, glass beads, trinkets and straws.38 ● A person becomes Baul or Fakir after renouncing their religion and then becoming a part of a devotional (bhakti) community tradition influenced by Hinduism, Buddhism and Islam. Bauls develop understanding of their philosophy through the guidance of a guru during which they learn secret knowledge. Baul-Fakirs’ musical performances and content have diversified in recent decades, pushed by commercial demand for staged performances and audio recordings.39 The communities all live in remote areas in West Bengal, where transport is difficult and internet access slow and often intermittent. Shaping HIPAMS In developing heritage-sensitive IP and marketing strategies during fieldwork with the communities, five factors helped to shape thinking about how IP might be used as a tool to aid commercialisation without impacting on the processual nature of ICH. The first was that as HIPAMS was primarily a research project (with a potential high level of impact), the theoretical frameworks within which IP rights sit should inform how IP was used.40 This relates both to the broad justifying frameworks for property rights in intangibles, such as the ethical or moral justifications which claim that the author has a natural or human right over the products of labour,41 and the instrumental justifications that focus on encouraging desirable activities,42 as well as to the rationale for the individual rights used in the strategies; for copyright there is the view, for example, that as creative works arise from the intellect and personality of an individual, it is only right that property rights are granted in the work.43 The IP strategies, in other words, were not developed in a vacuum, but rather took heed of why IP existed, and what work it was designed to do. Allied to this was the recognition that IP rights can be used to protect against a harm (defensive protection), and to promote visibility (positive promotion). In terms of defensive protection, for example, the exclusive right of reproduction granted by copyright enables the owner to prevent others from reproducing a work protected by copyright without permission. In terms of positive promotion, the attribution of performers can help them to become better known and thus to develop a reputation.

For details of the Patachitra case study, see www​.hipams​.org For details of the Chau dance and Chau mask-makers case study, see www​.hipams​.org 39 For details of the Baul Fakir case study, see www​.hipams​.org 40 The academic literature discussing justifications for intellectual property is extensive. For a series of seminal essays, see Drahos, P. (ed.) (1999) The International Library of Essays in Law and Legal Theory: Intellectual Property. Ashgate: Dartmouth. 41 For example, Hughes, J. (1988) ‘The Philosophy of Intellectual Property’. 77 Georgetown LJ 287. 42 Hettinger, E. (1989) ‘Justifying Intellectual Property Rights’. 18 Philosophy of Public Affairs 31. 43 Drassinower, A. (2012) ‘Copyright Infringement as Compelled Speech,’ in A. Lever (ed.) New Frontiers in the Philosophy of Intellectual Property. Ch 8. 37 38

Intangible cultural heritage, intellectual property and the public domain  335 Against this background, the second factor was that the use of IP rights should underpin the marketing strategies that were co-created with the communities, which in turn were developed in response to what the communities considered vital in terms of their ICH. In other words, IP rights were used as a tool to underpin marketing mostly as a means of positive protection, rather than to carve out exclusive territory as a form of defensive protection divorced from the marketing imperatives. This strategy was also in response to the third factor, that of enforcement of IP. For many rights, including copyright and performers rights, it is up to the individual to take action against infringement. For the members of ICH communities that we worked with, such action would not be possible: enforcement action is expensive, lengthy and uncertain. Rather than developing IP strategies that relied on enforcement for their effectiveness, the strategies focused on positive promotion. The fourth factor was the community nature of ICH and the individual/collective nature of IP rights. Some IP rights are communitarian by nature, but many are not. Careful consideration was given to possible effects of the personalisation of ICH through the use of IP and strategies tailored accordingly. Related to this was the fifth factor, which was whether one or more associations were in existence that represented the community. If an association was in place, it was possible to think about collective IP rights that could be managed by the association. Where no community association existed, and imagining one was not an option, managing collective IP rights would not be a feasible proposition. Identifying the ICH and Thinking about IP Prior to co-creating the marketing and IP strategies, the research team spent time with the communities to find out what they thought of their ICH, what they believed their traditions to be, how these might have changed over time, and what they did not want to change into the future.44 One of the tools that grew out of these encounters and drawing on previous experience45 was the roots and fruits tool: the roots of the ICH enable the growth of fruits which manifest the ICH in different ways.46 For instance, for the Patachitra community, the ICH roots include the skill and knowledge represented in the style of the paintings; the fruits enable the community to use the skills and knowledge represented in the style for paintings on traditional scrolls, and also for painting on a range of different products including umbrellas and kettles. These roots thus comprise the processual ICH unprotectable by IP rights – the public domain in Western thought. However, what IP can protect is the tangible manifestations of that ICH where the IP preconditions are met. For example, part of the patuas ICH skill is in painting a particular style; the skill in the painting style, and the style, are unprotectable. What is protectable is the expression of those skills in the form of the painting when on the scroll, where the preconditions for the subsistence of copyright are met. Where those paintings represent traditional paintings, the painting may have ‘thin’ copyright and protect only against an exact reproduction of the work, allowing other patuas to paint in the same style and subject matter.

44 Methodologies used in the project included forum theatre, walking stories, individual interviews and focus groups. The HIPAMS team worked through specialists from www​.banglanatak​.com to overcome language barriers. 45 Alpfoodway: A cross-disciplinary, transnational and participative approach to Alpine food cultural heritage, available at https://​www​.alpine​-space​.eu/​projects/​alpfoodway/​en/​alpfoodway​-at​-a​-glance 46 HIPAMS Toolkit Part 3 Slide 15 available at www​.hipams​.org

336  Research handbook on intellectual property and cultural heritage Where the painting is contemporary subject matter using the ICH skills,47 the protection given by copyright may be broader as regards the painting, but neither the ICH skills nor the style nor the idea of the particular painting will be protected or protectable. IP does not interfere with the processual nature of the ICH. It is the same for the Chau dancers, the Bauls and Fakirs. Traditional Chau dances are unprotectable by copyright. However, dances in the style of Chau, but representing contemporary events, are protectable when fixed. What is protectable is the originality in the contemporary dance, but not the underlying Chau dance style or moves. Chau dancers can claim performers’ rights, including the moral right to be acknowledged as a performer. As with copyright, such rights do not interfere with the processual nature of the ICH; they do not give rights in the underlying dance, but only in the performance as performed by the Chau dancer. Bauls and Fakirs may also have performers’ rights in their performances. In addition, they will have copyright in recorded songs that they compose where those songs are rooted in traditional ICH beliefs and practices but contain contemporary words. As enforcement of IP is practically impossible and the communities wanted to promote wide public understanding and appreciation of their ICH, the HIPAMS team suggested that the community think about using Creative Commons licences (CC-BY-NC) to permit consumers of the goods and visitors to performances to take pictures and recordings and circulate these on social media.48 This would allow copies of the photographs, performances and paintings to be circulated for non-commercial purposes so long as the artists (and the village) were attributed. Such a strategy starts to teach the visitor and consumer that the community members have IP rights in their work, but that they are giving permission for circulation of reproductions under the stated conditions. This also helps the communities to recognize the difference between the unprotectable and processual ICH, and how IP can protect some of its manifestations. This strategy of giving permission via a CC-BY-NC licence relates only to digital social media. The artists retain the right in other circumstances to grant permission to third parties who want to make copies of their work. This can be seen from the experience of Suman Chitrakar, a patua from Naya village. He was contacted by a retailer of candlesticks who wanted him to paint a small scroll on a particular theme which the retailer would then produce on different goods. Suman invoked his copyright in the painting on the scroll to negotiate with the retailer, who agreed to remunerate him not just for the scroll, but also its reproduction on the different goods. The work created by Suman was not in the public domain, and he was able to exert control over reproductions – a small but important lesson both for Suman and for the candlestick maker. The project also developed a series of ethical codes (also called art codes in the project) with the communities.49 These grew in part from the practical impossibility of enforcing IP rights by the communities, and in part in response to the ways in which community members were treated by third parties. The content of the codes was rooted in both IP and human rights language and rhetoric. Each was framed within a story told to the research team by the community relating to the types of behaviours they wanted to control. For the Chau community,

47 Such as Swarna Chitrakar’s painting of a Coronavirus https://​ folklife​ .si​ .edu/​ magazine/​ crisis​ -coronavirus ​ - patachitra ​ - scrolls ​ - west ​ - bengal ​ - india​ ? mc​ _ cid​ = ​ 8 7ceb0bf9a​ & ​ m c​ _ eid​ = ​ 3 7a7018e06 Copyright would also subsist in the words of the song as they have been recorded. 48 For the notices, see www​.hipams​.org 49 Copies of the codes are available at www​.hipams​.org

Intangible cultural heritage, intellectual property and the public domain  337 the code grew initially from a story by Moushumi Choudhury, a young female Chau dancer from Maldi in Purulia. Moushumi and her fellow Chau dancers had been contracted by a large Indian filmmaker to perform, in full costume with masks, in a film called Jobordokhol. While Moushumi and her dancers received a payment for their performance, they were not credited in the film. Being credited is not only important for reputation, but it is also a right granted by performers’ rights laws in India.50 But it would have been difficult for Moushumi to negotiate her rights with the filmmaker, so a request to third parties to acknowledge the names of the dancers in films was included in the text of the Chau dancers’ ethical code. The code could be used as a tool by Moushumi in negotiations with filmmakers and others in the hope and anticipation that in due course the principles that it embodies will be recognised and adhered to.51 Similarly with the Patachitra community: a copy of a painting by Suman Chitrakar, a patua from Pingla, appeared in a calendar compiled by a social club in Kolkata. Suman’s name and photograph appeared next to the painting on the calendar, but he had not been asked for permission to reproduce the painting, nor given royalties for the reproduction. The Patachitra code asks that the patuas be treated and paid fairly when reproductions of their work are made by third parties. Claims of IP rights in contemporary manifestations of ICH by the communities in this project did not have implications for the processual nature of ICH. Asking photographers and others to use a CC-BY licence for photographs taken of the artists and their work does not propertise the ICH, but rather lays claim to the rights the artists have in law. Moushimi claiming performers’ rights in her performance and Suman claiming copyright in his painting does not touch on the underlying processual ICH knowledge and skills, but only gives control over its manifestations. Claiming of IP rights in this project did not have negative implications for the processual nature of ICH, which was left untouched. The Place of Misappropriation in the HIPAMS Project When addressing the second question, if and how IP might help communities address misappropriation, views among members of the research team proved to be representative of the broader debates around misappropriation. Some referred to all ‘takings’ of ICH as misappropriation; the failure of the film company to attribute Moushumi, for example, was a misappropriation. For others the reference to misappropriation was a ‘good thing’ if it held companies to account; if, for example, referring to the failure to credit Moushumi in the film credits was termed misappropriation and that made companies feel guilty so that the next time Moushumi would be credited, that was a good thing. For others, the preference was to avoid the ‘baggy saggy’ term misappropriation altogether and refer instead to harms. Thinking 50 There was debate in the HIPAMS team as to whether the failure to credit Moushimi should be framed in the rhetoric of misappropriation. In terms of the argument in this contribution, the failure was an infringement of performers’ rights. 51 The Chau mask-makers, Patachitra and Baul Fakiri codes have similar content tailored towards the needs of each community. During evaluation of the project, artists who were interviewed expressed their appreciation of the codes. It was notable that some heritage bearers anticipated that the code could help to empower them in their relations with third parties. A young Fakiri singer told us: “The … Code will help musicians who are introvert like me and cannot always speak up, we can give a copy of the … Code to the stakeholders we work with.” March 2021. Details in the project evaluation report available at www​.hipams​.org

338  Research handbook on intellectual property and cultural heritage about it in terms of IP, as noted, the failure to credit Moushumi for her performance was an infringement of performers’ rights. If these actions are termed misappropriation of ICH, then, as suggested in the 2003 Convention, ICH knowledge and skills can be misappropriated. As what is ‘misappropriated’ is actually an infringement of a performer’s right, ICH and IP are elided to the detriment of the processual nature of ICH. However, in both cases, it was not the knowledge and skills of the heritage bearers that were implicated, but a manifestation of them. And in these examples, the performer of these manifestations (the Chau dancer) had performers’ rights in the contemporary iteration of the dance. If misappropriation refers to knowledge and skills – as per the 2003 Convention – IP cannot help to guard against misappropriation because knowledge and skills are not protected by IP. However, IP can play a role in safeguarding ICH where the contemporary manifestations of the ICH skills and knowledge meet the criteria for IP protection – as was the case with performers’ rights and copyright in the HIPAMS project. The project thus illustrated how IP could be used as a tool in practice by ICH communities without threatening the processual nature of ICH. Ultimately, however, the ICH communities remain unable to exert control over ICH knowledge and skills, which are subject to misappropriation in the parlance of the 2003 Convention, and in the public domain in Western thinking.

CONCLUSION: IP, ICH AND THE PUBLIC DOMAIN IP can protect contemporary manifestations of ICH, while leaving the processual ICH knowledge and skills untouched. In its practical application IP can be a useful tool for ICH communities pursuing commercial strategies in connection with manifestations of their ICH. Using IP in connection with Creative Commons licences, for example, can start to teach consumers and others that ICH communities do have rights in their works, reproductions of which cannot be copied and further disseminated without permission and payment – in other words, these manifestations are not in the public domain. When communities use IP as a tool to help meet their economic goals in this way, the processual ICH remains untouched. Reference to misappropriation in the context of ICH is best avoided lest the process of ICH and product of IP become confused. This does nothing, however, for the challenges faced by the Mixteca community of San Juan, Colorado, the Mixe community of Santa Maria Tlahuitoltepec, nor the Zapoteco community in San Antonino Castillo Velasco. In these examples, the designs that were used were traditional, and not contemporary interpretations. IP therefore did not exist in what was reproduced – the copied manifestation of the ICH community’s knowledge and skills. To return to an earlier statement: in Western parlance, what was taken was in the public domain; for the ICH communities, it was the ICH. This takes us full circle to the lamentations of the Minister of Bolivia in 1973, which are as relevant now as they were then. Despite the 43 years of work, some still view it as ethically and morally permissible to take from the skills and knowledge of ICH communities without permission or payment. While it may have been anticipated in 2003 that the Convention would have enabled community (and state) control over manifestations of ICH, that has not happened. Ethical codes have a role to play in seeking to educate third parties about ICH and why it should be respected, but these mostly lack enforcement mechanisms and are generally developed and promulgated in response to particular issues, or in connection

Intangible cultural heritage, intellectual property and the public domain  339 with identified ICH communities, rather than being of general scope and application. Their effectiveness has also yet to be determined.52 Where now for ICH communities whose ICH is filched?

52 See Waelde, C. (2022, forthcoming) ‘Private Law-Making, Self-Regulation and Heritage’, in Lucas Lixinski and Lucie K. Morisset (eds), Routledge Handbook of Heritage and the Law.

18. Bridging intellectual property and cultural heritage law in the practice of international governmental organisations1 Andrzej Jakubowski and Hanna Schreiber

INTRODUCTION The relationship between cultural heritage (CH) and intellectual property (IP) is one of the most thorny or even unsurmountable matters in the international governance of culture and cultural expressions. The underlying and seemingly competing axiological foundations of international IP law instruments and those on the safeguarding of the intangible cultural heritage (ICH) are the most evident manifestations of this difficult relationship (for instance, see Burri 2020: 460–66; Martinet 2020: 97–98). Undoubtedly, the fundamental challenge relates to the subject matters involved and the different methodological and pragmatic lenses through which CH law and IP law view human creativity, as well as the reasons for its legal protection. Therefore, the international law-making and institutionalised forms for the international protection, safeguarding, and management of IP and CH originally developed separately from one another, driven by different interests, rationales, and priorities. Today, the relationship between IP and CH presents a complex but interlinked setting, marked by a number of often competing legal regimes, institutions, and actors, on the domestic, regional, and international levels. The nature of this setting has been the subject of much scholarly investigation, comprising critical analyses of the regulatory frameworks applicable to the interplay between IP and CH established by the key international intergovernmental organisations (IGOs) in this domain – UNESCO and WIPO (for instance, see Macmillan 2020; Antons and Logan 2018; Blake 2017; Shyllon 2016; Kono 2009; Heath and Kamperman Sanders 2005). This chapter seeks to contribute to these studies by demonstrating the actual roles and functions of IGOs dealing with the IP–CH relationship. The analysis is not confined only to global (universal) IGOs with explicit CH or IP mandates; it also covers those organisations which deal with the two issues in the context of regional and/or economic integration. Hence the core objective of this chapter is to investigate and characterise the role of IGOs in framing the IP–CH relationship, as seen through the lenses of the concepts of “individual” and “collective/communal” which are applied (though in many cases implicitly). It also explores to what extent the actions of IGOs in these domains have been driven and fostered by the growing regime complexity, including factors such as the particular interests of their members, as well as other considerations and actors within the IGOs themselves (see Helfer 2009).

1 The authors wish to acknowledge that the research for this chapter was carried out within the framework of the project “Legal forms of cultural heritage governance in Europe – a comparative law perspective”, No UMO-2019/35/B/HS5/02084, financed by the National Science Centre (Poland).

340

Bridging IP and CH law in the practice of international governmental organisations  341 Being aware of the fact that the structure, scope, and operation of IGOs have greatly changed over time, we endeavour to describe and explain the evolution of the practices of IGOs in the context of the IP–CH relationship. Hence, we first briefly present the origins of international IP and CH organisations. Second, we seek to identify the moment when the operationalisation of IP rights at the international level began to concern the protection of human creativity of a collective nature, showing how this was strictly related at first to the concept of folklore, and we offer an outline of the major inter-organisational endeavours in this regard. Third, we address the nature of IGOs’ engagement with both individual creativity and collectively created and enjoyed CH, primarily in the domains of international human rights and global trade. Fourth, the balance between the protection of IP and CH is examined in light of the practice of regional IGOs. Finally, we scrutinise the role and place of IGOs within the context of the growing regime complexity (Alter and Raustiala 2018; Alter and Meunier 2009) that frames the present-day IP–CH relationship. For the sake of analytical consistency, in this chapter we follow the general ‘classic’ notion of how IGOs function under public international law (see Peters 2016). According to the International Law Commission (ILC), the basic definition of an IGO regards “an organization established by a treaty or other instrument governed by international law and possessing its own international legal personality. International organisations may include as members, in addition to States, other entities.”2 While this definition was provided in the particular context of the ILC’s works on the responsibility of international organisations, it seems applicable more broadly as well (Bouwhuis 2012: 464). Moreover, we take this definition as a starting point to observe how IGOs navigate in an ever more complex and dense international system – in search of proper formulas which satisfy not only their member states, but also fulfil IGOs’ objectives and mandates, all of which is analysed in the context and through the concept of regime complexity.

HISTORY OF IP AND CH INTERNATIONAL INTERGOVERNMENTAL ORGANISATIONS As already alluded to, international regimes for the protection of IP and CH initially developed separately. Accordingly, the first IP treaties (the Paris Convention of 1883,3 and the Berne Convention of 18864) – fostered by the desire of authors and other creators to protect their rights vis-à-vis the challenges of the growing international market – led to the establishment of two small international bureaux which merged in 1893, giving rise to the United International Bureaux for the Protection of Intellectual Property (BIRPI), an international body. This entity, responsible for administering both IP treaties, was replaced by the newly created WIPO in

2 See Article 2(a) of Articles on the Responsibility of International Organizations (9 December 2011) A/RES/66/100 Annex; also see Report of the International Law Commission (2011) Supp 10 A/66/10, 54. 3 Paris Convention for the protection of industrial property (adopted 20 March 1883, entered into force 7 July 1884, last amended 28 September 1979) 828 UNTS 305. 4 Berne Convention for the Protection of Literary and Artistic Works (adopted 9 September 1886, entered into force 5 December 1887, last amended 28 September 1979) 828 UNTS 221.

342  Research handbook on intellectual property and cultural heritage 1970,5 which four years later became an organisation within the UN system (for more, see Dutfield and Suthersanen 2020: 52–58). In turn, the international forum for global dialogue between civilisations, which also included the concept of the protection of shared cultural heritage (Laqua 2011: 229–30), was consolidated within the system of the first worldwide IGO, the League of Nations. It included: the International Committee for Intellectual Co-operation (ICIC); the International Institute of Intellectual Co-operation (inaugurated in 1926 as an executive agency to ICIC); the International Museums Office; and finally the International Cooperation Organisation (ICO) (for more, see Vrdoljak and Meskell 2020: 13–24). Yet only with the adoption of the UNESCO Constitution (1945)6 did CH become truly internationally institutionalised. Today UNESCO, with its 193 Member States and 11 Associate Members, has become the central, universal IGO in cultural matters within the UN system. Notably, on the UN level the spheres of IP and CH gradually became aligned and covered by the expanding treaty law under the auspices of UNESCO, as initially there was no specialised IP IGO. In fact, in the early 1950s UNESCO worked in parallel on cultural property and IP international conventions. Already in 1952, the Universal Copyright Convention (UCC)7 was adopted, followed in 1954 by the Hague Convention for the Protection of Cultural Property in the Event of Armed Conflict.8 Both treaties sought to provide universal standards for the protection of IP on the one hand (UCC), and tangible CH on the other (1954 Hague Convention), in a manner acceptable for all peoples of the world, although they did not engage on their mutual underpinnings. The situation changed at the end of the 1960s. The 1967 Convention Establishing WIPO provides that the prime objective of this organisation is “to promote the protection of intellectual property throughout the world through cooperation among States and, where appropriate, in collaboration with any other international organization” (Article 3(i)). The Convention’s Preamble indicates that the promotion of IP protection is desirable “in order to encourage creative activity”. Both these objectives opened up the possibility for long-term cooperation between UNESCO and WIPO vis-à-vis their common endeavours towards the protection of the creative element in CH through the IP rights.

COMMON INSTITUTIONAL ENDEAVOURS IN THE IP AND CH DOMAINS Considering the organisational history of UNESCO and WIPO and the gap between 1946 (when UNESCO began to operate) and 1970 (when the Convention Establishing WIPO came into force), it is not surprising that UNESCO endeavoured at the beginning of its functioning to create an international instrument on IP protection. The UCC aimed at establishing “copyright 5 Convention Establishing the World Intellectual Property Organization (adopted 14 July 1967, entered into force 25 April 1970) 828 UNTS 3. 6 Constitution of the United Nations Educational, Scientific and Cultural Organization (adopted 16 November 1945, entered into force 4 November 1946) 4 UNTS 275. 7 Universal Copyright Convention (adopted 6 September 1952, entered into force 16 September 1955) 216 UNTS 132, as revised at Paris on 24 July 1971 943 UNTS 178. 8 Convention for the Protection of Cultural Property in the Event of Armed Conflict (adopted 14 May 1954, entered into force 7 August 1956) 249 UNTS 240.

Bridging IP and CH law in the practice of international governmental organisations  343 protection appropriate to all nations of the world and expressed in a universal convention, additional to, and without impairing international systems already in force”, which would “ensure respect for the rights of the individual and encourage the development of literature, the sciences and the arts” (Second Recital of the Preamble). Hence, while the UCC was designed to complete the regime of the Berne Convention in light of demands of the post-Second World War economies, it is also true that the notion of creativity regarded only those cultural expressions that were traditionally associated with the wider European or Western vision of heritage: literary, historic, and artistic expressions. Yet soon after the UCC’s adoption, in the 1950s and alongside the discussions on its revision in the 1960s, the first debates on the international protection of IP rights to collectively created works took place. In fact, UNESCO, in cooperation with the Berne Union (signatories of the Berne Convention), became focused on the copyright issues surrounding such works. Their efforts resulted in the 1967 revision of the Berne Convention, which introduced a new provision on anonymous works (Article 15(4)) (see Martinet 2020: 99). Although the efforts to safeguard folk arts and traditions had already been addressed within this IGO’s agenda, a major breakthrough was possible due to the increasing change in Western multicultural societies on the one hand, and the decolonisation of Africa on the other. While the former process, also associated with the “heritage boom” (see Harrison 2013: 68–94), involved an expansion of the idea of cultural heritage beyond literary and artistic sources to include a variety of cultural manifestations encompassing traditions and traditional ways of life, the latter process brought the idea of living cultures and collective creativity to the political forefront. In fact, the attempts by newly independent countries to define their cultural, and thus political, identity – not only on the basis of decisions on their borders taken by former European empires but also on the basis of distinct cultures and traditions (called at that time “folklore”, Lange 1999) – revealed serious flaws and tensions in the existing IP regulations. The latter process marked by the difficult economic and political situations of the former colonies also demonstrated the existence of severe inequalities between the global North and the global South. In this context, and with the assistance of WIPO, the Lusaka Agreement establishing the African Regional Intellectual Property Organization (ARIPO) for English-speaking African countries was signed in 1976.9 A year later, the Organisation Africaine de la Propriété Intellectuelle (OAPI) for mainly French-speaking African countries was founded pursuant to the so-called Bangui Agreement (OAPI Convention), joining the regional efforts to protect IP of both an individual and collective character in Africa, and providing anti-counterfeiting measures (see Schneider and Ferguson 2020: 7–30).10 Importantly, these two organisations, ARIPO and OAPI, call themselves “sister organisations” and have cooperated together since

9 See accessed 10 April 2022. 10 Bangui Agreement on the Creation of an African Intellectual Property Organization (signed 2 March 1977, entered into force 8 February 1982); Agreement Revising the Bangui Agreement of March 2, 1977, on the Creation of an African Intellectual Property Organization (Bangui (Central African Republic) (signed 24 February 1999, entered into force 28 February 2002) available at accessed 10 April 2022; revised again in December 2015, this revised treaty is not yet in force.

344  Research handbook on intellectual property and cultural heritage 1996, as they agreed to take common positions on major IP issues affecting their Member States at the regional and international levels.11 The Lusaka Agreement is composed of strictly structural, functional, and administrative provisions – it does not define the scope, nature, or problems related to IP. These have been covered by separate protocols concluded between ARIPO’s members, such as the Swakopmund Protocol on the Protection of Traditional Knowledge and Expressions of Folklore.12 In contrast, the Bangui Agreement (as revised in 1999) sets out, in addition to the structure and objectives of the organisation, the principles for the application of IP law to “works” under which falls also “expressions of folklore and works derived from folklore” (Annex VII, Article 5). The OAPI Convention also introduced the term ‘communities’ as an element of the definition of folklore: “Folklore means the literary, artistic, religious, scientific, technological and other traditions and productions as a whole created by communities and handed down from generation to generation” (Article 68, Bangui Agreement). At the same time, in the 1970s several states adopted national regulations protecting folklore based on the mechanism of copyright law (see the Commentary to Model Provisions 1982;13 and for a detailed examination of national legislation, see Schneider and Ferguson 2020). The adoption of the 1972 World Heritage Convention14 and the above-mentioned attempts to ensure the protection of human creativity in its individual and collective dimensions induced ever more countries to express their interest in the international protection of folklore. Bolivia was the first to raise the issue internationally in 1973, submitting a proposal to the Director General of UNESCO for the adoption of an additional protocol to the UCC, which would deal with the protection of folklore (see Hafstein 2018: 21–24). This was indirectly achieved in 1976 as a result of cooperation between UNESCO and WIPO, which published together the Tunis Model Law on Copyright for Developing Countries (Tunis Model Law).15 Notably, it defined “folklore” as “national cultural heritage”. In Section 6 it introduced the concept of “works of national folklore”, that “are protected by all means … without limitation in time … by the national competent authority”. Moreover, Section 15 of the Tunis Model Law introduced sanctions for the infringements of rights and specified that “any infringement of any one of these rights which is considered as a violation of the national cultural heritage may be curbed by all legitimate means” (paragraph 2). The Tunis Model Law is the first document prepared under the auspices of two IGOs: UNESCO and WIPO, both of which aimed to soothe the already evident tension that had developed over time between individually oriented IP instruments and collectively created 11 See accessed 10 April 2022. 12 (adopted by the Diplomatic Conference of ARIPO on 9 August 2010, and amended on 6 December 2016, entered into force 1 January 2012) accessed 12 April 2022. 13 UNESCO-WIPO, ‘Model Provisions for National Laws on the Protection of Expressions of Folklore Against Illicit Expression and Other Prejudicial Actions’ (1985) available at accessed 12 April 2022. 14 Convention Concerning the Protection of World Natural and Cultural Heritage (adopted 16 November 1972, entered into force 17 December 1975) 1037 UNTS 151. 15 The Tunis Model Law on Copyright was adopted by the Committee of Governmental Experts convened by the Tunisian Government in Tunis from 23 February to 2 March 1976, with the assistance of WIPO and UNESCO, see https://​www​.wipo​.int/​publications/​en/​details​.jsp​?id​=​3177​&​plang​=​FR (accessed 12 April 2022).

Bridging IP and CH law in the practice of international governmental organisations  345 “works”. Interestingly, this legal incompatibility was alleviated by what we call here the ‘heritagisation’ of folklore. Thanks to this process, folklore was elevated and received the status of “national heritage”. The efforts of states to take measures to protect collective works of important “cultural legacy” were for the first time internationally recognised. Further cooperation between UNESCO and WIPO resulted in the publication in 1982 of the Model Provisions for National Laws on the Protection of Expressions of Folklore against Illicit Exploitation and Other Prejudicial Actions (Model Provisions).16 These were based on the concept of sui generis protection, based on three assumptions: (1) that the object of protection is heritage belonging as a whole to a particular community; (2) that there is reciprocity between national laws and international law; and (3) that the use of folklore for economic purposes can be protected by law, while its social use cannot. It was also then that the term “expressions of folklore” (EoF) was defined – albeit still without defining what “folklore” is. The use of the word “expression” was to emphasise its different nature from the word “work” used in IP law. “Expressions” were divided into four categories: (1) verbal; (2) musical; (3) related to performance; and (4) embodied in a material object. On the basis of these provisions, a draft convention was created in 1984 – the UNESCO/ WIPO Draft Treaty for the Protection of Expressions of Folklore Against Illicit Exploitation and Other Prejudicial Actions.17 It, however, has never been officially adopted due to opposition from developed countries, which were reluctant to accept the obligation to provide protection to folklore or “lower” culture, which was less valued at that time (Blake 2001: 19). Other issues that were also reluctantly addressed at the time included the concept of “regional folklore” – that is, folklore present on the territory of more than one country (giving rise to the problem of which political entity was obliged to protect it and the possible obligation to coordinate protective measures), as well as the practical problem of the lack in most countries at that time of sources of knowledge, meaning inventories indicating those works which can be considered a manifestation of folklore and those which cannot (Ficsor 2003: 93–95) (for more on the work of these two organisations in respect of folklore and cultural heritage, see Kuruk 2020: 64–97).

SEPARATE ENDEAVOURS BUT COMMON OBJECTIVES TO PROTECT IP AND CH The failure to adopt the joint 1984 UNESCO/WIPO Draft Treaty resulted in the adoption – this time only by UNESCO – of the Recommendation on the Safeguarding of Traditional Culture and Folklore.18 The Recommendation clearly states that “as folklore constitutes manifestations of intellectual creativity whether it be individual or collective, it deserves to be protected in a manner inspired by the protection provided for intellectual productions”. The Recommendation refers to “the important work of UNESCO and WIPO in relation to intellectual property, while recognizing that this work relates to only one aspect of folklore protection and that the need for separate action in a range of areas to safeguard folklore is urgent” (Part 16 (1982) XVI(4) UNESCO Copyright Bull 62 available at accessed 12 April 2022. 17 UNESCO/WIPO/FOLK/CGE.1/2. 18 (adopted 15 November 1989) 25C/Resolution 7, 1.

346  Research handbook on intellectual property and cultural heritage F of the Recommendation). Accordingly, from this point on (with a brief revival of common cooperation in 1997–98, Blake 2017: 50), and especially after the Conference in 1999 during which the Recommendation was critically examined, UNESCO and WIPO have chosen separate paths in their folklore-safeguarding efforts. UNESCO, led by Kōichirō Matsūra since 1999, opened the fast track for drafting the Convention on the Safeguarding of the Intangible Cultural Heritage (the ICH Convention), and in three years’ time its adoption was announced (Matsūra 2020). At the same time, in the year 2000 the WIPO General Assembly approved the establishment of the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC).19 The IGC remains today, since its first session in 2001, the most important forum where the debates on IP and CH take place. In its 40th session in 2020, it formed a platform and produced many important documents, in which the clash of “individual” IP rights and “collective” effects of human creativity could be traced. The ICH Convention separated IP and CH, though this separation in practice is not clear at all by force of Article 3(b), which states that “nothing in the Convention can be interpreted as affecting the rights and obligations of States Parties deriving from any international instrument relating to intellectual property rights or to the use of biological and ecological resources to which they are parties” (see Blake and Lixinski 2020). The relationship between the ICH Convention and IP is further addressed in the Operational Directives to the ICH Convention (Paragraph 104), as follows:20 States Parties shall endeavour to ensure, in particular through the application of intellectual property rights, privacy rights and any other appropriate form of legal protection, that the rights of the communities, groups and individuals that create, bear and transmit their intangible cultural heritage are duly protected when raising awareness about their heritage or engaging in commercial activities.

The beginning of the 20th century opened up the trend of “untightening” the common endeavours towards the adoption of binding universal legal acts regulating the relationship between IP and CH. This, however, does not mean that endeavours between WIPO and UNESCO in this direction ceased. WIPO is especially active in its efforts to protect the results of collective creativity (using the terms TK, TCEs or EoF). Although it has resigned from more profound inter-organisational cooperation, it has been extensively providing its expertise for local communities and researching the connection between IP and CH. The series of research reports ordered within the framework of the WIPO Creative Heritage Project21 reveals the ongoing interest channelled through the Traditional Knowledge Division in WIPO (for instance, see Talakai 2007; Rincon 2009). This project seeks to encourage the discussion on how cultural institutions take IP rights into consideration, with the aim to pool documentary resources that can serve as an empirical base for the long-term preparation of a set of coherent, relevant guidelines.

19 See documents ‘Matters Concerning Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore’ (25 August 2000) WO/GA/26/6, para 13; ‘Report by the Assembly’ (3 October 2000) WO/GA/26/10, para 71. 20 Operational Directives for the implementation of the Convention for the Safeguarding of the Intangible Heritage (adopted 19 June 2008; lastly amended 10 September 2020) CLT-2021/WS/5; CLD-758.21, 21. 21 Available at accessed 10 April 2022.

Bridging IP and CH law in the practice of international governmental organisations  347 At almost the same time UNESCO accelerated its efforts to draft and adopt the Convention on the Protection and Promotion of the Diversity of Cultural Expressions (the Cultural Diversity Convention).22 This instrument presents again the non-obvious and unclear linkages between CH and IP by stating in its Preamble that “cultural diversity forms a common heritage of humanity and should be cherished and preserved for the benefit of all” (Second Recital), and that “intellectual property rights in sustaining those involved in cultural creativity” shall be recognised as very important (17th recital). It may, however, be argued that the two IGOs have followed different paths to protect collective, creative, and communal practices: WIPO by enforcing a bottom–up approach and by focusing on local projects; and UNESCO by choosing a top–down approach and by focusing on more general and possibly universally applied solutions.

THE IP–CH RELATIONSHIP IN THE PRACTICE OF IGOS: SELECTED REGIMES It should not come as a surprise that much of the present-day international debate on the nature of the IP–CH relationship is deeply rooted in human rights law and theory, which affects the practice of a variety of international organisations and institutions. The human rights dimension of the IP–CH interplay also has implications for the practice of IGOs in relation to global trade (particularly in respect of the WTO’s framework), and the promotion of creativity as an element of sustainable development. International Human Rights In general terms, it has been correctly noted that there are two basic approaches to the human rights and IP interface. The first claims that strong IP protection is “incompatible” with a vast array of “human rights obligations, especially in the area of economic, social, and cultural rights”; while the second approach perceives “human rights law and intellectual property law as essentially compatible, although often disagreeing over where to strike the balance between incentives on the one hand and access on the other” (Helfer 2003: 47–48). In fact, the dynamics between the monopoly of the creator, on the one hand, and the right to accede, enjoy cultural products, and to participate in cultural life, on the other, perhaps best characterise the complexity of the relationship between IP and CH. This complexity is reflected also in the establishment of separate, but at the same time interlinked, regimes. The tension and compatibility of the right to benefit from the protection of the moral and material interests resulting from one’s scientific, literary, or artistic production, and the right to culture and to benefit from the results of creativity, are sharply expressed in two universal human rights instruments, i.e., under Article 27 of the Universal Declaration of Human Rights (UDHR)23 and under Article 15 of the International Covenant on Economic, Social and Cultural Rights (ICESCR).24 Indeed, the Committee on Economic, Social and Cultural Rights (CESCR) already in 1999 noted the problems that result from the liberalisation of global trade (adopted 10 October 2005, entered into force 18 March 2007). (10 December 1948) 217 A (III). 24 (adopted 16 December 1966, entered into force 3 January 1976) 993 UNTS 3. 22 23

348  Research handbook on intellectual property and cultural heritage and the uniformisation of IP standards under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) 25 of the World Trade Organization (WTO), with respect to the protection of traditional knowledge and access to science. In this regard, it called for cooperation among the WTO members to ensure the balanced implementation of economic, social, and cultural rights. Moreover, it underlined that international organisations with specific responsibilities in the areas of trade, finance, and investment “should play a positive and constructive role in relation to human rights”.26 It recalled the duty of the WTO and WIPO, in their administration of international treaties and setting minimum standards for the protection of IP rights, to contribute to the realisation of human rights guaranteed under Article 27 UDHR and Article 15 ICESCR.27 Importantly, CESCR, in its General Comment No 17 (2005),28 explained that the relationship between distinct rights guaranteed under Article 15 ICESCR “is at the same time mutually reinforcing and reciprocally limitative” (Paragraph 4). It also expanded the traditional understanding of the right to “benefit from the protection of the moral and material interests resulting from any scientific, literary or artistic production” (Article 15(1)(c) ICESCR). Originally, it was considered to regard only individual rights holders in line with the IP standards, and thus was hardly applicable to protect collectively created and produced resources and knowledge (see Stoll and von Hahn 2008: 22–23). However, over time, and in particular following the development of minority and Indigenous peoples’ rights in international law and within the UN global policy agenda,29 the CESCR underlined the communal, moral, and heritage aspects of the provisions of Article 15(1)(c) ICESCR, and explained that right holders may be collective; that the notion of scientific productions may also cover “knowledge, innovations and practices of indigenous and local communities” (Paragraphs 8–9); and that states are under an obligation to ensure the effective protection of interests “relating to their productions, which are often expressions of their cultural heritage and traditional knowledge” (Paragraph 32). In the early 2000s, the UN human rights bodies repeatedly referred to the human rights attached to CH. In particular the CESCR, in General Comment No 21 (2009),30 explicitly linked the right to participate in cultural life with taking part in, contributing to, and benefiting from the cultural heritage and the creation of other individuals and communities (Paragraph 15). Particular focus is placed on the rights of Indigenous peoples in line with the UN Declaration on the Rights of Indigenous Peoples (UNDRIP).31 The protection of the moral and material interests of Indigenous peoples and local communities resulting from their knowledge, of which they are authors (either individually or collectively), has recently been reiterated by the CESCR in General Comment No 25 (2020) (Paragraph 40).32 The issues of access to heritage and enjoyment of the benefits of scientific progress were also the subject

(signed 15 April 1994, in force 1 January 1995) 1869 UNTS 299. Statement of the Committee on Economic, Social and Cultural Rights to the Third Ministerial Conference of the World Trade Organization (26 November 1999) E/C.12/1999/9 128–129. 27 (14 December 2001) E/C.12/2001/15. 28 (12 January 2005) E/C.12/GC/17. 29 See Draft Declaration on the Rights of Indigenous Peoples (23 August 1993) E/CN.4/Sub.2/1993/29. 30 (21 December 2009) E/C.12/GC/21. 31 (13 September 2007) A/RES/61/295. 32 (30 April 2020) E/C.12/GC/25. 25 26

Bridging IP and CH law in the practice of international governmental organisations  349 of two reports by the Special Rapporteur in the field of cultural rights, brought within the UN Human Rights Council’s special procedure.33 While the work of the UN human rights bodies tends to conceptualise the human rights attached to creativity, regional IGOs and their organs often supply the necessary vehicles for realising these rights, taking into account regional specificities and demands. Probably the most advanced example of such a practice is provided by the Council of Europe (CoE). The core purpose of this organisation is “to achieve a greater unity between its members for the purpose of safeguarding and realising the ideals and principles which are their common heritage”, including cultural actions in the full realisation of human rights and fundamental freedoms, and in cooperation with other international organisations.34 In this regard, the CoE’s engagement in the cultural field expanded greatly over the decades, encompassing the cultural rights of persons belonging to minorities, which resulted in the Framework Convention on the Value of Cultural Heritage for Society (the Faro Convention)35 – perhaps the most advanced international treaty bridging human rights and CH. This instrument also addresses the balance between IP rights and access to CH, and obliges its states parties to seek “to resolve obstacles to access to information relating to cultural heritage, particularly for educational purposes, whilst protecting intellectual property rights” (Article 14(c)). The scope of this provision mainly regards the challenges posed by the information society and proposes a just accommodation between the desire for the widest possible free access to cultural resources and the need to ensure fair reward to those who create or own digital contents. However, it can also arguably be seen as a general standard in realising both IP and CH rights in the European legal and cultural context, as is underlined in the current CoE’s heritage policy agenda.36 In the last decades, the IP–CH relationship has also been approached by other regional IGOs from the human rights perspective, especially in relation to the cultural rights of Indigenous peoples and traditional communities. In this regard the key international human rights treaty adopted within the framework of the Organisation of African Unity (OAU) and its successor the African Union (AU) – the African Charter on Human and Peoples’ Rights (African Charter) – already in 198237 placed much emphasis on the protection and enjoyment of cultural rights, both individually and collectively. Significantly, it sets positive obligations for states to promote and protect morals and traditional values, communally recognised, while underlying the right to take part in the cultural life of one’s community and the right to cultural development “with due regard to their freedom and identity and in the equal enjoyment of the common heritage of mankind” (Article 22(1)). Unsurprisingly, the IP–CH relationship is even better articulated in both OAU/AU cultural charters: the Cultural Charter for Africa

(21 March 2011) A/HRC/17/38, and A/HRC/20/26 (14 May 2014). Article 1 of the Statute of the Council of Europe (adopted 5 May 1949, entered into force 3 August 1949) ETS No 001. 35 (adopted 27 October 2005, entered into force 1 June 2011) ETS No 199. 36 See Council of Europe, European Cultural Heritage Strategy for the 21st Century (May 2018) 16, available at accessed 11 April 2022. 37 (adopted 27 June 1981, entered into force 21 October 1986) 1520 UNTS 217. 33 34

350  Research handbook on intellectual property and cultural heritage (1976),38 and the Charter for African Cultural Renaissance (2006 AU Charter).39 Both of them recognise the value of creativity for the protection of all human rights, the enhancement of the right to cultural development, the promotion of cultural diversity, and the enjoyment of CH. Similarly, the 2000 Declaration on Cultural Heritage,40 adopted by the members of the ASEAN, underlines the linkage between human creativity, heritage, and communal IP rights as a human rights issue. It should be noted, however, that while such a link exists in all these instruments, it does not immediately translate into any obvious and clear implementation guidelines or strategies. The human rights dimension of creativity and its value for CH have often been addressed by the Organization of American States (OAS). In particular, the American Declaration on the Rights of Indigenous Peoples41 explicitly links the protection of the CH and IP of Indigenous peoples. In this regard, it states that: [t]he collective intellectual property of indigenous peoples includes, inter alia, traditional knowledge and traditional cultural expressions, including traditional knowledge associated with genetic resources, ancestral designs and procedures, cultural, artistic, spiritual, technological, and scientific expressions, tangible and intangible cultural heritage, as well as knowledge and developments of their own related to biodiversity and the utility and qualities of seeds, medicinal plants, flora, and fauna (Article XXVIII(2)).

It also should be recalled that the human rights aspect of IP and CH has been the subject of an extensive judicial elaboration by regional human rights monitoring bodies. The practice of the European Court of Human Rights (see European Court of Human Rights 2017) and of the Inter-American Court of Human Rights are of particular relevance (see Hausler 2016). These have derived the protection of IP- and CH-related rights from other human rights enshrined in the regional human rights treaty law. However, the interplay between the protection of rights related to the protection of IP, creativity, and the protection of CH and the right to use and access it has not so far been the subject of an in-depth judicial analysis in the case law of these two tribunals. International Trade Viewed in the context of the aforementioned legislative and institutional developments, the present-day international organisational setting for IP and CH seems to balance and enhance the importance of creativity and intellectual life with economic and social development, especially in light of the changing technological environment. As already mentioned, two of the key international organisations in this area – UNESCO and WIPO – have made a number of efforts in this regard. As far as digital circulation is concerned, it is necessary to recall the UNESCO Charter on the Preservation of Digital Heritage and WIPO’s actions for IP rights’

38 (adopted 5 July 1976, entered into force 19 September 1990) available at accessed 11 April 2022. 39 (adopted 24 January 2006) available at accessed 15 August 2021. 40 (adopted 25 July 2000) available at accessed 10 April 2022. 41 (adopted 15 June 2016) OEA/Ser.D.

Bridging IP and CH law in the practice of international governmental organisations  351 protection in digital commerce. In the latter instance, these are especially concerned with the practice of the WIPO Copyright Treaty (WCT),42 a special agreement under the Berne Convention which deals with the protection of works and the rights of their authors in the digital environment. Yet it must be borne in mind that the establishment of the WTO in 1995 and its legal and operational framework affect the very nature of the international organisational panorama and the actual practice in this regard (see Voon 2007). Hence one of the most important areas of the organisation’s work is the attempt to reconcile the freedom of trade with the protection of IP rights and issues of conservation and access to CH. As regards tangible CH, the general exception from the prohibition of arbitrary or unjustifiable restrictions on international trade was already confirmed by General Agreement on Tariffs and Trade (GATT) in 194743 for the purpose of protecting national treasures of artistic, historic, or archaeological value (Article XX(f)). Hence the wider and standardised regime for IP protection (the TRIPS Agreement) became a key regulatory element of the international trade regime only with the establishment of the WTO. All members of this IGO (since its inception, the WTO has grown from 123 to 164 members) must adhere to the TRIPS Agreement, monitored by the TRIPS Council, an intergovernmental body serviced by the WTO Secretariat. Thus, it has had a major impact on the scope of IP protection around the world. The TRIPS Agreement establishes minimum standards of IP protection which must be incorporated through national legislation by the WTO members unless specifically exempted by the WTO (as in the case of the least developed countries (LDCs)). More precisely, such standards are established for a variety of IP instruments, including patents, copyrights, trademarks, geographical indications, industrial designs, plant variety protection, integrated circuit designs, and undisclosed information. With regard to these general standards, much of international discussion initially oscillated around the concept of the cultural exception as a limitation on free trade of culture and the protection of diversity of cultural expressions. This concept was particularly promoted by the EU, one of the key driving forces of the 2005 UNESCO Convention (Ferri 2005: 21–25). With regard to the EU, it should be underlined that the relationship of this powerful, supranational organisation with IP rights and CH is of a unique nature. As actual regulatory measures arise from specific legislative powers of the EU, its axiological and policy considerations in respect of the IP–CH relationship are essentially driven by the value of creativity for the economic, social, and cultural development of the EU Member States and their societies and citizens (Lucas-Schloetter 2021: 13). In this regard, the EU legislative and institutional framework provides for the protection of a wide range of IP rights, including in the digital environment, which takes into account the larger community interests in accessing cultural heritage. The recognition of larger community interests is also of major significance when taking other regional frameworks into consideration. It is interesting to note that IGOs with specific IP mandates – ARIPO and OAPI – have been established only in Africa and have no equivalents in other regions of the world, thus highlighting and demonstrating the specificities of the African approach to culture and creativity and their role in regional and communal development, while reconciling this regional IP uniqueness with the WTO’s requirements. In fact, a revision of the Bangui Agreement took place in 1999 to ensure its conformity with the TRIPS (adopted 20 December 1996, entered into force 6 March 2002) 2186 UNTS 121. (adopted 30 October 1947, entered into force 1 January 1948) 55 UNTS 194; GATT 1994 (adopted 15 April 1994, entered into force 1 January 1995) 1867 UNTS 187. 42 43

352  Research handbook on intellectual property and cultural heritage Agreement. In Asia, matters related to IP were delegated to the ASEAN IP Organisation, established in 1995 as a non-governmental organisation accredited to ASEAN.44 In addition, the ASEAN Working Group on Intellectual Property Cooperation (AWGIPC) holds four consultation meetings a year, with the participation of the IP offices and representatives of ASEAN countries, and announces corresponding work plans. This forum is very active and it has already met 64 times.45 It is thus clear that the economic aspect of IP rights lies in the core of the wider agenda for regional development. In the Americas, the TRIPS Agreement gave rise to a variety of regional responses and platforms for sharing know-how in terms of IP resources. These efforts have been undertaken by various regional organisations, including the Caribbean Community and Common Market (CARICOM) and OAS. Importantly, in 2010 a joint proposal was launched in order to create a regional solution for trademarks, patents, utility models, and industrial designs, known as the  Cooperation System on Management Information and Industrial Property (PROSUR).46 As already mentioned, the IP–CH relationship and problems related to IP rights also appear more and more often in the agenda of the oldest and biggest regional organisation – the OAS, whose mandate, under its founding Charter, is to “preserve and enrich the cultural heritage of the American peoples” (Article 48).47 The OAS also serves as depository of regional treaties concerning IP, culture, and cultural heritage. This regional IGO has taken a stance to protect the creators of CH in the face of rapid technological advancements, and today the organisation provides an important forum to promote more stringent IP protection and agreements throughout the region. As regards the Arab world, the IP–CH relationship vis-à-vis the challenges of global trade and technology has developed in the practice of the three IGOs: the League of Arab States (LAS); the Islamic World Educational, Scientific and Cultural Organization (ICESCO); and the Arab League Educational, Cultural and Scientific Organization (ALECSO). Importantly, Article 4(c) of the Charter of ICESCO48 refers, in describing its mission, to the preservation and safeguarding of tangible and intangible heritage. ALECSO, with 22 Member States, operates not only in the CH area but is also an umbrella organisation in the IP field. Accordingly, under Article 21 of the 1964 Charter of the Arab Cultural Unity: “Member States shall enact legislation to protect literary, scientific and artistic intellectual property.”49 ALECSO and ICESCO regularly take part as observers in the UNESCO Cultural Conventions organ meetings and provide a platform for creating a common stance of the Arab region towards CH developments.

See accessed 12 April 2022. See accessed 12 April 2022. 46 See accessed 18 August 2021. 47 Charter of the Organisation of the American States (adopted 30 April 1948, entered 13 December 1951) 119 UNTS 3. 48 (adopted 3 May 1982, lastly amended in 2020) available at accessed 11 April 2022. 49 English translation available in ESCWA’s Report ‘Arab Integration: A 21st Century Development Imperative’ (2014) Annex 3, 236. 44 45

Bridging IP and CH law in the practice of international governmental organisations  353

UNDERSTANDING IP AND CH REGIME COMPLEXITY In this chapter, we have aimed to analyse the practice of selected relevant IGOs in reference to the uneasy IP–CH interplay. The increasingly complex setting we have arrived at can arguably be well explained by the concept of regime complexity (see Alter and Meunier 2009). This concept highlights the proliferation of overlaps across diverse hard law and soft law instruments (which function in parallel); conflicts among international obligations; and growing confusion regarding which international, regional, bilateral, or national obligations to follow, and what consequences result therefrom. The uncertainty as to how the IP–CH relationship may function in practice is probably the main constant and unchanging feature – but not necessarily a problem. It allows diverse stakeholders to find more appropriate forums, platforms, and solutions to serve their needs in the event those strictly devoted to IP or CH fail to satisfy the goals of one group or another. This strategy is sometimes referred to as “regime shifting”, whereby states and non-state actors relocate rulemaking processes to international venues whose mandates and priorities favour their concerns and interests (Helfer 2009: 39). In the case of the IP–CH relationship, this can be observed in the above-described endeavours to protect collectively created folklore by means of international IP legal instruments developed together by WIPO and UNESCO. This could not have been achieved by states due to the conflicting interests between developed and developing countries, so an international instrument that would “heritagise folklore” was promoted instead by the IGO itself. Regime shifting resulted in the “untightening” of WIPO and UNESCO cooperation – leaving both IGOs with space to act in a more independent way and pursue their goals in the IP and CH nexus (e.g., the WIPO Creative Heritage Project). It thus seems evident that the regime-shifting strategy can be used not only by states but can also be supported by IGOs themselves. It is widely known that the UNESCO Director General Kōichirō Matsūra (1999–2009) was personally interested and involved, on the basis of the experiences of Japan in safeguarding “living human treasures”, in the process of drafting and the adoption of the ICH Convention (Duvelle 2017: 21; Matsūra 2020). The failure to establish a joint common regime by both IGOs resulted in the creation of new regimes (the 2003 and 2005 UNESCO Conventions), and led to a final separation of more profound efforts (though not necessarily interests) on the part of both WIPO and UNESCO in matters legally linking IP and CH. WIPO decided to go its own way and focused its efforts on embracing IP and CH on the local and national levels through non-legal means, such as research projects and training. UNESCO went forward with universal heritage instruments, acknowledging the existence of outside-UNESCO IP regimes and not making efforts to join with WIPO in this area again. Similar strategies employed in the context of regime complexity can be observed in regional responses concerning the implementation of the TRIPS Agreement. Regional integration organisations, which have usually a very broad mandate according to their statutes (such as OAS in both Americas; LAS in the Arab region; and ASEAN in Asia and the Pacific) began discussions and projects about IP rights on their own. In some regions these have resulted in the creation of specialised IP regional organisations, i.e., PROSUR in Latin America and ASEAN IP in Asia. In Africa, despite the existence of ARIPO and OAPI (which specialise in IP), the biggest regional organisation, i.e., the African Union, decided recently to establish

354  Research handbook on intellectual property and cultural heritage

Note: This chapter also analyses the practice of other regional IGOs in the field of IP and CH. For the sake of clarity, in this graph we have chosen to present only African and European IGOs and their connections to universal WIPO and UNESCO. We have also added “sustainable development” as regime hybrid.

Figure 18.1

Bridging IP and CH in the practice of selected universal and regional IGOs: illustrating regime complexity

a new Pan African Intellectual Property Organization (PAIPO).50 This endeavour, however, does not seem to be successful, at least as of yet (with only 6 signatures out of 55 AU Member States51). At the same time, it shows that regime complexity is of a processual nature, marked by a temporality of adopted instruments, created projects, or established bodies. Though Figure 18.1 seems to be a static one, in fact it reflects the more fluid and dynamic changes in the regimes that happen over time. The regime complexity theory allows us to understand this dynamic context, in which not only do new norms, organs, bodies, and projects appear and disappear, but also new concepts and ideas. They foster regime shifts and/or the formation of new alliances. In the case of the CH–IP relationship, the concept of ‘sustainable development’ (SD) has appeared as a game-changer since the adoption of the Rio Declaration in 1992.52 It has influenced all UNESCO Cultural Heritage Conventions; for example, the 2003 and 2005 Conventions explicitly refer to it in their preambles and core texts (Article 2 and 13 of the 2005 Convention, Chapter 6 of the Operational Directives to the ICH Convention). Even if not yet present in hard law instruments, SD appears in the guidelines, recommendations and other soft law instru-

50 See accessed 12 April 2022. 51 See accessed 12 April 2022. 52 Rio Declaration on Environment and Development (June 1992) A/CONF.151/26/rev/1 (Vol. I) Annex I.

Bridging IP and CH law in the practice of international governmental organisations  355 ments. It has also heavily influenced the discussion on IP. The concept of SD – also labelled as “regime hybrid” (Koskenniemi 2012: 319) – has operationalised into the Sustainable Development Goals (SDGs) Agenda post-2015.53 They may serve as either another bridge for the IP–CH relationship or an additional element of regime complexity, as they are both overarching and cross-cutting, especially with regard to human rights as one of the most influential concepts in contemporary international law and international relations. Taking SD as an example of regime hybrid, one should not overlook the fact that the IGOs function in a highly politicised environment. Though the tendency in legal scholarship is to focus on the analysis of legal texts that have been adopted and are in force, the context in which they were adopted and in which they are implemented is not – or at least not only – legal in nature. Politics play a significant role, and despite the fact that the proliferated term “politicisation” suggests the negative side of this process, in practice without specific policies, political interests, diplomatic negotiations, bargaining, and power games, international law would not exist. As Zürn rightfully observes, politicisation means that decisions have to be made about what constitutes appropriate collectively binding actions (Zürn 2014: 50). In the case of the complex IP–CH relationship, choices about the appropriate collective action have changed over time since the 1950s and new actors impacting these choices have emerged. The proliferation of regional IGOs as platforms to pursue efforts in this area seems to be the most visible proof of regional struggles with international standards, sometimes perceived as imposed by more powerful (hegemonic) states or regimes (Koskenniemi 2012).

CONCLUSIONS The dynamic, complex, and constantly evolving international law setting for the IP–CH relationship renders the achievement of consensus on universally accepted protective standards for individual and collective creativity nearly a “mission impossible”. This naturally affects the practice of the key IGOs in this field, as has been proven by the common WIPO–UNESCO endeavours. It is also true that these global IGOs, whose membership is almost entirely composed of sovereign states with often very different interests, may not offer ideal forums to address all the questions and challenges concerning the IP–CH relationship. What is achievable, however, and what has already been accomplished due to the present-day regime complexity (and its inconsistency) at the global level, is the adoption of various solutions at local, national, and regional levels – thanks to regional IGOs’ activity. Arguably, the international regime complexity inclined diverse groups of states as well as regional IGOs to find their own ways of protecting IP and CH. Marked by legal fragmentation and rule ambiguity, it has allowed diverse groups of states as well as regional IGOs to find their own ways of protecting IP and CH through cross-institutional strategies and regime shifts (Alter and Meunier 2009: 16–17). This means that what matters most is not – or at least not only – necessarily a legal construction of international treaties on IP and CH, but regional, national, and local implementation of these often general legal standards. The scholarly investigations of the IP–CH relationship limited to the practice of UNESCO and WIPO might give a definitively clearer, but at the same time false, picture. Only by going down from the universal to regional and 53 See

accessed 11 April 2022.

356  Research handbook on intellectual property and cultural heritage national levels does one obtain an understanding of the impact of IGOs on legal and policy strategies towards the IP–CH relationship. By taking a bottom–up approach, one may also note how states attempt to use IGOs as suitable platforms to promote their interests. This relationship is definitely not one-sided, and the agency of IGOs (their secretariats, treaty bodies and organs, working groups, etc.), the agency of states (their governments, diplomats, experts, etc.), as well as the agency of non-state actors (NGOs, communities, transnational companies, etc.) adds to the complexity of the picture. It is also important to note that all these actors operate in the situation of regime complexity and constantly develop and (re)create the realm of IP and CH. They also constantly interpret and reinterpret their needs, aims, objectives, and the values that they want to see embedded in the regime. Thus, bridging IP and CH in the practice of IGOs is – both politically and legally – a complex process submerged in time, in which diverse actors and agents are likely to change their positions, create new strategies, and establish new organs and institutions (including IGOs) in response to the regime interactions (regimes’ cooperation as well as regimes’ confrontations) they observe and experience (see Young 2012).

REFERENCES Alter, Karen and Meunier, Sophie. 2009. ‘The Politics of Regime Complexity’. Perspectives on Politics 7(1): 13. Alter, Karen J and Raustiala, Kal. 2018. ‘The Rise of International Regime Complexity’. Annual Review of Law and Social Science 14: 329. Antons, Christoph and Logan, William (eds). 2018. Intellectual Property, Cultural Property and Intangible Cultural Heritage. Abingdon: Routledge. Blake, Janet. 2001. ‘Developing a New Standard-setting Instrument for the Safeguarding of Intangible Cultural Heritage. Elements for consideration’. Rev edn; UNESCO. CLT-2001/WS/8 Rev. Blake, Janet. 2017. ‘From Traditional Culture and Folklore to Intangible Cultural Heritage: Evolution of a Treaty’. Santander Art and Culture Law Review 3(2): 41. Blake, Janet and Lixinski, Lucas. 2020. ‘Article 3(b) Relationship to Intellectual Property and Environmental Instruments’. In Janet Blake and Lucas Lixinski (eds). The 2003 UNESCO Intangible Heritage Convention: A Commentary, 117–33. Oxford: Oxford University Press. Bouwhuis, Stephen. 2012. ‘The International Law Commission’s Definition of International Organizations’. International Organizations Law Review 9(2): 451. Burri, Mira. 2020. ‘Cultural Heritage and Intellectual Property’. In Francesco Francioni and Ana Filipa Vrdoljak (eds). The Oxford Handbook of International Cultural Heritage Law, 459–82. Oxford: Oxford University Press. Dutfield, Graham and Suthersanen, Uma. 2020. Dutfield and Suthersanen on Global Intellectual Property Law. 2nd edn. Cheltenham: Edward Elgar Publishing. Duvelle, Cecile. 2017. ‘We need to make synergies between the Conventions. This is the next step for UNESCO…Interview with Cecile Duvelle by Hanna Schreiber and Lucas Lixinski’. Santander Art and Culture Law Review 3(2): 21. European Court of Human Rights, Research Division. 2017. Cultural Rights in the Case-Law of the European Court of Human Rights. Strasbourg: Council of Europe. accessed 17 February 2022. Ferri, Delia. 2005. ‘EU Participation in the UNESCO Convention on the Protection and Promotion of the Diversity of Cultural Expressions: Some Constitutional Remarks’. European Diversity and Autonomy Papers (EDAP) 3/2005. Ficsor, Mihály. 2003. Guide to the Copyright and Related Rights Treaties Administered by WIPO and Glossary of Copyright and Related Rights Terms. Geneva: WIPO. Hafstein, Valdimar Tr. 2018. Making Intangible Heritage: El Condor Pasa and Other Stories from UNESCO. Bloomington: Indiana University Press. Harrison, Rodney. 2013. Heritage: Critical Approaches. London/New York: Routledge.

Bridging IP and CH law in the practice of international governmental organisations  357 Hausler, Kristin. 2016. ‘Collective Cultural Rights in the Inter-American Human Rights System’. In Andrzej Jakubowski (ed). Cultural Rights as Collective Rights. An International Law Perspective. 222–251, Boston-Leiden: Brill. Heath, Christopher and Kamperman Sanders, Anselm (eds). 2005. New Frontiers of Intellectual Property Law: IP and Cultural Heritage – Geographical Indications – Enforcement – Overprotection. Oxford-Portland: Hart Publishing. Helfer, Laurence R. 2003. ‘Human Rights and Intellectual Property: Conflict or Coexistence?’. Minnesota Journal of Law, Science & Technology 5(1): 47. Helfer, Laurence R. 2009. ‘Regime Shifting in the International Intellectual Property System’. Perspectives on Politics 7(1): 39. Kono, Toshiyuki (ed). 2009. Intangible Cultural Heritage and Intellectual Property. Antwerp: Intersentia. Koskenniemi, Martti. 2012. ‘Hegemonic Regime’. In Margaret A Young (ed). Regime Interaction in International Law: Facing Fragmentation, 306–308. Cambridge: Cambridge University Press. Kuruk, Paul. 2020. Traditional Knowledge, Genetic Resources, Customary Law and Intellectual Property. A Global Primer. Cheltenham: Edward Elgar Publishing. Lange, Siri. 1999. ‘How the National Became Popular in Tanzania’. In Mai Palmberg (ed). National Identity and Democracy in Africa, 40–58. Uppsala: Nordic Africa Institute. Laqua, Daniel. 2011. ‘Transnational Intellectual Cooperation, the League of Nations, and the Problem of Order’. Journal of Global History 6(2): 223. Lucas-Schloetter, Agnès. 2021. ‘Is There a Concept of European Copyright Law? History, Evolution, Policies and Politics and The Acquis Communautaire’. In Irini Stamatoudi and Paul Torremans (eds). EU Copyright Law: A Commentary, 6–16. Cheltenham: Edward Elgar Publishing. Macmillan, Fiona. 2020. Intellectual and Cultural Property Between Market and Community. London/ New York: Routledge. Martinet, Lily. 2020. ‘Interactions between Intangible Cultural Heritage and Intellectual Property Law’. In Marie Cornu, et al (eds). Intangible Cultural Heritage Under National and International Law. Going Beyond the 2003 UNESCO Convention, 97–121. Cheltenham: Edward Elgar Publishing. Matsūra, Kōichirō. 2020. ‘Preface’. In Janet Blake and Lucas Lixinski (eds). The 2003 UNESCO Intangible Heritage Convention. A Commentary. Oxford: Oxford University Press. Peters, Anne. 2016. ‘International Organizations and International Law’. In Jacob Katz Cogan, Ian Hurd, and Ian Johnstone (eds). The Oxford Handbook of International Organizations, 33–59. Oxford: Oxford University Press. Rincon, Laurella. 2009. Intellectual Property and Protection of Cultural Heritage. The Case of the National Museums of Art and Civilizations in France. Study carried out for the WIPO. WIPO. Schneider, Marius and Ferguson, Vanessa. 2020. Enforcement of Intellectual Property Rights in Africa. Oxford: Oxford University Press. Shyllon, Folarin. 2016. ‘Cultural Heritage and Intellectual Property: Convergence, Divergence, and Interface’. In William Logan, Máiréad Nic Craith, and Ullrich Kockel (eds). A Companion to Heritage Studies, 55–68. Chichester: Wiley & Sons. Stoll, Peter-Tobias and von Hahn, Anja. 2008. ‘Indigenous Peoples, Indigenous Knowledge and Indigenous Resources in International Law’. In Silke von Lewinski (ed). Indigenous Heritage and Intellectual Property: Genetic Resources, Traditional Knowledge and Folklore, 7–58. Alphen aan den Rijn: Kluwer Law International 2008. Talakai, Malia. 2007. Intellectual Property and Safeguarding Cultural Heritage. A Survey of Practice and Protocols in the South Pacific. Prepared for the WIPO. Geneva: WIPO. Voon, Tania. 2007. Cultural Products and the World Trade Organization. Cambridge: Cambridge University Press. Vrdoljak, Ana Filipa and Meskell, Lynn. 2020. ‘Intellectual Cooperation Organisation, UNESCO, and the Culture Conventions’. In Francesco Francioni and Ana Filipa Vrdoljak (eds). The Oxford Handbook of International Cultural Heritage Law, 13–39. Oxford: Oxford University Press. Young, Margaret A. (ed). 2012. Regime Interaction in International Law: Facing Fragmentation. Cambridge: Cambridge University Press. Zürn, Michael. 2014. ‘The Politicization of World Politics and its Effects: Eight Propositions’. European Political Science Review 6(1) 47.

PART III SPECIAL ISSUES FOR CULTURAL INSTITUTIONS

19. The artist’s resale right Simon Stokes1

1. INTRODUCTION This chapter explores the origins and scope of the artist’s resale right (ARR) with a focus on the European Union’s Resale Right Directive (ARR Directive)2 and its application in the UK – one of the world’s largest and longest-established art markets – together with Australia (where the application of the right to Indigenous art is of particular concern). The interaction of ARR with cultural heritage is also considered. 1.1

Overview of ARR

ARR (or, as it was initially called in France where the right originated, the ‘droit de suite’ – ‘right of following’) is an established part of copyright law in a number of countries, although of comparatively recent origin. Put simply, the right entitles authors [artists] to receive a percentage of the sale price (or in a few cases a percentage of the increase in value in the work) every time that one of their works is sold after the first sale (i.e., when the work is resold).3 In this chapter the terms ‘artist’s resale right’, ‘ARR’, ‘artist’s resale royalty’, ‘resale royalty right’, and ‘droit de suite’ are used interchangeably, with a preference for ARR. 1.2

Origins of ARR

The first ARR law dates back to the French Law of 20 May 1920 in relation to droit de suite. It has been argued that the driving force behind droit de suite was that a support mechanism was needed for French artists once they were subjected to the rigours of the free market following the abandonment of the state-sponsored salon in 1880s France. As Impressionism gained in popularity (it was outside the official salon system where artwork was exhibited in large-scale exhibitions accepted by a specialist jury), the salon system collapsed. The resulting free market benefited the secondary market (art dealers and auction houses selling works already on the market (as opposed to the primary sale by an artist)) rather than artists and their estates.4

1 This chapter represents the author’s personal opinions and not necessarily those of his firm or clients. It is a general consideration of law and policy and not legal advice. It draws heavily on S Stokes, Artist’s Resale Right: UK Law and Practice (3rd edition, Institute of Art and Law 2017). 2 Council Directive (EC) 2001/84 on the resale right for the benefit of the author of an original work of art [2001] OJ L 272/32. 3 See generally L De Pierredon-Fawcett, The Droit de Suite in Literary and Artistic Property: A Comparative Law Study (Center for Law and the Arts, Columbia University School of Law 1992) 284–291. 4 See D Booton, ‘A Critical Analysis of the European Commission’s Proposal for a Directive Harmonising Droit de Suite’ [1998] 2 I.P.Q. 165, 166–169.

359

360  Research handbook on intellectual property and cultural heritage The right was first put forward in France in 1893.5 Arguments in favour of the right which are still used today is that absent the right the artist or their estate share none of the appreciation in value of their works after their first sale.6 The right was introduced in France following a campaign contrasting the poverty of the creators of art works and their estates with the enrichment of those trading in their works.7 Following the introduction of the French law, the right slowly spread to a number of primarily civil law countries. The right received (non-mandatory) recognition in the 1948 revision to the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention). Over time further countries introduced the right and the European Union’s harmonisation of the right in 2001 gave fresh impetus to the global adoption of the right (the UK implemented the right in 2006) – at a recent count around 81 countries have the right.8 China also intends to introduce the right.9 Assuming this happens this will be significant for ARR internationally, as China is one of the world’s largest art markets. However, a note of caution is needed as it is unclear how many of the 81 countries have a functioning ARR system – unless administration and/or effective enforcement provisions are in place in the relevant jurisdiction, the right is just in name only.10 Of the major art markets other than China, the USA and Switzerland do not have the right despite attempts to introduce it. 11 1.3

The Nature of ARR

The nature of ARR as a legal right remains subject to debate: some see it more as a tax or levy, a rental charge, or as an economic right (i.e., where there is a potentially pecuniary interest) linked to the exploitation of the work and so within the artist’s copyright (as opposed to a ‘moral right’ which protects the reputation of the artist and the integrity of their works).12

Ibid, citing an article by Albert Vaunois in 1893. This chapter is not the place to set out the arguments for or against ARR (including a consideration of alternative ways to support artists if that is one of the objectives to be pursued – for example through targeted public funding, private ordering or a social security levy on the art market) and takes the existence of ARR for granted. 7 De Pierredon-Fawcett (n 3) 3–4. See also A O’Dwyer, ‘The nature of the artists’ resale right (droit de suite): from antiquity to modernity‘ [2017] 1 I.P.Q. 95, 96–105. 8 In her comparative law study of droit de suite, and as at the year 1991, Liliane de Pierredon-Fawcett lists at least 28 countries plus the State of California with droit de suite laws (L De Pierredon-Fawcett (n 3) 284–291). However, as a practical matter she notes that the right was collected in only seven of the 29 territories listed. In his 2015 academic study of the right, Professor Sam Ricketson notes that up to 81 countries that are members of the Berne Union have the right (S Ricketson, Proposed international treaty on droit de suite/resale royalty right for visual artists, June 2015). 9 According to sources of the author; it was included in the Copyright Law (Draft Revision for Review) published on 6 June 2014 – see IP Rights in Art in China (Angell Xi (Minjie), Jingtian & Gongcheng law firm – Lexology article 2 May 2019). 10 Australian Government Department of Communications and the Arts, Post-Implementation Review – Resale Royalty for Visual Act 2009 and the Resale Royalty Scheme (2019), Appendix C. 11 There is a Californian statute but this is now pre-empted by federal copyright law and effectively no longer applies (Close v Sotheby’s Inc No. 16-56234 (9th Cir. Jul. 6, 2018)). See also Stokes, Artist’s Resale Right (n 1) ch 7. 12 See S Stokes, Art and Copyright (3rd edition, Hart Publishing 2021) section 4.5. In the Joseph Beuys case (BGH NJW 1994 p.2889) the German Federal Court of Justice called droit de suite a par5 6

The artist’s resale right  361 Nevertheless, ARR is generally treated as falling within the law relating to copyright and this is reflected, for example, in how European law treats the right.13 As noted earlier, the Berne Convention has included a provision dealing with droit de suite since 1948.14 1.4

Key Features of ARR

The background to ARR is the relevant article from the Berne Convention. Under the Convention, ARR can be claimed only in those countries whose legislation provides for it and only on the basis of reciprocity. Article 14ter of the Berne Convention provides as follows: (1) The author, or after his death the persons or institutions authorised by national legislation, shall, with respect to original works of art and original manuscripts of writers and composers, enjoy the inalienable right to an interest in any sale of the work subsequent to the first transfer by the author of the work. (2) The protection provided by the preceding paragraph may be claimed in a country of the Union [i.e., the Berne Copyright Union – those countries signatories to the Berne Convention] only if legislation in the country to which the author belongs so permits, and to the extent permitted by the country where this protection is claimed. (3) The procedure for collection and the amounts shall be matters for determination by national legislation.

Based on the Berne Convention, and the way in which the right has been introduced in various countries, ARR generally has the following features: 1. It applies only to ‘original works of art’ (i.e., the original work and (apart from some states where limited edition prints/copies are protected) not a copy of it); some territories also include manuscripts within the scope of the right; 2. It applies where the original work of art is protected by copyright and for as long as copyright subsists in the work (so it follows the duration of the artist’s copyright); 3. It only applies when the work is resold (i.e., not on the first sale); 4. The right benefits the author and their heirs; 5. The right is ‘inalienable’, i.e., it cannot be transferred by the artist or (in general) waived; 6. Where ARR is introduced into a territory, artists who are not nationals of that territory will not benefit from the right unless their home territory applies it as well; 7. The door is left open for the involvement of collecting societies/collective management organisations (CMOs) (i.e., organisations that help administer and collect the royalty on behalf of a number of artists).

ticipation right sui generis rooted in copyright law. However, as ARR is inalienable, it can be argued it remains a sort of ‘personality right’ and so is closer to a moral rather than an economic right (Booton (n 4). Anthony O’Dwyer discusses the nature of ARR in detail (n 7). 13 Gala-Salvador Dali and Visual Entidad de Gestion de Artistas Plasticos [2010] EUECJ C-518/08 at 3(4): “The resale right forms an integral part of copyright and is an essential prerogative for authors” (citing fourth recital in the preamble to Directive 2001/84). 14 Article 14ter. See generally S Ricketson, The Berne Convention: 1886–1986 (Centre for Commercial Law Studies Queen Mary College/Kluwer 1987) at 8.49–8.60.

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2.

THE ARR DIRECTIVE, ITS UK IMPLEMENTATION AND EXPERIENCE OF THE RIGHT IN THE UK

2.1 Background From the late 1970s onwards, the European Commission had taken the view that the disparate ARR regimes in Member States distorted competition and therefore the proper functioning of the art market. These concerns led eventually to a proposal in April 1996 for a Directive to harmonise national laws relating to artist’s resale right.15 The Directive was the subject of an extended legislative process, with the UK government in particular raising issues about the effect of the Directive on the UK, the EU’s largest art market. This included concerns that the introduction of the right would encourage sales to migrate to the USA (New York) and Switzerland, which did not have the right. In the end the Directive was adopted and included a number of art-market-friendly provisions: a cap on resale royalties to €12,500 and an unusually long transition period for those Member States which did not have the right. The UK implemented the Directive through the Artist’s Resale Right Regulations 2006 (ARR Regulations),16 which took effect on 14 February 2006 – the ARR Directive required Member States to implement the Directive by 1 January 2006. Following the UK’s withdrawal from the EU (Brexit), the UK continues to apply ARR modelled on the ARR Directive as a matter of domestic law. Only limited, ‘tidying up’ changes have been made to the ARR Regulations as a result of Brexit and these Regulations remain in force.17 The UK has also committed to the EU to retain ARR in the future, following Brexit.18 2.2

The ARR Directive and Its UK Implementation

2.2.1 The Directive The main provisions of the Directive are summarised below together with brief comments on UK implementation where there were options for the United Kingdom. In any event, the UK implemented the ARR Directive into domestic law in line with its provisions. The rationale for the Directive is to ensure that artists share in the economic success of their original works of art. ARR is to redress the balance between the economic situation of authors of graphic and plastic works of art and that of other creators (e.g., authors of literary works) who benefit from successive exploitations of their works (for example, a novel is typically published in return for a royalty and further sums may be due if the work is serialised or made into a film, for instance).19

15 Commission, Proposal for a European Parliament and Council Directive on the resale right for the benefit of the author of an original work of art COM(96) 97 final. 16 SI 2006/346. 17 The Intellectual Property (Copyright and Related Rights) (Amendment) (EU Exit) Regulations 2019, SI 2019/605. 18 See Article IP.13: Resale right, EU–UK Trade and Cooperation Agreement. 19 Recital 3.

The artist’s resale right  363 Artist’s right to a royalty (Articles 1(1) and 1(2)) The artist has the right to receive a royalty based on the price obtained for any resale of an original work of art then in copyright, subsequent to the first transfer by the artist. The right applies to all acts of resale involving as sellers, buyers or intermediaries, art market professionals such as salesrooms, art galleries and any dealers in works of art. The participation of an art market professional is crucial. The right is inalienable and cannot be waived even in advance – the rationale for this is to prevent the artist waiving the right due to the inequality of bargaining power that can exist between an artist and an art market professional. It can, however, be transmitted on death. Excluded sales (Recital 18; Article 1(3)) The right does not apply to resales between individuals acting in their private capacity without the participation of an art market professional. Clearly ARR would be difficult if not impossible in practice to identify and collect in such a situation. Member States are also able to exclude sales where the seller has acquired the work directly from the artist less than three years before that resale and where the resale price does not exceed €10,000. The United Kingdom decided to include this exception in the implementing ARR Regulations. Classes of eligible work (Recitals 1–3; Article 1(1); Article 2) The Recitals to the Directive stress that ARR is an integral part of copyright and applies to original works of graphic or plastic art and that the subject matter of the right is the physical work, namely the medium in which the copyright work is incorporated. In the EU and UK, ARR does not apply to original manuscripts of writers or composers. The ARR Regulations in the UK mirror the definitions and approach of the ARR Directive to defining the subject matter of ARR. Liability to pay (Article 1(4)) Recital 25 to the ARR Directive states that the person by whom the royalty is payable should in principle be the seller (the person or undertaking on whose behalf the sale is concluded).20 However, Member States are able to decide whether the royalty is payable by the seller or by the art market professional involved in the sale or whether that liability is shared between these persons. By also holding art market professionals liable in addition to the seller, the ability to enforce the artist’s right to the royalty is enhanced. The UK chose to make sellers and art market professionals jointly and severally liable to pay ARR. Royalty calculation (Articles 3–5) Member States can decide the threshold or minimum sale price above which the right must apply, although this cannot exceed €3,000.

20 The CJEU has concluded that the ARR Directive does not preclude the practice by auction houses in France to pass the responsibility to pay ARR to the buyer “provided that a contractual arrangement of that kind does not affect the obligations and liability which the person by whom the royalty is payable has towards the author” (Christie’s France (Judgment) [2015] EUECJ C-41/14, EU:​C:​2015:​119, ECLI:​ EU:​C:​2015:​119, 34). This is also the practice in the UK.

364  Research handbook on intellectual property and cultural heritage The total amount of royalty payable is in any event limited to €12,500. The royalties are based on bands: ● 4 per cent (or 5 per cent if Member State chooses) for the portion of the sale price up to €50,000; ● 3 per cent for the portion of the sale price from €50,000.01 to €200,000; ● 1 per cent for the portion of the sale price from €200,000.01 to €350,000; ● 0.5 per cent for the portion of the sale price from €350,000.01 to €500,000; ● 0.25 per cent for the portion of the sale price exceeding €500,000. All sale prices are net of tax. The United Kingdom set the threshold at €1,000 and the initial royalty rate at 4 per cent. Persons entitled to receive royalties/collective management (Article 6) During their lifetime the author is the beneficiary of the ARR in their works. The Directive states that those entitled under the author must be able to benefit fully from the resale right after the author’s death; however, the details of this are left to each Member State’s laws of succession (Recital 27; Article (6(1)). This has led to disputes where Member State laws differ on the matter.21 The ARR Directive is without prejudice to arrangements in Member States for collection and distribution, and so Member States are able to decide how the right is managed, and compulsory or optional management by a collecting society is one possibility (Recital 28; Article 6(2)). This must be done in a transparent and efficient manner. Member States must also ensure that amounts intended for authors who are nationals of other Member States are collected and distributed (Recital 28). The United Kingdom opted for compulsory collective management. Two CMOs collect the right in the UK – the Design and Artists’ Copyright Society (DACS) and Artists’ Collecting Society (ACS). Reciprocity/where the sale takes place (Article 7) Artists who are not European nationals are only entitled to the right if their home state permits European Union nationals to also benefit from the resale right. The European Commission was to publish an indicative list of third countries which fulfil the condition for reciprocity – it has not done so, which means there is uncertainty as to which if any non-EU nationals (other than UK nationals) might benefit from ARR in the EU.22 The Directive is silent as to where sales are deemed to take place in the context of a cross-border transaction and so which state is to apply ARR (if it applies at all). Where the sale is deemed to take place will be a matter of general law in the jurisdiction in question, subject to any national implementing laws which seek to clarify this. The UK legislative approach was to decline to deal expressly with the jurisdictional issues – the Regulations are simply stated to extend to the whole of the United Kingdom (Regulation 1(2)). This has led

Fundación Gala-Salvador Dali [2010] EUECJ C-518/08. It appears the reason for this is that no Member States have supplied the Commission evidence for any third country that they qualify for inclusion on this list (Stokes, Artist’s Resale Right (n 1), 73). 21 22

The artist’s resale right  365 to a lack of clarity as to how ARR is to apply to cross-border sales, especially where the sales are made online.23 Following Brexit, the ARR Regulations have been amended so that the right in the UK may only be exercised in relation to authors who are nationals of (a) the UK or (b) of a state the legislation of which permits resale right protection for authors from the UK and their successors in title.24 Term of protection of resale right (Article 8) The right lasts for the duration of the copyright term, i.e., until 70 years from the death of the artist.25 Right to information (Article 9) Artists and any collecting society will have a right to information from the relevant art market professional to enable them to collect the royalty for up to three years following the resale. The ARR Regulations provide for this right and also provide for the information obtained to be treated as confidential. Final provisions (Chapter III) The European Commission is to regularly review the operation of the Directive and may propose revisions to enhance the effectiveness of the Directive.26 2.3

Experience of the Operation of the ARR Directive in the UK27

2.3.1 Overall operation of the right The UK was the world’s second largest art market by value in 2019.28 As noted earlier, ARR has been in place since 2006. In the UK, ARR can only be collected through a CMO and not directly by an artist or their estate. There are two relevant CMOs in the UK: DACS and ACS. DACS distributed £9.8 million in ARR royalties in 201929 and ACS £1.9 million (in its

Ibid, ch 7. The Intellectual Property (Copyright and Related Rights) (Amendment) (EU Exit) Regulations 2019, SI 2019/605. 25 Directive 93/98/EC, Article 1. 26 Such a review was required by 1 January 2009 and every four years thereafter – so far only one such report has been produced by the Commission in 2011 – Report on the Implementation and Effect of the Resale Right Directive (2001/84/EC) (COM/2011/0878 final). The ARR Regulations also commit the UK Government to carry out its own review and produce a report from time to time in relation to the ARR Regulations and the first report was required by the end of 2017 – such a review has not yet been undertaken. 27 See generally S Stokes, ‘Ten Years of Artist’s Resale Right in the United Kingdom: Success or Failure?’ (2016) XXI Art, Antiquity and Law 133. 28 C McAndrew, The Art Market 2020 (Report jointly published by Art Basel, Basel and UBS, Zurich 2020). 29 DACS Annual Review 2019 (https://​www​.dacs​.org​.uk/​about​-us/​corporate​-resources/​annual​ -reports (accessed 8 May 2021)). 23 24

366  Research handbook on intellectual property and cultural heritage 2018–2019 financial year).30 These amounts are modest compared with the total value of art sales in the UK in relation to works likely to qualify for the right.31 There were concerns the introduction of the right in the UK would encourage the art market to relocate sales to territories such as the US32 or Switzerland which did not have the right, but this does not appear to have happened – at least not significantly.33 At a practical level, DACS have raised concerns that certain art market professionals are under-reporting/not reporting sales and has a programme in place to seek to ensure the right is honoured.34 DACS have also queried the effectiveness of the legal regime in the UK to collect ARR.35 They have also raised concerns about the lack of clarity on how ARR applies to cross-border sales, in particular in relation to online auctions, where there is a concern an auction house might choose to form a sale contract in a jurisdiction which does not have ARR.36 From the art market side there have been long-standing complaints about the cost of administering the right and a related concern that the threshold (€1,000) at which the right applies is too low. Dealers also object to having to pay ARR twice on linked/consecutive transactions.37 Overall, the collection of ARR appears to work reasonably well in the UK – the system relies on art market professionals submitting regular sales returns to the CMOs and then paying the relevant ARR amounts to the CMOs, who then distribute the ARR to the beneficiaries less a 15 per cent deduction for their administration costs. The CMOs have put in place administrative procedures to contact art market professionals regularly to require returns, to invoice the royalty and chase up art market professionals who do not submit returns, with the power of the courts to intervene if necessary.38 There have been no reported legal disputes on the right (as of 2021), and the operation of the right has relied on cooperation between art market professionals and the CMOs concerned. Given the size of the UK art market, the amount of ARR collected appears sufficient to fund collection by two CMOs and this no doubt has helped in ensuring the right is collected (subject to concerns noted earlier that some art market professionals are not reporting transactions to the CMOs). Indeed, the fact the UK has compulsory collective management of ARR, that the

30 ACS Transparency Report 2018–2019 (https://​arti​stscollect​ingsociety​.org/​annual​-reports/​ (accessed 8 May 2021)). 31 In 2016 DACS commented that “comparing the percentage of ARR royalties collected by DACS against post-war and contemporary and modern art auction sales in the UK in 2014 was only 0.64%” (Ten Years of the Artist Resale Right: Giving artists their fair share (DACS 2016)). 32 The US did not have the right at federal level in 2001 – there was a state law (in California – the 1977 California Resale Royalties Act). But this law is now pre-empted by federal copyright law and effectively no longer applies (Close v Sotheby’s Inc No. 16-56234 (9th Cir. Jul. 6, 2018)). 33 The economic effect of the introduction of the right has been a matter of debate between the art market and CMOs – see Stokes, Artist’s Resale Right (n 1), 34–36. See also J Farchy and K Graddy, The Economic Implications of the Artist’s Resale Right (WIPO, Geneva, SCCR/35/7, 6 November 2017), who found no impact (at 25). 34 DACS Annual Review 2019. 35 Ten Years of the Artist Resale Right: Giving artists their fair share (DACS 2016). 36 Ten Years of the Artist Resale Right: Giving artists their fair share (DACS 2016). 37 See European Commission Report on the Implementation and Effect of the Resale Right Directive (2001/84/EC) (COM/2011/0878 final) at 3.2.3. 38 ARR Regulations 15 – information requests must be dealt with within 90 days and a court order may be obtained to require the information to be provided.

The artist’s resale right  367 threshold in the UK is €1,000 and both sellers and art market professionals are jointly and severally liable has been contrasted with the situation in Ireland, where there have been reported difficulties in collecting the right.39 2.3.2 Beneficiaries of the right As noted above, DACS are by far the largest CMO dealing with ARR in the UK. Looking at figures released by DACS in 2021, DACS had distributed over £95 million in total in ARR from 2006 onwards to 5,500 artists and estates.40 The £9.8 million in ARR royalties distributed by DACS in 2019 went to 1,798 artists and estates.41 In 2016, DACS noted a 70/30 split between living artists and estates.42 From a survey conducted by DACS in 2014, 81 per cent of artists who received ARR royalties used the income to pay for living expenses, 73 per cent on art materials and 63 per cent on studio space. Whereas for estates, 32 per cent used it for cataloguing work, 25 per cent for promoting the artist and 22 per cent for general administration of the estate.43 For DACS, “[t]his demonstrates that the money is much needed income as part of a wider portfolio of income sources that helps artists and estates to sustain their practice and legacy.”44 In other words, living artists use ARR to sustain their practice and artists’ estates use the money to help sustain and preserve the artist’s legacy as well as the heirs benefiting from an income stream. In conclusion, however, it should be noted that the amounts received can be quite small on an individual basis – DACS figures from 2015 noted that 56 per cent of artists and estates received less than £500 in total ARR royalties.45

3.

ARR IN AUSTRALIA46

3.1 Background There has been a long history of debate over ARR in Australia. By the early 2000s momentum to introduce the right was given by the appreciation of Indigenous fine art and some highly publicised sales in what was a fast-growing market, with auction prices for works initially sold for tens or hundreds of Australian dollars being resold for as high as $500,000. This was in contrast to the difficult financial circumstances of Indigenous artists, their families and communities. The debate over whether to introduce ARR took several years to bear fruit (with 39 See the advocacy of changes to Irish law in this area by the Irish Artists Visual Rights Organisation (IVARO) (https://​ivaro​.ie/​artists​-resale​-right/​advocacy/​) (accessed 8 May 2021). 40 DACS website news item (accessed 8 May 2021). 41 DACS 2019 Accounts. 42 Ten Years of the Artist Resale Right: Giving artists their fair share (DACS 2016), 7. 43 Ibid, 11. 44 Ibid, 11. 45 Ibid, 11. 46 Stokes, Artist’s Resale Right (n 1), 58–60; R Dearn and M Rimmer, ‘The Australian Resale Royalty Right for Visual Artists: Indigenous Art and Social Justice’ in M Rimmer (ed.), Indigenous Intellectual Property: A Handbook of Contemporary Research (Edward Elgar 2015) 200–230; Australian Government Department of Communications and the Arts, Post-Implementation Review – Resale Royalty for Visual Act 2009 and the Resale Royalty Scheme (2019). The chapter by Robert Dearn and Matthew Rimmer is particularly recommended.

368  Research handbook on intellectual property and cultural heritage artists and visual arts organisations generally in favour and the art market and art investors largely against), with compromises along the way before the Resale Royalty Right for Visual Artists Act 2009 (the Act) was enacted. The rationale for the introduction of the right was: The introduction of a resale royalty scheme will allow visual artists to share in the commercialisation of their work in the secondary art market. This will benefit visual artists who derive their main creative income from the initial sale of original works. These artists do not have the same range of opportunities as other creators such as writers and composers to earn money through licensing reproductions, public performances or broadcasting their work.47

3.2

The Resale Royalty Right for Visual Artists Act 2009

The Act is a substantial piece of legislation that has some similarities to the UK scheme but is much more detailed. What is most striking is that due to concerns raised about whether ARR would violate the Australian Constitution, ARR does not apply to the first commercial resale of artworks in existence at the commencement of the Act.48 The effect of this is to substantially reduce the number of eligible transactions until all works in existence at commencement have first entered the secondary market, which will take a considerable period of time.49 For example, if a collector or art dealer owns a work of art at commencement and then sells it via a commercial resale, that first resale after commencement will not attract ARR. Subsequent commercial resales will, however. Other key features of the scheme are as follows. 3.2.1 Nature of the right The Act sits independently from the Australian Copyright statute. It applies to ‘commercial resales’ involving an art market professional (which is broadly defined and includes the owner or operator of a museum) and the threshold for sales to qualify is $1,000. The royalty rate is 5 per cent and is uncapped (unlike in the UK/EU). The right is inalienable and cannot be waived. There is a non-exhaustive and extensive list of original works of visual art to which the right applies (including both what is usually considered fine art as well as works more within the field of craft as well as digital artworks – this is broader than the EU definition). ARR is a debt due to the holders of the ARR, which arises at the time of the commercial resale, and the seller and (in order) the art market professional/agent for the seller, the art market professional/agent for the buyer or the buyer are jointly and severally liable for the ARR.

Revised Explanatory Memorandum, Resale Royalty Right for Visual Artists Bill 2008 (Cth.) (at 1). The Revised Explanatory Memorandum, Resale Royalty Right for Visual Artists Bill 2008 (Cth.) notes that: “[t]he provision is intended to protect the property rights of people who bought artworks not knowing that a resale royalty would be payable when they resold them. This means that anyone who currently owns an artwork will not have their existing rights compromised by the introduction of a new right for artists; for example, current owners of artworks could suffer a loss in the value of their property (artworks) equivalent to the amount provided for a resale royalty. It will also allow businesses in the Australian art market to adjust to this change in their operating environment, ensuring a smooth transition to the resale royalty scheme” (7). 49 The Australian Government Review (n 46) estimates that this has meant that as at 2013, only 25.7 per cent of resales by volume and 10 per cent by value occurring in the Australian secondary art market were eligible. 47 48

The artist’s resale right  369 The right applies to original artworks by living artists and for a period of 70 years after an artist’s death. There are rules in the Act around succession to the right on death – it is possible, for example, for the right to pass to an Indigenous community (as a body) through succession. The artist must be an Australian citizen or resident (or a national or citizen of a reciprocating country).50 3.2.2 Holders of the right The right can be jointly owned if the work was created by more than one artist, but the ownership rights are not broad enough to accommodate communal ownership (except on succession to a community body after the death of the holder). 3.3

Collection of the Right

There is a mandatory duty on sellers to notify the collecting society details of the resale within 90 days of the commercial resale. The collecting society is obliged to publish notice of the commercial resale of an artwork on its website once it becomes aware of the resale (which assists in giving transparency of sales in the work) and the collecting society is under a duty to use its best endeavours to collect the ARR. One collecting society is to administer the scheme but rights holders can opt out of the scheme on a sale-by-sale basis and collect the right themselves if they wish. 3.4

Operation of the Act and Reform

In 2013 a review of the Resale Royalty Right for Visual Artists Act 2009 and its associated scheme was announced. This was finally published in 2019. Looking at the period from 9 June 2010 (commencement of the Act) to 31 October 2013, the right primarily benefited living artists and a majority (65 per cent) of these were Indigenous artists who received 49 per cent of the royalties paid. $2 million in royalties was generated from more than 7,700 resales and benefits returned to over 780 artists. The lowest royalty received was $50 and the highest $55,000.51 There was a significant take-up of the scheme by artists, with information on more than 14,000 artists held in the collecting society’s database.52 The prospective nature of the scheme (i.e., as noted earlier it does not apply to existing works as of commencement until after their first transfer of ownership (including through a commercial resale)) has resulted in the highest proportion of eligible sales occurring among Indigenous art wholesalers (where works can frequently change hands) and the lowest amongst auction houses. Overall, the review found that the scheme and its legislation remain appropriate and that it is achieving its key objective of providing financial returns to individual artists and rights holders. It was, however, noted that some artists had expressed concern the scheme was discouraging art sales.53 It was also noted that the art market reported negative impacts (including

52 53 50 51

Dearn and Rimmer (n 46), 215. Ibid, 9, 19. Ibid, 52. Ibid, 52.

370  Research handbook on intellectual property and cultural heritage an unquantified loss of art sales) and a compliance cost hard for small to medium businesses to absorb in what was a difficult art market during the period.54 By comparison, as of 30 September 2019 the scheme had generated $7.5 million in royalties from 19,964 resales of works by 1,879 artists or rights holders. Living artists received 86 per cent and Indigenous artists 63 per cent by volume.55 Arguments have been made to reform the scheme to review removing the prospective restriction on the right and to promote the principle of social justice, including the recognition of the communal ownership of Indigenous intellectual property and the establishment of a National Indigenous Cultural Authority to administer and manage the right for Indigenous artists.56

4.

CULTURAL HERITAGE, CULTURAL INSTITUTIONS AND ARR

4.1

Cultural Heritage and ARR

ARR applies to original works of art (which in most ARR laws will mean a tangible ‘art object’)57 and also sits within a copyright-related framework where issues such as originality and the identification of the author [creator] and their nationality are fundamental for the right to apply. Taking ‘traditional craftsmanship’ as one important facet of cultural heritage where there will be a tangible object,58 it can be seen that whether ARR will apply to transactions in such an object requires the determination of several questions: 1. Does the object fall within the definition of an original work of art within the relevant ARR law? This requires a consideration of the originality of the work and whether it falls within the relevant definition. Originality may be an issue for communal/traditional works and is also linked to who the author is (see question below). As for issues of definition, the fundamental question is, what is art? ARR laws may seek to clarify this and most ARR laws contain exceptions for works of applied art and architecture.59 In EU/UK law, the definition used in relation to an original work of art includes works not necessarily considered to be ‘fine art’ – tapestries, ceramics, and glassware – and the scope of the right to craft and applied art objects not within the express language of the definition is, however, unclear.60 Also a carving might be considered a ‘sculpture’, for example. In contrast, under Australian law the subject matter of the right is an original work of visual art created by the Ibid, 52. Ibid, 8. 56 Dearn and Rimmer (n 46) 226–230. 57 Digital works are considered below. 58 By reference to the UNESCO Convention for the Safeguarding of Intangible Cultural Heritage (2003), which specifically recognises ‘traditional craftsmanship’ as ‘intangible cultural heritage’ (Article 2(2)(e). 59 Ricketson, Proposed International Treaty (n 8), 42. 60 The ARR Directive definition is: ‘original work of art’ means works of graphic or plastic art such as pictures, collages, paintings, drawings, engravings, prints, lithographs, sculptures, tapestries, ceramics, glassware and photographs, provided they are made by the artist himself or are copies considered to be original works of art (Article 2(1)). 54 55

The artist’s resale right  371 artist or artists or produced under the authority of the artist or artists and works of visual art are listed in some detail (including works typically considered to be fine art as well as batiks, carvings, ceramics, fine art jewellery, glassware, tapestries, and weavings).61 2. Who is/was the artist/author and their nationality? The author needs to be identified for various reasons: a. The artwork needs to emanate from their hand or be a copy considered to be an original work of art (for example the artist authorised their production in limited numbers and signed them); b. ARR follows the usual term of copyright (life of author plus a post-mortem term – 70 years in the EU/UK); c. ARR laws require the author to fall within nationality rules; in Australia, only Australian authors qualify, for example. In the UK, UK nationals qualify plus those of other states who have ARR laws in place which offer reciprocity to UK nationals (which in practice means nationals of the EEA). Identifying the author may be difficult for works of communal origin where joint authorship is difficult to determine. This and the issue of originality relates to a broader question of how copyright protects communal works.62 3. Is there a qualifying resale? In the EU, UK and Australia, an art market professional needs to be involved (so purely private sales are excluded) and typically the value of the transaction needs to be above a certain threshold. That the application of ARR to cultural heritage may not always be clear cut is perhaps not surprising given the right is rooted in Western concepts of what art is and that it emerged out of the art world in France at the turn of the last century. However, the right can be adapted and expanded, as the Australian Act illustrates, although even that still requires the identification of the artist or joint artists.63 4.2

Cultural Institutions and ARR

4.2.1 The art market and ARR It will be clear from the foregoing discussion that it is art market professionals (the art market) – art dealers/galleries and auction houses – who are the ‘cultural institutions’ primarily engaged with ARR. What is clear is that in the EU and UK ARR regime, their involvement is necessary for ARR to apply when art is transacted in. The above discussion has explored issues relating to art market professionals and ARR, so these are not repeated here. What is worth noting is that the lack of detail in the EU/UK ARR regime and that much is left to Member States to address in terms of collection mechanisms means that (as evidenced in the UK) a good working relationship between the art market and the CMOs concerned appears crucial for ARR to operate effectively, especially where the legislation is silent on a specific issue. This requires the active engagement of both art market professionals and CMOs to work together to make the right efficiently apply to the benefit of artists, acknowledging that there

Section 7. See Stokes, Art and Copyright (n 12) section 6.9. 63 See also Dearn and Rimmer (n 46). 61 62

372  Research handbook on intellectual property and cultural heritage are administrative costs involved and that a flourishing art market is also necessary for artists to benefit from the right.64 4.2.2 Museums Moving from the art market and looking specifically at museums, where a museum sells or purchases an eligible artwork, does ARR apply? In the EU/UK, an art market professional (dealer, auction house or other intermediary) needs to be involved. So, if a museum privately purchases a work without the involvement of an art market professional, ARR does not apply.65 Likewise if a museum were to sell the work without involving an art market professional as seller, buyer or an intermediary (on the basis that museums would not usually be considered to be dealers in works of art under EU/UK ARR law). In contrast, in Australia the involvement of a museum in selling or acquiring a work does potentially trigger ARR, even if a dealer or auction house is not involved. This is because in the Australian Act an art market professional is defined to include “the owner or operator of a museum”.66

5.

DIGITAL ASPECTS OF ARR – ONLINE SALES, DIGITAL ARTWORKS AND AI

5.1

Online Sales

The resale of art works via an online platform or auction will potentially attract ARR subject to issues of whether the resale in question falls within the ambit of an applicable ARR law.67 As an aside, the use of blockchain technology to assist in managing ARR is under consideration and has been trialled in Australia.68 5.2

Digital Artworks

The resale of digital artworks (works which have no tangible existence) does not appear to fall within the scope of EU/UK ARR, but the Australia Act does include digital artworks within the definition of ‘works of visual art’. There appear to be at least two issues in trying to apply ARR to the resale of digital artworks. First it can be queried how a ‘digital artwork’ can be sold and then resold – typically the copyright in such a work is not transferred when rights to such a work are acquired (usually this is by way of a licence). Second and a related point is that ARR law generally (and the EU/

64 The EU stakeholder dialogue on ARR proposed by the European Commission in 2011 is a good example of this – this resulted in Key Principles and Recommendations on the management of the Author Resale Right executed by EU CMOs and art market trade associations and leading auction houses in 2014. 65 Recital 18 of the ARR Directive expressly recognises this possibility. 66 Section 8(3)(c). The Revised Explanatory Memorandum to the Act comments “[t]he [ARR] scheme will cover sales from a private seller to a public institution and vice versa” (at 5). 67 See discussion in text above at 2.2.1. 68 Stokes, Art and Copyright (n 12) section 5.8.3.

The artist’s resale right  373 UK law in particular) is rooted in the notion of a fine art ‘object’ – a tangible item that can be transacted in. There is currently a well-publicised trend in ‘selling’ digital artworks through the use of non-fungible cryptographic tokens (NFTs). Such transactions involve the use of smart contracts on a blockchain, and these can give an ongoing ‘royalty’ back to the artist who first minted the NFT every time the NFT is resold.69 Current market practice is a royalty rate of 10 per cent. This is significantly higher than the ARR rates in the EU/UK and Australia. Such a royalty is a matter of private law – a form of contractual right – and distinct from ARR. 5.3

ARR and Artificial Intelligence (AI)

There is also currently a debate as to whether and how copyright law should protect art works created by artificial intelligence (AI).70 Where such works exist purely as digital ‘objects’ (digital files/data) with no tangible embodiment, whether ARR applies at all is moot for the reasons already set out above. However, where the AI artwork has a tangible embodiment – like The Next Rembrandt, for example71 – the application of ARR becomes a possibility depending on how the legal regime in question defines authors for the purpose of copyright law and ARR and to what extent it grants copyright protection for AI-created works. The legal issues here are complex and not yet resolved. However, EU, UK and Australian ARR laws are clearly human-centric, and the genesis of ARR in France was to provide for artists and their dependants who saw their artworks appreciate in value, lining the pockets of art dealers, auctioneers and speculators, with no fair share for the artist or their estate. It would therefore be curious indeed if an AI-created work were ever eligible for ARR.

6. CONCLUSION From its origins in France just over one hundred years ago, ARR is now an established part of the copyright law of a significant number of countries and there is a global campaign to extend the operation of the right into those countries without the right.72 There is no doubt that the harmonisation of ARR across the EU and its introduction into the UK (one of the world’s largest art markets) has helped put the right on the legislative agenda of important and fast-growing art markets, such as China. The interrelationship between ARR and cultural heritage is an area that is undeveloped in the EU/UK as regards Indigenous art and craft but is an area central to the right in Australia.

69 See for example, Stuart D. Levi, Mana Ghaemmaghami, MacKinzie M. Neal, and Allison L. Shapiro, “NFTs Raise Novel and Traditional IP and Contract Issues”, March 30, 2021, Bloomberg Law (available at https://​www​.skadden​.com/​insights/​publications/​2021/​03/​nfts​-raise​-novel​-and​-traditional (accessed 8 May 2021)). 70 See for example the UK Intellectual Property Office’s recent consultation on this area (https://​ www​.gov​.uk/​government/​consultations/​artificial​-intelligence​-and​-intellectual​-property​-call​-for​-views/​ artificial​-intelligence​-call​-for​-views​-copyright​-and​-related​-rights (accessed 8 May 2021)). 71 https://​www​.nextrembrandt​.com/​ (accessed 8 May 2021). The Next Rembrandt is an AI-created 3D printed art work that was generated through the use of AI techniques that analysed the oeuvre of Rembrandt and created his ‘next’ masterpiece. 72 https://​www​.cisac​.org/​services/​policy/​visual​-artists​-resale​-right (accessed 8 May 2021).

374  Research handbook on intellectual property and cultural heritage ARR is rooted in Western concepts of what an original work is. It does not easily apply to digital or AI-created works, if indeed it applies at all. The experience of resale royalties in the UK is that both artists and their estates benefit from the right – the sums received can help support living artists and can also be used by estates to help preserve an artist’s heritage. An artist is also entitled to transfer the right after their death to a charity by testamentary disposition, and this can also help ensure their artistic legacy is preserved.73 In Australia, benefits have accrued to Indigenous artists through the right and the right can also be transferred after death to a charity or a community body. The successful operation of ARR in a country requires both an operative ARR law and an effective infrastructure in place to manage and collect the royalty. The EU and UK experience indicates that an ongoing dialogue between CMOs and art market professionals also assists in having the right function efficiently and securing an understanding is reached on areas not addressed in the legislation or where the law is unclear.

ARR Regulations, regulation 9.

73

20. Digitization of cultural heritage under EU copyright: Digitizing the past to enable access and innovation for the future Stavroula Karapapa

INTRODUCTION Reporting for a European Parliament briefing, Magdalena Pasikowska-Schass remarked that “cultural heritage can be an economic asset, a tourist attraction and an identity factor, and it can also contribute to social cohesion.”1 Europe is famous for its cultural heritage. Access to this heritage has reached an unprecedented level through digitization. Enhanced availability of, and access to, digital cultural heritage can bring benefits for conservation, research, study, and promotion of cultural assets. This is particularly so in the light of modern research opportunities on digital text, such as text mining and data analysis, which have enabled the development of new knowledge on the basis of data found in large silos of digitized information.2 The need for digital transformation of cultural heritage institutions has become more relevant than ever in the light of the Covid-19 pandemic. Despite its benefits for education, enjoyment or re-use of copyright works, including use towards innovation and the development of new knowledge, digitization of cultural heritage, and other modern forms of copying, such as 3D printing, challenge copyright law. This is primarily because digitization initiatives require copying of copyright-protected materials at a scale that the request of individual permission from copyright holders is neither feasible nor cost-permissive. In addition, many works that can be found in libraries and archives, such as films and photographs, lack detailed metadata indicating copyright ownership and, even when they do, either it may not be possible to locate the copyright holder or the works remain out of print. These two kinds of copyright-protected works – orphan and out-of-commerce works respectively – have only recently been subject to a comprehensive legislative framework at the EU level through the Orphan Works Directive3 and the Digital Single Market Directive,4 both of which allow for certain acts of digitization of relevant works. In addition, text and data

1 Magdalena Pasikowska-Schass (2018) “Cultural Heritage in EU Policies”, European Parliamentary Research Service, PE 621.876, p. 3, available at https://​www​.europarl​.europa​.eu/​RegData/​etudes/​BRIE/​ 2018/​621876/​EPRS​_BRI(2018)621876​_EN​.pdf 2 See Maurizio Borghi and Stavroula Karapapa, Copyright and Mass Digitization: A Cross-Jurisdictional Perspective (Oxford University Press 2013). 3 Directive 2012/28/EU of the European Parliament and of the Council of 25 October 2012 on certain permitted uses of orphan works, OJ L 299, 27 October 2012, p. 5–12. 4 Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the Digital Single Market and amending Directives 96/9/EC and 2001/29/ EC, PE/51/2019/REV/1, OJ L 130, 17 May 2019, p. 92–125.

375

376  Research handbook on intellectual property and cultural heritage mining on copyright-protected materials has been recently regulated by copyright law in the European Union, which now offers certain permitted uses by reference to these activities. This chapter is concerned with the copyright framework governing digitization initiatives in the European Union. It addresses questions that were raised in the 2020 European Union consultation that took place as part of the evaluation of the 2011 Recommendation on the digitisation and online accessibility of cultural material and digital preservation,5 aiming to ensure that the Recommendation is still fit to respond to the needs and challenges of the cultural heritage sector in an era of rapid and continuous technological change.6 The Recommendation is a milestone in the digital cultural policy of the European Union as it is the only instrument addressing the digitization of cultural heritage from planning and funding to enabling online access and digital preservation, and it invites Member States to enhance their digitization efforts with a view to increasing online accessibility of European cultural heritage and the development of creative industries. The chapter starts by offering an outline of digitization initiatives in Europe and the United States and compares the differentiated ways in which these initiatives have evolved, focusing primarily on copyright law aspects. It then moves on to analyse the legislative framework that applies to digitization projects in the European Union, including the approach towards orphan and out-of-commerce works and the copyright exception covering text mining and data analytics, and explains that despite the positive effects of digitization projects to society, education, and the economy, the legal framework could further facilitate digitization initiatives. The chapter takes a particular focus on an underexplored, and not yet judicially addressed, issue concerning the engagement of digitization initiatives on the storage of and computational analysis on digitized works that are orphan, out of print, or in the public domain. It argues that digitization of such works should not result in the creation of new proprietary entitlements over the digital version and that policy measures need to be in place to ensure that digital monopolies shall be avoided.

TOWARDS A UNIVERSAL DIGITAL LIBRARY: THE US APPROACH TO DIGITIZATION INITIATIVES Mass digitization initiatives are rooted in the aspiration to develop a universal digital library7 and, hence, engage in the digitization of cultural heritage materials with a view to make them accessible. One of the first projects to pursue such a mission was the Internet Archive, founded in 1996, which aspired to create a digital copy of all the world’s books and materials in the public domain, including films and sound recordings.8 The Internet Archive currently offers permanent access to over 32 million books and other texts, over 7 million moving images and 5 Commission Recommendation of 27 October 2011 on the digitisation and online accessibility of cultural material and digital preservation, OJ L 283, 29 October 2011, p. 39–45. 6 Public consultation on opportunities offered by digital technologies for the culture heritage sector, 22 June 2020, available at ; the author’s collaborative response to this consultation can be found at Karapapa, S. et al, (2020) Consultation on Digital Cultural Heritage: Position Paper (on file with the author). 7 See eg Matt Simon, ‘Alexandria 2.0: One Millionaire’s Quest to Build the Biggest Library on Earth’, Wired, 20 August 2012. 8 http://​www​.archive​.org

Digitization of cultural heritage under EU copyright  377 13 million audio recordings; and its affiliate project, the WayBack Machine, hosts and makes available more than 586 billion archived webpages. Perhaps the most widely known mass digitization initiative is Google Books, formerly known as Google Print and Google Book Search. The initiative started in 2002 under the code name Project Ocean and involved the scanning and OCRing – namely converting text via optical character recognition (OCR) – of books, which were then stored in Google Books’ digital database. The books were provided either by publishers and authors through the Google Books Partner Program, or by Google’s library partners through the Library Project. Google Books does not only make the books searchable on a word-by-word basis, but it also makes them available in different modes, depending on their copyright status. For instance, works in the public domain are available to read and download, books available under licensing terms are made available to the extent permitted by the relevant licence, and other books are displayed in snippet or metadata view only. As of October 2019, the number of scanned books exceeds 40 million titles.9 The project was legally challenged in September 2005, when the Authors Guild Association of America, together with five publishers, sued Google for copyright infringement.10 Google offered to settle the lawsuit for $125 million and the parties announced a settlement in October 2008, which was later amended,11 but eventually rejected in March 2011.12 The rejection was summarized by Judge Chin as follows: “[w]hile the digitization of books and the creation of a universal library would benefit many, the [Amended Settlement Agreement] would simply go too far.”13 After almost a decade of litigation, on 14 November 2013, the Southern District Court of New York ruled on the class action, with Judge Chin holding that the activities carried out in the context of the Google Books project do not amount to copyright infringement.14 The ruling affirmed that copying works subject to copyright protection with a view to make them searchable on the Internet is an act of fair use under US copyright law. This is not the only case where a mass digitization initiative was found to be a permitted, fair use, under US copyright. Another relevant case concerns the litigation between the Authors Guild of America and the HathiTrust, a partnership of over 50 research institutions and libraries aspiring to develop a large-scale repository of digital content.15 As of July 2021, HathiTrust preserves more than 17 million digitized items, including allegedly orphan works too. At its initial stages of operation, HathiTrust run the so-called ‘Orphan Works Project’, under the leadership of the University of Michigan, with the aim of identifying the copyright status of books digitized by Google Books or the Internet Archive. In September 2011, the Authors Guild Association of America brought forward an action for injunctive and declaratory relief, as some of the works were about to be given an orphan work status without appropriate

9 Haimin Lee, “15 years of Google Books”, Google blog, 17 October 2019, available at https://​www​ .blog​.google/​products/​search/​15​-years​-google​-books/​ 10 Authors Guild Inc v Google Inc, No. 05 Civ 8136, filed 20 September 2005. 11 Settlement Agreement, Authors Guild Inc v Google Inc, No 1:05-CV-08136 (28 October 2008. An Amended Settlement Agreement was filed on 13 November 2009). 12 Authors Guild Inc v Google Inc, 770 F Supp 2d 666 (SDNY 2011). 13 Ibid, 669. 14 Authors Guild, Inc. v Google, Inc., 804 F.3d 202 (2d Cir. 2015) [appeal decision] and later Authors Guild, Inc. v Google, Inc., 578 U.S. 849 (2016) [Supreme Court cert. denied]. 15 http://​www​.hathitrust​.org/​

378  Research handbook on intellectual property and cultural heritage diligent searches having been carried out.16 In particular, it was argued that HathiTrust was depriving authors of potential sales and undermined the copyright owners ability to decide their participation in licensing opportunities.17 The action had as a result the suspension of the Orphan Works Project. Because the project never made it out of the planning phase, the District Court refused to grant the injunction as it was missing “crucial information about what that program will look like should it come to pass and whom it will impact”.18 Examining the level to which HathiTrust’s activity amounts to fair use, the court concluded that all uses of the copyright-protected works were fair use, agreeing with the defendants that the plaintiffs will never “develop a market to license the use of works for search purposes, access for print-disabled individuals, or preservation purposes” since it is not a “commercially viable endeavor”.19 The reason why the aforementioned digitization projects were found to be permissible under US copyright law is the interpretative framework and flexible judicial application of the fair use test.20 Following the seminal work of Judge Leval21 and Professor Nimmer,22 the fair use test has been expanded over the last decades to cover technologically empowered acts of verbatim reproduction of works, to the extent that these acts are able to give the secondary work a new purpose or new meaning, despite the fact that no creative input is involved.23 According to Nimmer, “if, regardless of medium, the defendant’s work, although containing substantially similar material, performs a different function than that of the plaintiff’s, the defence of fair use may be invoked.”24 The defence has indeed been affirmed in a broad range of cases spanning from cases of creative transformations, such as parodies,25 to technologically trans-

Authors Guild v HathiTrust, No 11 Civ 6351, filed 12 September 2011. Authors Guild v HathiTrust, Memorandum of Law in Support of Plaintiffs’ motion for Summary Judgment, 11 Civ 6351 (HB), 2. 18 Authors Guild v HathiTrust, 902 F.Supp.2d 445 (SDNY October 10, 2012). 19 Ibid. 20 See 17 U.S.C. § 107: Notwithstanding the provisions of sections 17 U.S.C. § 106 and 17 U.S.C. § 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include: 1. the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; 2. the nature of the copyrighted work; 3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and 4. the effect of the use upon the potential market for or value of the copyrighted work. 21 Pierre N Leval, ‘Toward a Fair Use Standard’ Harvard Law Review 103 (1990) 1105. 22 Nimmer, Nimmer on Copyright § 13.03[A][2], at 13-38 to 13-38.1 (1987). 23 Cf. Maurizio Borghi and Stavroula Karapapa, Copyright and Mass Digitization: A Cross-Jurisdictional Perspective (Oxford University Press 2013) 19 et seq. 24 Ibid, § 13.05[B], at § 13-86. 25 See eg Campbell v Acuff-Rose Music Inc, 510 US 569 (1994); for a comment on Campbell, see Edward Samuels, ‘Campbell v. Acuff Rose: Bringing Fair Use into Focus?’ Media Law & Policy 4 (1994). 16 17

Digitization of cultural heritage under EU copyright  379 formative uses, such as thumbnails,26 i.e., reduced-size images of copyright-protected works for the purposes of enabling web searches. It is unlikely that the current legislative framework of copyright exceptions and limitations in the EU would allow this kind of activity.

EU DIGITIZATION INITIATIVES AND THE EU APPROACH TO DIGITIZATION The EU approach to digitization has been much more constrained by copyright norms, despite the gradual introduction of legislative measures to ensure the success of digitization initiatives. Unlike the United States, where digitization of millions of books was found to amount to fair use in the Google Books case,27 EU copyright law can still be seen as an obstacle to digitization. Recent legislative initiatives, such as the new copyright exceptions and limitations introduced through the Orphan Works Directive and the Digital Single Market Directive (particularly: the copyright exceptions on text mining and out-of-commerce works), are a positive development but do not enable the full benefit from digitization initiatives for reasons explained below. The legal framework of copyright exceptions and limitations available under EU copyright law does not allow such a degree of flexibility as the US fair use does. There are various reasons why permitted uses under EU and UK copyright seem rigid and indifferent to flexibility. First, EU copyright exceptions and limitations, notably those available in the Information Society Directive28 and the Directive on Copyright in the Digital Single Market, are included in a closed, exhaustive list,29 which does not allow discretion at national legislators.30 Second, at least until recently, exceptions and limitations have been subject to the principle of strict interpretation31 and, to that effect, there is no room for flexibility in the interpretations adopted

26 See eg Perfect 10 v Amazon.com, 508 F 3d 1146, 15474; Kelly v Arriba Soft Corporation, 336 F 3d 811 (CA9 2003); but see contra Flava Works v Gunter, Opinion (7th Cir, 2 August 2012). 27 Authors Guild, Inc. v Google, Inc., 804 F.3d 202 (2d Cir. 2015) and Authors Guild, Inc. v Google, Inc., 578 U.S. 849 (2016). 28 Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, OJ L 167, 22 June 2001, p. 10–19. 29 See to that effect Proposal for a European Parliament and Council Directive on the Harmonisation of Certain Aspects of Copyright and Related Rights in the Information Society, Brussels, 10 December 1997, COM(97) 62, OJ C 108, 7 April 1998, 6, Explanatory Memorandum; Information Society Directive (Directive 2001/29/EC), Recital 32; also see Marc Soulier and Sara Doke v Premier Ministre and Ministre de la Culture et de la Communication, Case C301/15, ECLI: EU:​C:​2016:​878, [34]; Land Nordrhein-Westfalen v Dirk Renckhoff, Case C161/17, ECLI:​EU:​C:​2018:​634, [16]; Pelham GmbH, Moses Pelham, Martin Haas v Ralf Hütter, Florian Schneider‑Esleben, Case C‑476/17, 29 July 2019, ECLI:​EU:​C:​2019:​624, [63]. 30 Article 5(3)(o) of Directive 2001/29/EC allows Member States some discretion to retain copyright exceptions and limitations on “other cases of minor importance” already available under their national laws. However, the Court of Justice affirmed that “a Member State cannot, in its national law, lay down an exception or limitation other than those provided for in Article 5 of Directive 2001/29 [to the phonogram producer’s right provided for in Article 2(c) of that directive]”. See Pelham GmbH, Moses Pelham, Martin Haas v Ralf Hütter, Florian Schneider‑Esleben, Case C‑476/17, 29 July 2019, ECLI:​EU:​C:​2019:​ 624, [65]. 31 VCAST Limited v RTI SpA, Case C-265/16, 29 November 2017, ECLI:​EU:​C:​2017:​913 (VCAST), [32]; ACI Adam and Others, Case C435/12, EU:​C:​2014:​254 (ACI Adam), [22]; Stichting Brein v

380  Research handbook on intellectual property and cultural heritage by national judges. Finally, exceptions and limitations are subject to the three-step test twice under EU copyright, with the effect that – until recently – the scope of available exceptions and limitations was subject to dual scrutiny.32 With digitization and the internet, the need to enhance access to European digital content became prominent.33 In 2006, the European Commission announced the decision to promote Europeana, Europe’s portal to its digital cultural heritage, by joining the efforts of all European cultural institutions in a single framework.34 The project was launched in 2008 – then called European Digital Library Network – as an entirely publicly funded initiative with the aim of creating a universal platform hosting Europe’s cultural heritage. Unlike Google and the HathiTrust, it selects the material through its partner institutions and, importantly, avoids the digitization of in-copyright works. It focuses on works that are in the public domain and on metadata of copyright-protected works. It currently includes records of over 50 million cultural and scientific artefacts and is premised on four strategic contours: aggregation of content; facilitation of knowledge transfer, innovation and advocacy; distribution of cultural heritage; and engagement of users through enhanced participation to cultural and scientific heritage. Since its launch, the progress of Europeana has been conservative, primarily because of the complexity of Europe’s copyright framework which, until recently, was not offering an expressly permissive framework on the use of certain kinds of copyright works, such as orphan and out-of-print works. As acknowledged in the European Commission’s Digital Agenda for Europe, “[f]ragmentation and complexity in the current licensing system also hinders the digitisation of a large part of Europe’s recent cultural heritage. Rights clearance must be improved, and Europeana … should be strengthened.”35 To enable these objectives, the legislative reform at the EU level targeted three key areas: the introduction of legal rules that would make allowances for certain uses of orphan and out-of-print works and the development of a new copyright exception allowing text mining and data analytics.

(A) ORPHAN WORKS Even though cultural heritage organizations own physical copies of copyright-protected works, making such materials available online requires clearing a licence from the relevant copyright holders. Following an unsuccessful attempt to adopt a soft-law approach on orphan works, the European Commission eventually adopted a Directive to specifically address this issue, the

Jack Frederik Wullems, Case C527/15, 26 April 2017, ECLI:​EU:​C:​2017:​300 (Filmspeler), [61]–[62]; Infopaq International, Case C5/08, 16 July 2009, ECLI:​EU:​C:​2009:​465 (Infopaq I), [55]–[56]; Infopaq International, C302/10, 17 January 2012, ECLI:​EU:​C:​2012:​16 (Infopaq II), [26]. 32 Stavroula Karapapa, Private Copying (Routledge 2012) 99 et seq; Christophe Geiger, ‘From Berne to National Law, via the Copyright Directive: The Dangerous Mutations of the Three-Step Test’ (2007) 29(12) European Intellectual Property Review 486. 33 See Council of the European Union and Commission of the European Communities, Action plan: eEurope 2002 – An Information Society for All, for the Feira European Council, 19–20 June 2000. 34 https://​www​.europeana​.eu/​en 35 Communication from the Commission to the European Parliament, the Council, the European Economic and Social Committee and the Committee of the Regions, A Digital Agenda for Europe, COM(2010) 245 final/2, 26 August 2010, point 2.7.3.

Digitization of cultural heritage under EU copyright  381 so-called Orphan Works Directive. Other relevant initiatives include a 2011 memorandum of understanding on out-of-commerce works.36 Even though the Orphan Works Directive was envisaged as a mechanism of enhancing legal certainty in the internal market,37 it is arguably not the most efficient approach in dealing with the orphan works problem, primarily because of its numerous internal limitations that shrink the scope of lawful uses by reference to orphan works.38 The Orphan Works Directive was specifically introduced with a view to facilitate large-scale digitization of materials available in public institutional collections, to enhance access to Europe’s cultural heritage and promote the free movement of knowledge within the European Union. It supplements the exceptions and limitations available under the Information Society Directive for certain – but not all – categories of work and other subject matter that qualify as orphan works. It outlines a legal framework that requires Member States to permit qualifying public institutions to carry out specific uses of orphan works and other subject matter available in their collections with a view to pursue their public interest mission.39 The Directive outlines detailed legal provisions in order to establish whether the work or other subject matter qualifies as an orphan work: to acquire an orphan work status, it should be impossible for any of the copyright holders in that work or phonogram to be identified or, even if one or more of them is identified, it should be impossible to locate any of them, even though a diligent search has taken place and been recorded.40 To be eligible for an orphan work status, a work should belong to the collections or archives of publicly accessible institutions; it should have been first published or broadcast in a Member State;41 and it should be one of the eligible works on the basis of Articles 1(2) and (4), namely writings, such as books, journals, newspapers, and magazines; phonograms; cinematographic and other audiovisual works; and works that are incorporated in, or constitute an integral part of any of the three major aforementioned categories of work. The recognition of a work as orphan in one Member State results in mutual recognition by all Member States. This principle aspires to enable cross-border uses of orphan works and phonograms. The Orphan Works Directive does not cover every kind of digitization venture and, by virtue of its first Article, it exhaustively covers only certain types of institutions, such as publicly accessible libraries, archives, educational establishments, museums, public service broadcasting organizations, and film or audio heritage institutions. Some of these beneficiary institutions are also covered by the exception available for libraries and archives under Article 5(3)(c) of the Information Society Directive, so the overlapping scope of both exceptions allows a greater breadth of permissible use. The effect of the restrictive mention of certain institutions in the Directive means that commercial ventures cannot benefit from the Directive. This is indicative of the more limited approach adopted in the European Union compared with

36 Memorandum of Understanding on Key Principles on the Digitization and Making Available of Out-of-Commerce Works, 20 September 2011. 37 Directive 2012/28/EU, Recitals 3, 9, and 25. 38 Stavroula Karapapa, Defences to Copyright Infringement: Creativity, Innovation, and Freedom on the Internet (Oxford University Press 2020) 236 et seq. 39 Directive 2012/28/EU, Article 1; Even though the Directive refers to works, it also seems to cover related rights too: see Article 1(2), and Recitals 3 and 4 (3). 40 Directive 2012/28/EU, Article 2(1). 41 Directive 2012/28/EU, Article 1(2).

382  Research handbook on intellectual property and cultural heritage the United States, where ventures pursued by independent parties have been found to be fair use. The Directive offers a detailed framework of diligent searches that beneficiary institutions ought to carry out before confining an orphan works status to a work. Although there is no precise definition of ‘diligent search’, this can be understood via a number of threshold conditions that need to be fulfilled: the search should be carried out in a diligent way, in good faith, with regards to each individual work, and it should take place before the use is made. Beneficiary institutions should consult a minimum number of resources as identified in the Annex to the Directive, which can be supplemented by Member States.42 The Directive outlines a framework of ‘one’ search, to avoid costly and time-consuming duplication of search efforts. In order to verify that the search was diligent, the beneficiary institutions ought to record and maintain the results of the search and to transmit those records to a competent national authority.43 Because the diligent search mechanism is based on individual searches of works, which are costly and time-consuming, the Orphan Works Directive does not offer the most appropriate solution for cases of mass use of orphan works. The Directive introduces a mandatory exception or limitation. According to Article 6, permitted uses include the making of a work available to the public44 and acts of copying for the purposes of digitization, making available, indexing, cataloguing, preservation, or restoration.45 Articles 1(1) and 6(2) of the Orphan Works Directive specify that it is only uses serving the public interest mission of the beneficiary institutions that are allowed. Recital 20 indicatively mentions activities such as “the preservation of, the restoration of, and the provision of cultural and educational access to, their collections, including their digital collections”. There is overlap between the exception of Article 6 and the one available in Article 5(2)(c) of the Information Society Directive concerning specific permitted uses carried out by publicly accessible libraries and archives.46 Unlike Article 5(2)(c), however, the exception available under the Orphan Works Directive is mandatory for Member States to implement. Although a positive initiative, the scope of the permitted use is limited to specific institutions, namely publicly accessible organizations; specific uses, i.e., uses that are made in connection with the public interest mission of the beneficiary organizations, excluding commercial uses; and specific categories of works, excluding, for instance, standalone photographs and other images, audiovisual works and phonograms produced by public service broadcasting organizations after 31 December 2002, and foreign works, i.e., works published outside the EEA. In addition, the EUIPO database was not as successful as anticipated.47 Despite its limited scope, the Orphan Works Directive marks a significant progress in the protection of cultural heritage, putting the public interest in the access to these materials at the forefront.

Directive 2012/28/EU, Article 3. Directive 2012/28/EU, Article 3(5) and Recitals 15 and 19, Article 3(5). 44 Directive 2001/29/EC, Article 3. 45 Directive 2012/28/EU, Article 6(2). 46 Stavroula Karapapa, Defences to Copyright Infringement: Creativity, Innovation, and Freedom on the Internet (Oxford University Press 2020) 241 et seq. 47 Even though the database may play an important role in the future, six months after implementation of the Directive there were only 100 works registered in the database on the basis of data from the Framework for an EU-Wide Audiovisual Orphan Works Registry, available at . 42 43

Digitization of cultural heritage under EU copyright  383

(B) OUT-OF-COMMERCE WORKS Other works and subject matter that may remain unused due to copyright restrictions are the so-called out-of-commerce works. They were defined by Article 8(5) of the Directive on Copyright in the Digital Single Market, as: A work or other subject matter shall be deemed to be out of commerce when it can be presumed in good faith that the whole work or other subject matter is not available to the public through customary channels of commerce, after a reasonable effort has been made to determine whether it is available to the public.

Whereas some orphan works also qualify as out-of-commerce works, not all out-of-commerce works are also orphan. Out-of-commerce works are either commercially unavailable or no longer subject to commercial exploitation48 as a result of authorial decision or publishing strategies. Same as orphan works, out-of-commerce works are an important constituent of our cultural heritage that remains unused due to difficulties in clearing rights. Facilitating the use of out-of-commerce works was one of the initiatives undertaken by the Directive on Copyright in the Digital Single Market. Before the introduction of detailed provisions on out-of-commerce works in the Directive on Copyright in the Digital Single Market, the Commission had undertaken a number of initiatives, such as a stakeholder dialogue,49 that led to the signature of a Memorandum of Understanding on Key Principles on the Digitization and Making Available of Out-of-Commerce Works on 20 September 2011.50 The Memorandum aimed to encourage voluntary agreements in the context of collective licensing but had no binding effect on its signatories. Following the 2011 Memorandum, some Member States included relevant provisions in their national laws. For instance, Germany enabled the digitization and making available of out-of-commerce works by amending its Copyright Administration Act.51 France had addressed the issue of

48 See in this regard US Copyright Office, Report on Orphan Works: A Report of the Register of Copyrights (January 2006) 34; i2010: Digital Libraries High Level Expert Group – Copyright Subgroup: Final Report on Digital Preservation, Orphan and Out-of-Print Works, 4 June 2008, s. 6.1; Maurizio Borghi and Stavroula Karapapa, Copyright and Mass Digitization: A cross-jurisdictional perspective (Oxford University Press 2013) 88. 49 Commission Recommendation of 24 August 2006 on the Digitization and Online Accessibility of Cultural Material and Digital Preservation, OJ L 236/28, Article 6(b). 50 Memorandum of Understanding on Key Principles on the Digitization and Making Available of Out-of-Commerce Works of 20 September 2011. 51 Act of 1 October 2013 ‘zur Nutzung verwaister und vergriffener Werke und einer weiteren Änderung des Urheberrechtsgesetzes’ (BGBl. I 2013, S. 3728 (Nr. 59)), amending das Urheberrechtswahrnehmungsgesetz vom 9 September 1965 (hereinafter ‘GCAA’). Also see Elisabeth Niggemann, ‘National Libraries and Copyright in the Digital Age – the German Situation for Orphan Works and Out-of-Print Works’ (2012) 23 Alexandria: The Journal of National and International Library and Information Issues 125. Works that are part of the collection of a publicly accessible institution, and published before 1 January 1966, can be entered into the registry for out-of-commerce works, operated by the German Patent and Trademark Office. See Act of 1 October 2013, Section 13(d)(4); . This is followed by the presumption that the relevant collecting management organization can conclude licences for non-commercial uses of those works with third parties, unless the rightholders have

384  Research handbook on intellectual property and cultural heritage out-of-commerce works through its Act on the digital exploitation of unavailable books of the 20th century.52 Article L.134-2 introduced a registry of out-of-commerce books, operated by the French National Library, as a freely accessible online public database.53 Soon after its introduction, the Act was challenged before the French Constitutional Court with a “priority issue of constitutionality”54 and, even though the Constitutional Court found in favour of the constitutional compliance of the collective management system, the European Court of Justice – affirming the position of the Advocate General55 – found that the Act was in violation of the exclusive rights of copyright holders as established by the Information Society Directive.56 Even before the 2011 Memorandum, Nordic countries, i.e., Sweden, Norway, Denmark, Finland, and Iceland, had in place legal provisions regulating the use and possible exploitation of out-of-commerce works since the 1960s.57 Although the Nordic model covers efficiently

objected to the entry of their works into the registry within a six-week period. Rightholders can oppose to their work being included in the registry at any time. See ss. 13d(1)(5) and 13(d)(2). 52 According to the Act, a book is deemed commercially unavailable when it had been published in France before 1 January 2001, was no longer subject to dissemination by a publisher, and no longer published either in printed or digital form. Act No 2012-287 relating to the Digital Exploitation of Unavailable Books of the 20th century, 1 March 2012, Article L.134-1 IPC. 53 See https://​relire​.bnf​.fr/​registre​-gestion​-collective A work registered in the database can be digitized and made available on a non-exclusive basis for five years that can be subject to renewal and copyright holders are entitled to compensation. With the lapse of six months of registration, the right of reproduction and making the work available are administered by a relevant collecting society. Copyright holders could terminate this gratuitous authorization at any time. 54 French Act No 2012-287 relating to the Digital Exploitation of Unavailable Books of the 20th Century, 1 March 2012; The question was whether Articles L 134-1 to L 134-9 of the French Intellectual Property Code (Article 1 of Act No. 2012-287 of 1 March 2012 on the digital exploitation unavailable books of the twentieth century) complied with constitutionally protected rights and freedoms. The Constitutional Court found that the 2012 Act was in compliance with the French Constitution because right to property may be subject to limitations to the extent that these are justified for reasons of public interest and insofar as they do not exceed this objective. 55 Opinion of Advocate General Wathelet in Marc Soulier and Sara Doke v Premier Ministre and Ministre de la Culture et de la Communication, C-301/15, 7 July 2016, ECLI:​EU:​C:​2016:​536. 56 Marc Soulier and Sara Doke v Premier Ministre and Ministre de la Culture et de la Communication, C-301/15, 16 November 2016, ECLI:​EU:​C:​2016:​878. In this case, the European Court of Justice assessed the compatibility of the 2012 Act with the Information Society Directive. Although neither Article 2(a) nor Article 3(1) of the Information Society Directive, outlining the rights of reproduction and communication to the public respectively, specify the way in which prior authorial consent must be expressed, they do not require that such a consent has to be given explicitly. Consent can also be expressed implicitly, as is, for instance, the case of the right of communicating works to the public in the online environment under the concept of the ‘new public’ as elaborated in Svensson. See Marc Soulier and Sara Doke v Premier Ministre and Ministre de la Culture et de la Communication, C-301/15, 16 November 2016, ECLI:​EU:​C:​2016:​878, [35]. However, implied consent can only be admitted in strictly defined circumstances not to deprive of effect authorial consent. Authors should be informed of future uses of their works by third parties and to prohibit it if they so wish. The 2012 French Act did not appear to ensure that authors were actually informed and, as a result, was in breach of the exclusive right of authors as established by the Information Society Directive. 57 See in this regard Stef Van Gompel, ‘Unlocking the Potential of Pre-existing Content: How to Address the Issue of Orphan Works in Europe?’ (2007) 38(6) International Review of Intellectual Property and Competition Law 669, 687–689; Tarja Koskinen-Olsson, ‘Collective Management in the Nordic Countries’ in Daniel Gervais (ed.) Collective Management of Copyright and Related Rights (Alphen aan den Rijn: Kluwer Law International, 2006) 257.

Digitization of cultural heritage under EU copyright  385 mass uses of works because it is not premised on individual clearance of rights,58 it arguably imposes conditions both on the exercise and enjoyment of exclusive rights and deprives rightholders of the power to negotiate royalties.59 The Directive on Copyright in the Digital Single Market introduced a mechanism under which institutional users, such as libraries, archives, and museums, are entitled and permitted to carry out specific uses of out-of-commerce works with a view to enhance access to Europe’s cultural heritage. Article 8 of the Directive on Copyright in the Digital Single Market outlines a mandatory copyright exception. Article 8(1) introduces collective licensing mechanisms for out-of-commerce works. Member States should give a collective management organization the authority, in accordance with its mandate from rightholders, to conclude a non-exclusive licence for non-commercial purposes with cultural heritage institutions for the reproduction, distribution, communication to the public, or making available to the public of out-of-commerce content that is permanently in the collection of the institution. In addition, the principle of equal treatment of all rightholders is to be guaranteed. Member States are offered flexibility in determining the specific parameters of the scheme, in accordance with their legal traditions, practices, and circumstances as Recital 33 of the Digital Single Market Directive indicates. Article 8(2) lays down an exception on the use of out-of-commerce works, in order to allow cultural heritage institutions to make available, for non-commercial purposes, out-of-commerce content that is permanently in their collections. For the exception to apply, the source should be attributed, unless this turns out to be impossible, and the content should be made available on non-commercial websites. Under the framework envisaged by the Directive, collective management should be the norm and, where such a mechanism is not set in place, the exception of Article 8(2) should take effect. The beneficiaries of the exception are cultural heritage institutions, the same as those mentioned in Article 6 of the Orphan Works Directive, namely publicly accessible libraries or museums, archives or film or audio heritage institutions. Article 8(4) outlines an opt-out mechanism, offering copyright holders the opportunity under national law to exclude their works from the licensing mechanism, at any time, easily, and effectively. As Recital 35 indicates, where a copyright holder excludes the application of the collective management schemes or the relevant copyright exceptions or limitations to one or more works or other subject matter, any ongoing uses are terminated within a reasonable period. Specific provisions are in place with regards to cross-border uses of out-of-commerce works, according to Article 9:

58 Johan Axhamn and Lucie Guibault, ‘Cross-border Extended Collective Licensing: A Solution to Online Dissemination of Europe’s Cultural Heritage?’ [2012] Amsterdam Law School Research Paper No. 2012-22, available at . 59 Bernard Lang, ‘Orphan Works and the Google Book Settlement: An International Perspective’ in J Grimmelmann (ed.) D is for Digitize (2010) 55 New York Law School Law Review 111, 118–119; Silke Von Lewinski, ‘Mandatory Collective Administration of Exclusive Rights – A Case Study on its Compatibility with International and EC Copyright Law’, January–March 2007, UNESCO, e-Copyright Bulletin.

386  Research handbook on intellectual property and cultural heritage 1. Member States shall ensure that licences granted in accordance with Article 8 may allow the use of out-of-commerce works or other subject matter by cultural heritage institutions in any Member State. 2. The uses of works and other subject matter under the exception or limitation provided for in Article 8(2) shall be deemed to occur solely in the Member State where the cultural heritage institution undertaking that use is established.

The exception on out-of-commerce works is clearly a positive step, although its efficacy seems to be limited due to the narrow scope of the available provision. As this is a recently enacted provision there is limited evidence on the extent to which digitization initiatives have been facilitated. However, this provision is part and parcel with another copyright exception that was introduced in the Directive on Copyright in the Digital Single Market, which allows text mining and data analytics.

(C) TEXT MINING AND DATA ANALYTICS The wealth of content generated in big silos of digitized works has given rise to modern research capabilities, such as text mining and data analytics. Such techniques include text and image analysis, automatic translation, data extraction, and indexing and search.60 Because these activities involve copying, they are copyright relevant61 and, until recently, they could amount to copyright infringement if performed on copyright-protected works without licence or other authorial permission. Text mining and data analytics has the potential to generate new knowledge that cannot be reached through human reading of the relevant materials. It consists of the electronic processing of large amounts of data, such as those available in silos of digitized works, and enables researchers to discover trends, patterns, and knowledge that is not feasible via human reading. One of its central premises is that more data can result in more refined and accurate analysis. As a result, text and data mining often operates on the basis of copying large volumes of information, including the text of copyright-protected works. However, clearing licences from each and every copyright holder when it comes to such expansive volumes of information may not be feasible or cost-effective. It was the UK that first introduced an exception for text mining and data analytics in Europe as part of its 2014 copyright reform,14 followed by Ireland62 and France.63 This kind of scientific research has been directly addressed in the Directive on Copyright in the Digital Single Market, which defines scientific research as covering both the natural sciences and the human sciences. The Directive on Copyright in the Digital Single Market exempts certain activities

60 See eg Pamela Samuelson ‘Google Book Search and the Future of Books in Cyberspace’ (2009) 94 Minnesota Law Review 1308, 1353–1354. 61 Maurizio Borghi and Stavroula Karapapa, Copyright and Mass Digitization: A Cross-Jurisdictional Perspective (Oxford University Press 2013) 45 et seq. 62 Copyright and Other Intellectual Property Law Provisions Act 2019, Number 19 of 2019, available at , Article 14 requesting the inclusion of Article 53A in the Copyright Act; Copyright and Other Intellectual Property Law Provisions Bill 2018 as passed by Dáil Éireann, No. 31b of 2018, Article 13. 63 Law for a Digital Republic (Loi pour une république numérique) 2016.

Digitization of cultural heritage under EU copyright  387 of text and data mining from infringement. Article 2(2) of the Directive offers the following definition of ‘text and data mining’: any automated analytical technique aimed at analysing text and data in digital form in order to generate information which includes but is not limited to patterns, trends and correlations.

The Directive on Copyright in the Digital Single Market includes two exceptions on text and data mining, both of which are compulsory for Member States to implement and included in Articles 3 and 4 of the Directive. Article 3 of the Directive, entitled ‘Text and data mining for the purposes of scientific research’, reads: 1. Member States shall provide for an exception to the rights provided for in Article 5(a) and Article 7(1) of Directive 96/9/EC, Article 2 of Directive 2001/29/EC, and Article 15(1) of this Directive for reproductions and extractions made by research organisations and cultural heritage institutions in order to carry out, for the purposes of scientific research, text and data mining of works or other subject matter to which they have lawful access. 2. Copies of works or other subject matter made in compliance with paragraph 1 shall be stored with an appropriate level of security and may be retained for the purposes of scientific research, including for the verification of research results. 3. Rightholders shall be allowed to apply measures to ensure the security and integrity of the networks and databases where the works or other subject matter are hosted. Such measures shall not go beyond what is necessary to achieve that objective. 4. Member States shall encourage rightholders, research organisations and cultural heritage institutions to define commonly agreed best practices concerning the application of the obligation and of the measures referred to in paragraphs 2 and 3 respectively.

The text and data mining exception allows the reproduction and extraction of copyright-protected works from the databases of research organizations and cultural heritage institutions and there is no requirement to clear the permission of the relevant copyright holders or an obligation to pay compensation, as harm to the copyright holders is deemed minimal.64 The exception covers acts of reproduction covered by the Information Society Directive and the Database Directive. The exception is expressly laid down as compulsory against any contractual restrictions, but copyright holders can apply measures to ensure the security and integrity of the networks hosting the works or other subject matter. Measures ensuring the security and integrity of such networks should adhere to what is necessary to achieve the objective of network security and Member States are required to encourage copyright holders and research organizations to define commonly agreed best practices concerning the application of technological measures enhancing the security of networks. Interestingly, the exception is not limited to the non-commercial nature of the activities involved. Beneficiaries of the exception are universities and other research organizations, and cultural heritage institutions. Public libraries and non-profit public establishments also benefit from 64 Directive 2001/29/EC, Recital 17. The exception is limited in scope in that the beneficiaries should have lawful access to the data. Recital 14 of the Directive explains that lawful access means access based on an open access policy or through contractual arrangements between rightholders and research organizations or cultural heritage institutions.

388  Research handbook on intellectual property and cultural heritage the exception. Recital 11 explains that “[w]hile research organisations and cultural heritage institutions should continue to be the beneficiaries of that exception, they should also be able to rely on their private partners for carrying out text and data mining, including by using their technological tools.” Importantly, the exception is mandatory against contractual override by virtue of Article 7(1) and, in addition, Member States ought to take appropriate measures to ensure that copyright holders make available to the beneficiary of the text mining exceptions the means of benefiting from those exceptions. Article 4, entitled ‘Exception or limitation for text and data mining’, introduces a broader exception, according to which: 1. Member States shall provide for an exception or limitation to the rights provided for in Article 5(a) and Article 7(1) of Directive 96/9/EC, Article 2 of Directive 2001/29/EC, Article 4(1)(a) and (b) of Directive 2009/24/EC and Article 15(1) of this Directive for reproductions and extractions of lawfully accessible works and other subject matter for the purposes of text and data mining. 2. Reproductions and extractions made pursuant to paragraph 1 may be retained for as long as is necessary for the purposes of text and data mining. 3. The exception or limitation provided for in paragraph 1 shall apply on condition that the use of works and other subject matter referred to in that paragraph has not been expressly reserved by their rightholders in an appropriate manner, such as machine-readable means in the case of content made publicly available online. 4. This Article shall not affect the application of Article 3 of this Directive.

This exception is also mandatory for Member States to implement but is broader in scope compared with the exception in Article 3. First, it is not limited to scientific research and can in principle cover any kind of text and data mining, even on a commercial scale. Second, it also applies the reproduction right as available in the Computer Programs Directive. Finally, the exception of Article 4 is made available to any entity and not just to specified institutional beneficiaries. Despite its seemingly broad scope, Article 3(3) specifies that copyright holders may be exempted from the application of the exception if they have opted out in an ‘appropriate manner’ from the activities permitted by the exception. This opt-out mechanism means that the application of the exception is likely to be rendered largely ineffective, especially with regards to large databases of copyright-protected content.

DIGITAL MONOPOLIES: THE ELEPHANT IN THE ROOM Digitization opens a number of questions that have to be addressed at the policy level, including, for instance, questions over the ownership of the information that has been digitized. Can new proprietary entitlements emerge on the digitized version of an orphan or out-of-print work, or a work in the public domain? Can beneficiaries of the text mining exception disable other parties from mining outputs produced on the basis of the text mining exception? These positivist and normative questions strike at the heart of an emergent legal problem: the possibility of proprietary entitlements on content that has been copied on the basis of a permitted use – in particular proprietary entitlements on content that may be out-of-copyright protection – and possible anti-competitive behaviours, such as refusal to license such content. The ques-

Digitization of cultural heritage under EU copyright  389 tion of whether digital monopolies over such digitized works emerge, i.e., instances whereby the exercise of permitted uses results in control over copied content, is emergent and has not yet been judicially addressed. However, with the rise of digitization initiatives, including initiatives involving the digitization of works in the public domain, the question emerges as to whether the operators of such initiatives can exercise exclusive control over the digitized content, and, if so, if they should be permitted to do so. With modern technologies operating on the basis of the use and re-use of content, which often includes copying, owners of copy-reliant technologies or operators of digitization initiatives may find themselves in a position to authorize or license portions of their data collections, or uses thereof, for specific purposes, while also having the opportunity to exploit the computational potential of their data collections, e.g., via machine learning tools. The development of collections of digitized information and data can benefit from various systems of legal protection under EU copyright law, including technological protection measures, contractual terms, and the so-called sui generis database right.65 What is more, digitization agreements between private organizations and cultural institutions can impose restrictive conditions on third parties on the use of content that emerges from permitted copying, as could be the case of orphan or out-of-print works. The digitization of cultural heritage owing to the availability and exercise of permitted uses could result in anti-competitive behaviour, refusal to license content, and the rise of ‘digital monopolies’.66 Under EU copyright law, collections of digital and digitized works and of data can attract copyright by means of the way in which the works or the data are selected and arranged. The 1996 European Database Directive67 offers protection to aggregations of data, without a requirement that the selection and arrangement of content be original. Article 7 of the Database Directive indicates that what matters is the substantiality of the investment made, with the result that a variety of uses involving copying of content, such as collections of digital libraries and archives, or aggregations of metadata could attract protection as sui generis databases. This form of legal protection gives its beneficiaries the right to object to unauthorized extraction or re-utilization of a substantial part of the content included in the database and could give rise to entitlements over content that is within the public domain or somehow not eligible for copyright protection, such as facts, information, or metadata on copyright works. The sui generis database right represents an addition to the copyright layer of protection – which would be particularly relevant in cases where copyright does not apply – and eventually to a de facto monopoly over the content as such.68 Until recently, the sui generis right would have the effect that owners of data collections, including libraries and archives, would be entitled to refuse the use of the works or data from third parties, unless one of the exceptions available under the Database Directive would be available. The recently introduced exceptions allowing text mining and data analytics available under Articles 3 and 4 of the Digital Single Market Directive introduce a new exception to

65 Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases, OJ L 77, 27 March 1996, p. 20–28. 66 Maurizio Borghi and Stavroula Karapapa, Copyright and Mass Digitization (Oxford University Press 2013) 92 et seq. 67 Directive 96/9/EC. 68 Maurizio Borghi and Stavroula Karapapa, Copyright and Mass Digitization (Oxford University Press 2013) 92 et seq.

390  Research handbook on intellectual property and cultural heritage the sui generis database right as they apply to the reproduction rights available under Article 5(a) and Article 7(1) of the Database Directive, and Article 2 of the Information Society Directive. If this exception is to be examined through the lenses of the recent affirmation of permitted uses as user rights by the Court of Justice of the European Union,69 there is the likely consequence that those entitled to carry out a particular permitted use, such as text mining, will have the right to request that their permitted use remains unencumbered. This would also apply to owners of digital collections who have developed their data sets by benefiting from permitted uses, such as uses for orphan or out-of-print works, and have the effect of truly unlocking the potential of works and data available in such collections. This would have the welcome effect of imposing a restriction on the monopolization of information and data, especially in the context of education and scientific research, in line with the scholarly discussions that were held before the introduction of the sui generis database right in Europe.70 It also aligns with principles of property law and concepts of ownership according to which the privatization of public access is not permitted. A principle-based view would be that copyright exceptions allowing the generation of new content should have a viral effect in the sense that those who benefited from an exception should not disable the exercise of the same exception by reference to the content they produced. For materials that are currently in the public domain, digitization should not result in de facto, exclusive entitlements on the digitized version to be owned by the body who engaged in the digitization process. Materials in the public domain ought to remain in the public domain in line with principles of EU copyright law71 and – to a certain extent – the protection available under the national laws of unfair competition.

CONCLUSION With the Covid-19 pandemic having recently disrupted the traditional way of working, digital transformation of cultural heritage institutions has become more relevant than ever. Digitization of cultural heritage has benefits for education, enjoyment or re-use of copyright works, including use towards innovation and the development of new knowledge. Despite the recent legislative efforts at the European Union level with a view to facilitate digitization initiatives, EU copyright law still remains restrictive as to the kinds of activities that can be lawfully carried out in the context of digitization. Law and policy can be revisited to offer further support to cultural institutions towards developing digitization initiatives, particularly in the light of the possible revision of the Commission’s 2011 Recommendation to support the digital transformation of the cultural heritage sector. The legislative framework for orphan

69 Funke Medien NRW GmbH v Federal Republic of Germany, C-469/17, 29 July 2019, ECLI:​EU:​ C:​2019:​623 (‘Funke Medien’) [70]; Spiegel Online v Volker Beck, Case C-516/17, 29 July 2019, ECLI:​ EU:​C:​2019:​625 (‘Spiegel Online’) [54]. 70 The EU Commission acknowledged in its Evaluation Report on the Database Directive, issued in 2005, that “[t]he issue of access to ‘information’ is of concern to various categories of users”. First evaluation of Directive 96/9/EC on the legal protection of databases, 10. Also see Jerome H Reichman and Pamela Samuelson, ‘Intellectual Property Rights in Data?’ Vanderbilt Law Review, 50 (1997) 52. See also Estelle Derclaye, Legal Protection of Databases. A Comparative Analysis (Edward Elgar 2008). 71 Commission Recommendation 2011/711/EU, OJ L 283/39, Art. 5(a); also see Maurizio Borghi and Stavroula Karapapa, Copyright and Mass Digitization: A Cross-Jurisdictional Perspective (Oxford University Press 2013), 92.

Digitization of cultural heritage under EU copyright  391 works, for instance, can be revisited in terms of its breadth and parameters of application. Importantly, digitization of cultural heritage and digital transformation more broadly, including computational analysis of cultural heritage, should not come with the development of de facto monopolies over digitized content, information, and data, to the effect that public domain material should remain in the public domain after digitization, in order to fully embrace the potential of digital cultural heritage towards enhanced access and innovation.

21. Intellectual property and cultural heritage issues for museums of archaeological materials Pınar Oruç and Uma Suthersanen1

INTRODUCTION While archaeological museums are responsible for keeping cultural heritage safe and accessible, there are various challenges on how these materials are owned and controlled through the lens of intellectual property (IP) and cultural heritage (CH) laws. The basis for current challenges arises from the ostensible absence of synergy and dialogue between the archaeological and IP spheres.2 From this base line, the clash of living systems versus static analogue or digital objects cascades to create a web of challenges. First, it is difficult to pin down the notion of ‘cultural heritage’. Then there are confused and contested perspectives of ownership, authorship, and societal identity. A further difficulty lies in the divergent views within disciplines and communities inter se as to how heritage situates within a space and time framework. This is then further complicated by the impact of IP law on the ownership of heritage and the digital developments in the sector. This chapter focuses on these underlying incompatibilities, with a focus on unravelling the complicated web of rights and entitlements involved. Part 1 looks at the complicated relationship between cultural heritage and the role of museums. Part 2 highlights the underlying challenges for archaeological museums when IP law intermingles with notions of tangible and intangible cultural property. We do this by exploring the Sutton Hoo archaeological dig under English law – a hitherto uncharted exploration from the perspective of ownership and IP rights. We then frame this appreciation against the New Zealand legal framework in relation to Māori heritage. Part 3 addresses the practice of digitisation and whether it is the solution for the myriad issues that arise from ownership, especially in light of dialogues on decolonisation. A key issue throughout, as we show, is ‘time’ when faced with ownership and guardianship of old artefacts.

1 Some aspects of this chapter were presented by Uma Suthersanen and Paula Westenberger in a paper entitled ‘Who Owns the Physical, Digital and Visual Object? Visualising the future of digital heritage assets’, at the International Society of History and Theory of Intellectual Property workshop, held in Sydney, 2019. 2 There have been noteworthy explorations of the interaction of these two disciplines which we rely on here, including: Michael Brown, ‘Can culture be copyrighted?’ (1998) 39(2) Current Anthropology 193, 222; Michael Brown, Who Owns Native Culture? (Harvard University Press 2003); Darrell Posey and Graham Dutfield, Beyond Intellectual Property Rights: Towards Traditional Resource Rights (IDRC 1996); George P. Nicholas and Kelly P. Bannister, ‘Copyrighting the Past?: Emerging Intellectual Property Rights Issues in Archaeology’ (2004) 45(3) Current Anthropology 327; Ryan M. Seidemann, ‘Authorship and Control: Ethical and Legal Issues of Student Research in Archaeology’ (2003–2004) 14 Alb. L.J. Sci. & Tech. 451.

392

IP and CH issues for museums of archaeological materials  393

1.

CULTURAL HERITAGE AND MUSEUMS

1.1

Fragmented Heritage: Tangible and Intangible Things

The concept of ‘cultural heritage’ is difficult to pin down, and therein lies the dilemma for cultural heritage institutes in relation to their role and mandate. A brief overview of the definitions in the literature hint that heritage is the result of a shared experience of the entire humankind that needs to be preserved and left to future generations.3 Particularly problematic are the references to property and to the ‘intangible’, without a commensurate grounding of such concepts within particular disciplinary approaches such as cultural property or IP. If we turn to UNESCO instruments for guidance, we see that each instrument defines the scope according to its purpose. Thus, the phrase ‘movable or immovable property’ covers archaeological sites, and objects of archaeological interest, as well as centres “containing a large amount of cultural property” is employed in the 1954 Hague Convention. “[P]roperty which, on religious or secular grounds, is specifically designated by each state as being of importance for archaeology, prehistory, history, literature, art or science” is the basis within the 1970 Convention on Cultural Property. The net is cast wider under the 2003 Convention on Intangible Cultural Heritage, where intangible cultural heritage is included alongside “practices, representations, expressions, knowledge, skills – as well as the instruments, objects, artefacts and cultural spaces associated therewith”.4 Although the 2003 Convention usefully foresees a system whereby signatory states identify the elements on intangible heritage in their territory, this approach may not be completely in line with the practices of living cultures: the dynamic nature of intangible heritage does not sit well with static object inventories; such inventory-making does not necessarily guarantee the participation of all stakeholders; and finally, this approach does not fully address the different approaches between communities inter se and with states.5

3 “Cultural heritage consists of manifestations of human life which represent a particular view of life and witness the history and validity of that view” (Lyndel V Prott and Patrick J O’Keefe, ‘“Cultural Heritage” or “Cultural Property”?’ (1992) 1 Intl J Cultural Property 307, 307); “cultural heritage embodies the collective memory of peoples and nations around the world, shaped by humanity’s unique ability to conceive meaning located in the past and recasting it to build a future” (Lourdes Arizpe, ‘The Cultural Politics of Intangible Cultural Heritage’ in Janet Blake (ed), Safeguarding Intangible Cultural Heritage: Challenges and Approaches (IAL 2007) 25; “(cultural heritage) ensures that a people’s memory is kept alive and thus preserves a country’s history, which in turn helps to ensure the avoidance of past mistakes and unnecessary duplications, the progress of education, of science and knowledge, the maintenance of cultural diversity, the mutual understanding between peoples and, hopefully, peace” (Estelle Derclaye, ‘Introduction’ in Estelle Derclaye (ed), Copyright and Cultural Heritage: Preservation and Access to the Works in a Digital World (Edward Elgar Publishing Ltd 2010) viii). 4 Hague Convention for the Protection of Cultural Property in the Event of Armed Conflict, art. 1; Convention on the Means of Prohibiting and Preventing the Illicit Import, Export and Transfer of Ownership of Cultural Property (1970), art. 1; Convention for the Safeguarding of the Intangible Cultural Heritage, art.2. 5 Michael F Brown, ‘Heritage Trouble: Recent Work on the Protection of Intangible Cultural Property’ (2005) 12 Intl J Cultural Property 40; Toshiyuki Kono, The Impact of Uniform Laws on the Protection of Cultural Heritage and the Preservation of Cultural Heritage in the 21st Century (Martinus Nijhoff Publishers 2010) 21–22.

394  Research handbook on intellectual property and cultural heritage The issue is exacerbated with the distinction between tangible (including monuments, movable heritage collections, and archaeological sites) and intangible heritage (including signs, symbols, artistic and literary expressions). Treating these as two separate groups can be seen as prioritising one over the other and ignoring cultures with primarily intangible heritage. It is also suggested in the literature that physical artefacts are only one part of cultural heritage and the necessity to protect the tangible ones is anchored to intangible heritage.6 Aligned to these concerns is the further question of whether cultural heritage is more vulnerable when it does not manifest in any material form. While intangible heritage can last through generations, others are lost on a daily basis.7 But here it could be suggested that the preference over materialised heritage is a result of the Western understanding – and there is some evidence of indigenous communities attempting to adopt the Western notions of heritage and property.8 Thus carrying the intangible heritage to such institutions carries the risk of only displaying an altered and sterilised version of the past and sharing heritage with unintended viewers.9 One can appreciate that the fragmentation of heritage leads to tensions, both nationally and internationally, between community claims and archaeological museums – we discuss this further below. 1.2

Responsibility for Heritage

We now turn to interrogate the rationale for the protection of cultural heritage and the role of museums within this context. Tangible cultural heritage in situ is subject to a swathe of risks, including deliberate or accidental loss, natural deterioration, climate change, urban development, or natural or freak disasters.10 Through armed conflicts, censorship or fanatic iconoclasm, there are various examples of deliberate damage of the heritage of the perceived enemy coupled with erasing their shared experiences and identity.11 Such destruction of cultural heritage is usually a show of 6 Janet Blake, ‘On Defining Cultural Heritage’ (2000) 49 ICLQ 61; Laurajane Smith, Uses of Heritage (Routledge 2006); Fiona Macmillan, ‘The Protection of Cultural Heritage: Common Heritage of Humankind, National Cultural “Patrimony” or Private Property?’ (2013) 64 Northern Ireland LQ 351. 7 Federico Lenzerini, ‘Intangible Cultural Heritage: The Living Culture of Peoples’ (2011) 22(1) EJIL 101, 102; Julie Cruikshank, ‘Oral Tradition and Material Culture: Multiplying meanings of “words” and “things”’ (1992) 8(3) Anthropology Today 5. 8 For example, the Māori have begun inventorying their heritage by re-recording archaeological evidence “in a way that combines elder knowledge and experience, oral traditions and recollections of past land use and events,” in Alexandra Xanthaki, ‘International Instruments on Cultural Heritage: Tales of Fragmentation’, in Alexandra Xanthaki, Sanna Valkonen, Leena Heinämäki and Piia Nuorgam (eds), Indigenous Peoples’ Cultural Heritage: Rights, Debates and Challenges (Brill 2017) at 8. 9 Kerstin Knopf, Decolonizing the Lens of Power: Indigenous Films in North America (Editions Rodopi 2008); Kate Hennessy, ‘Cultural Heritage on the Web: Applied Digital Visual Anthropology and Local Cultural Property Rights Discourse’ (2012) 19(3) Intl J of Cultural Property, 353; Jane Anderson, Access and Control of Indigenous Knowledge in Libraries and Archives: Ownership and Future Use (The MacArthur Foundation and American Library Association 2005). 10 The last includes incidents such as the flooding of the Arno River, which caused damage to Florence’s libraries and museums in 1966, and the fires in Moscow’s Scientific Information Library in February 2015 and National Museum in Rio de Janeiro in 2018. Our history is filled with examples of unintended loss of cultural heritage. 11 Destruction of cultural property is identified as a war crime in many national and international instruments: see for example, ‘Practice Relating to Rule 38 Attacks against Cultural Property’ (icrc.org) .

IP and CH issues for museums of archaeological materials  395 force, which usually goes hand in hand with documenting the destruction.12 One example is the destruction of the archaeologically important Bamiyan Buddhas (3rd–5th C.E.) in Afghanistan by the Taliban, which set a precedent for other violent acts, such as the destruction of Iraqi heritage sites such as in Palmyra in 2015 by ISIS. Even when an attack is expected, it might not be possible to intervene or move the tangible heritage in question to a safer location, and especially in the case of immovable heritage. The only option could be relying on third-party assistance.13 In relation to moveable heritage, one can always resort to relocation for protection, and this is particularly true of archaeological collections. However, there is no guarantee of safety and preservation as, besides deliberate or accidental damage (such as deteriorating negatives of photographs causing fires), one has to contend with atmospheric (temperature, humidity, light, etc.) and biological (fungi, rot, insects, rodents, etc.) deterioration. The speed and the severity of deterioration differs according to the medium of the artefact, and organic objects such as ropes, paper and bone are recognised as the most fragile among all of museum objects.14 And leaving material as it is can cause the knowledge contained within to be permanently lost. Thus, it is clear that the preservation of cultural heritage constitutes an ongoing responsibility. The mandated institution is ostensibly the ‘museum’, but what is a ‘museum’? UNESCO definitions refer to ‘memory institutions’, which may include but are not limited to “archives, libraries, museums and other educational, cultural and research organizations”.15 The International Council of Museums adopts a more assertive definition, stating that: “A museum is a non-profit, permanent institution in the service of society and its development, open to the public, which acquires, conserves, researches, communicates and exhibits the tangible and intangible heritage of humanity and its environment for the purposes of education, study and enjoyment.”16 For an unsurprisingly universalist view, Neil MacGregor (the former director of the British Museum) stresses that the role of the museum is to be a community of interpretation, a collection held in trust for the world, and a powerful weapon with a worldwide civic purpose.17 12 Francesco Francioni and Federico Lenzerini, ‘The Obligation to Prevent and Avoid Destruction of Cultural Heritage: From Bamiyan to Iraq’ in Barbara T Hoffman (ed), Art and Cultural Heritage (CUP 2006). 13 The Institute of Digital Archaeology (a joint venture between Harvard and Oxford Universities) encourages photography of threatened sites and objects, by local museum affiliates, embedded military, NGO employees, and volunteers – so as to enable representations of such sites to be recreated – whether in digital or physical form. See ; Paul Clammer, ‘Erasing Isis: How 3D Technology Now Lets Us Copy and Rebuild Entire Cities’ (The Guardian, 2016) accessed 1 August 2021. 14 José A Magán et al, ‘Mass Digitization at the Complutense University Library: Access to and Preservation of Its Cultural Heritage’ (2011) 21 LIBER Quarterly 48; Laura Capell, ‘Digitization as a Preservation Method for Damaged Acetate Negatives: A Case Study’ (2010) 73 American Archivist 235; Garima Bharti, ‘Museum as a Savior of Cultural Heritage: Special Perspective on Deterioration and Conservation of Objects’, (2014) 9(3) International Journal of Science and Research 2183. 15 Recommendation Concerning the Preservation of, and Access to, Documentary Heritage Including in Digital Form (2015). 16 ICOM Statutes adopted by the 22nd General Assembly in Vienna in 2007 . 17 Neil MacGregor, ‘The whole world in our hands’ (Guardian, 24 July 2004) accessed 1 August 2021.

396  Research handbook on intellectual property and cultural heritage Others accept that this group of institutions can hold all types of heritage, and that much depends on the museum’s badge of distinction. Is the focus on origin (public encyclopaedic museums, museums of learned societies, national museums, university museums), or the nature of works (history, fine arts, sciences, ethnology, archaeology, etc.), or on legal status (public, non-profit organisations, private, etc.), or on location (site museums, virtual museums), or on duration (permanent or temporary)?18 Indeed, the notion of memory institutions which focused on collecting and studying older civilisations is not a new phenomenon. Leonard Wooley’s excavations revealed 6th-century B.C.E. Babylonian collections of antiquities which functioned as an educational museum, with clay tablet labels naming the artefacts.19 While this and other relicts from Wooley’s excavation have evolved into archaeological artefacts, the survival of memory institutions from the 15th century indicates that the collection and preservation of civilisations are well established facets of humanity. Classifications of collections are ephemeral as, over the years, a ‘museum’ will have acquired a vast number of different artefacts, in situ and ex situ, from a wide variety of sources, and in a variety of different circumstances. As the definition of heritage is amorphous, each generation will have different interpretations and intentions as to the choice of heritage items preserved, and this in itself will constitute valuable information on the guardian communities.20 However, where should the artefact be placed? This is especially critical for museums that specialise in archaeological artefacts which have housed items for decades, and even centuries, under long-forgotten or long-disputed laws, arrangements and/or conventions. 1.3

Location of Heritage

As stated above, some artefacts just do not belong in museums and/or should not even have been re-situated from their original locations. This dilemma can be usefully understood by questioning the double prism of cultural nationalism and cultural internationalism.21 Cultural property internationalism, echoed in phrases such as the ‘heritage of every people’ or the ‘common heritage of mankind’ within UNESCO instruments, stands for the proposition that “everyone has an interest in the preservation and enjoyment of cultural property”. Thus, the theory posits that the cultural heritage does not necessarily belong to any sovereign nation, but to all mankind – the exception being such objects which have been clearly acquired as a result of theft. As long as the heritage material receives the best protection possible, the cultural theorist Merryman advises against ‘destructive retention’.22 Cultural nationalism, on

18 Jean-Francois Canat and Lucie Guibault, ‘Study on copyright limitations and exceptions for museums’, WIPO SCCR 30th session (2015) 7–8. 19 Don D Fowler, ‘A Natural History of Man: Reflections on Anthropology, Museums, and Science’, Fieldiana Anthropology, New Series, No. 36, Curators, Collections, and Contexts: Anthropology at the Field Museum, 1893–2002, pp. 11–21; ‘The World’s Oldest Museums’ (museums.eu) accessed 1 August 2021. 20 Tolina Loulanski, ‘Revising the Concept for Cultural Heritage: The Argument for a Functional Approach’ (2006) 13 Intl J Cultural Property 207; Derek Gillman, The Idea of Cultural Heritage (Institute of Art and Law 2006). 21 For an overview of theories, see Irini A. Stamatoudi, Cultural Property Law and Restitution: A Commentary to International Conventions and European Union Law (Edward Elgar 2011), pp. 19–30. 22 John Henry Merryman, ‘Two Ways of Thinking About Cultural Property’ (1986) 80 AJIL 831.

IP and CH issues for museums of archaeological materials  397 the other hand, foresees the source nations to have complete control over where their heritage is kept and encourages such states to ask for their return. While it makes sense to see the preservation responsibility as something to be shared internationally, this does not justify keeping cultural heritage away from their original context and location. Furthermore, it has been argued that many preserved artefacts, located in Europe or the United States, depict misleading pictures of societies to the Western world as they were chosen by white, upper-class, male curators.23 In such situations, should not the memory institution allocated with the responsibility for artefacts be contextually connected in some manner to the origin of the artefact, especially in the case of archaeological museums? The corollary argument is that a decolonisation/recontextualisation exercise will deplete the world’s encyclopaedic memory institutions such as the British Museum or the Louvre. This admittedly cultural internationalism view segues neatly in what major museums term as the ‘Universal Museum’ notion: acquired cultural objects from other countries in earlier times (whether by purchase, gift or portage) have become embedded in the museums that have cared for them and by extension have become part of the heritage of the nations which house them.24 After all, there are associated costs in relation to housing, conserving and preserving physical archaeological artefacts, as well as the immense task of indexing and recording vast amounts of data and objects. Moreover, universal institutions enable access to the rich diversity of all humankind in one (or two) places.25 In this sense, the digitisation of the museum collections can play a role in the discourse as to context and space. It would enable such universal memory institutions with large collections of colonial-era archaeological acquisitions to share and/or recreate objects. Once the object is dematerialised and the physical boundaries are removed, the artefact can allow multiple connections through multiple platforms – physically and virtually – and thus becomes accessible to all. But the practice of digitisation neither solves the stakeholders’ claims on where original artefacts should be located or who gets to control the new set or rights in the digital object. This will be addressed in Part 3.

23 This is being taken into consideration by scholars – see for instance, Willard L Boyd, ‘Museums as Centers of Controversy’ (1999) 128 Daedalus 185) (“Museums are no longer perceived as infallible; they can no longer presume the privilege of issuing unquestionable pronouncements”); Gaby Porter, ‘Gender Bias: Representations of Work in History Museums’ (1990) 3 Continuum: The Australian Journal of Media & Culture (“Women within the displays of industrial museums usually appear as exceptions, even the increasing difficulty of housing, conserving and preserving physical objects, as well as the indexing and recording of vast amounts of objects and data within collections; amusing curiosities”). 24 Declaration on the Importance and Value of Universal Museums 2002, signed by directors of 18 major museums including New York’s Metropolitan, the Berlin State, the Prado, the Rijksmuseum, the State Hermitage, the Louvre and the British Museum. This theory is partially based upon a particular construction of the 1954 Hague Convention for the Protection of Cultural Property in the Event of Armed Conflict, and the controversial theory of cultural internationalism. See Neil Curtis, ‘A continuous process of reinterpretation: the challenge of the universal and rational museum’ (2005) 4 Public Archaeology 50–56; for trenchant views on this Declaration and theory, see Robin Scher, ‘Back to Where They Once Belonged: Proponents of Repatriation of African Artworks Take Issue with the Past—and Present and Future’ (Art News, 26 June 2018) accessed 1 August 2021. 25 For the debate on where to keep the Elgin Marbles, see John H Merryman, ‘Thinking About the Elgin Marbles’ (1985) 83 Mich. L.Rev. 1881; cf. Geoffrey Robertson, Who Owns History? Elgin’s Loot and the Case for Returning Plundered Treasure (Biteback Publishing 2019).

398  Research handbook on intellectual property and cultural heritage So, it is within the context we have set out above that we turn to examine the relationship of IP with cultural heritage, especially in relation to archaeological heritage.

2.

INTERSECTION BETWEEN IP AND ARCHAEOLOGICAL MUSEUMS

Literally defined as ‘the study of ancient things’, archaeology has come to be generally understood as referring to a discipline which gathers cultural information through studying human behaviour, societies and their environments through material culture or physical remains. Thus, by using such archaeological materials, the discipline describes and interprets the patterns of human behaviours or societies. Increasingly, it shares a boundary with anthropology, especially in relation to studies of indigenous societies.26 Archaeological museums can hold a wide range of materials, including site and field reports, the actual site, artefacts, natural objects and human remains. These collections might also hold copies of such objects (through analogue or digital methods), photographs and films of the sites and artefacts, sound recordings of past and present communities within the site, and databases comprising a collection of such materials.27 The proposition here is that IP issues can constitute tiny stealth bombs when archaeological (and to a certain extent anthropological) museums navigate through their acquisition, preservation and exhibition practices. The naïve lawyer’s gut instincts would be to reject this. After all, surely all the artefacts are very old, and thus beyond the remit of substantive IP law; there may be some lingering moral rights implications in some jurisdictions, but surely the ‘authors’ (or their heirs) of such artefacts will be long dead, unidentifiable, or unlocatable.28 Nevertheless,

26 The Concise Oxford Dictionary of Archaeology (2nd edn, OUP 2009). It has been also described as being a contemporary socio-cultural phenomenon which “seeks to locate, create, classify, objectify, interpret, and present the past in ways that reflect the particular views of its practitioners”, see GP Nicholas and Kelly P Bannister, ‘Copyrighting the Past?: Emerging Intellectual Property Rights issues in Archaeology’ (2004) 45(3) Current Anthropology 327, 329. 27 Ibid. One should also note the expansive definition of movable objects under the 1970 UNESCO Convention on the Means of Prohibiting and Preventing the Illicit Import, Export and Transfer of Ownership of Cultural Property, Art.1: “rare specimens, property relating to history, products of archaeological excavations, elements of artistic or historical monuments, antiquities more than one hundred years old, objects of ethnological interest, property of artistic interest (such as pictures, paintings and drawings produced entirely by hand on any support and in any material (excluding industrial designs and manufactured articles decorated by hand), original works of statuary art and sculpture in any material, original engravings, prints and lithographs, original artistic assemblages and montages in any material), rare manuscripts and incunabula, old books, documents and publications of special interest; postage, revenue and similar stamps, singly or in collections; archives, including sound, photographic and cinematographic archives; articles of furniture more than one hundred years old and old musical instruments.” 28 For a concise iteration of the duration of protection under the different IP rights, see Graham Dutfield and Uma Suthersanen, Dutfield & Suthersanen on Global Intellectual Property Law (2nd edn, Edward Elgar 2020) 126–128, 135. There is the added question of ‘orphan works’, which is not discussed here; for reading on how orphan works can affect cultural heritage institutions, see U Suthersanen, ‘Who owns the orphans? Property in digital cultural heritage assets’, in P Torremans (ed), Research Handbook on Copyright Law (2nd edn, Edward Elgar 2017) 359–390.

IP and CH issues for museums of archaeological materials  399 this would be a foolhardy assumption, as much depends on the nature, the historicity, and the current ‘ownership’ or entitlement status of the artefact in question. We now turn to consider some specific examples. 2.1

Ownership and Copyright in Archaeological Recordations

In this part, we will first assess the web of ownership in the recordations of tangible objects (with the example of Sutton Hoo), then recognise the intangible within the tangible (including reconstructions, with the example of the Dead Sea Scrolls), and finally, the IP implications for the fully intangible with a focus on Indigenous heritage (with the example of the Ka Mate haka). Copyright Copyright law decrees that the creator of a work is the author and hence presumed first owner of the work; the important exception being that copyright can vest in museums or other memory institutions as employees.29 Recordations of archaeological excavations and the items retrieved would be fixed either textually (reports/records) or visually (photographs/films). One can presume that the owner of the copyright will be the person who authored the report (a ‘literary work’) or took the photograph (an ‘artistic work’); that person would be free to publish and communicate the results of the work.30 Museums that acquire (either by gift or purchase) the physical manifestations of such textual and visual recordations will have a legal title and thus will ‘own’ the recordation as an artefact or a thing. Nevertheless, they may, in the course of their mandated responsibility for preservation and restoration of this artefact, inadvertently infringe the various rights accorded to copyright owners. Even digitising the site fields and records so as to exhibit the works or to upload images of such records on the museum’s website could infringe the copyright.31 The exceptions are – (i) the acquisition of the such recordations included a transfer of copyright and/or a licence authorising activities; or (ii) implied consent to do the restricted activities via conduct or documentation; or (iii) in some regions, such as the EU, there may be dedicated cultural heritage exceptions allowing museums some flexibility to do acts for the purposes of heritage conservation and preservation.32 It could also be that many recordations are on loan, as they may have been created by volunteers or independent contractors or research institutions. Such works would not benefit from copyright exceptions intended for ‘works in permanent collections’.

For classification of authorship and ownership, see Dutfield & Suthersanen, 111–115. For classification of works, see Dutfield & Suthersanen, 98–102. 31 Restricted activities in most jurisdictions, and under international law, include: reproduction, communication to the public, and distribution of works. See Dutfield & Suthersanen, 115–126. 32 Jean-Francois Canat and Lucie Guibault, ‘WIPO Study on copyright limitations and exceptions for museums’ WIPO SCCR 30th session (2015). See also Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the Digital Single Market, arts. 6 and 14. 29 30

400  Research handbook on intellectual property and cultural heritage The Sutton Hoo narrative We employ the Sutton Hoo narrative to illustrate the confusing (and conflicting) ownership claims to the tangible and intangible heritage emanating from the 1939 finding of a 7th-century Anglo-Saxon burial ship in Suffolk, England.33 Consider this hypothetical scenario. There is an ongoing archaeological dig on a privately owned estate. The original field records and reports are written by multiple researchers, some of whom are employees of the British Museum, others are independent excavators hired by private parties. There is a split authorship/ownership of the recordations: the British Museum as an employer may well hold the copyright in its employees’ writings, whilst the rest may be held by independent archaeologists who have been hired by third parties, though subject to their agreement with their commissioner. In this scenario, if Museum ANOR acquires legal title to some of the original reports, they may still need to clear the copyright in the report – unless the author clearly assigned or gifted it to Museum ANOR. If copyright vested in the employee recordations, one would have to get the permission of the British Museum. If Museum ANOR digitised, or compiled, or shared on websites, there may be another set of IP rights arising (either copyright or database right, which is available within UK and EU jurisdictions)34 that needs to be cleared by others interested in the digital copies.35 Let us revert to reality. We will find that the written reports, in relation to the ongoing Sutton Hoo excavations from the 1930s to the 2000s, are deposited in various locations in England. For the more recent records, copyright is currently claimed in the separate field reports/ records either by the British Museum (as the employer) or by Professor Martin Carver with the University of York (as an independent academic, with his employer), whilst any copyright arising from the data is claimed solely by Carver. In contrast, claims of ownership as to the archaeological site and excavation are made by the National Trust for England and Wales,36 whilst the excavated artefacts and samples are claimed to be ‘the property’ of the British Museum. All the materials collected on the website in relation to the excavations (including site/excavation maps and recent photographs) are claimed by Carver, but the data is subject to a soft licence – in this case, anyone can ‘use, share, adapt’ the materials only with acknowledgement, on a non-commercial basis, and without further claims to distributed materials.37 A notable feature is how clearly the property fences are set out in terms of copyright (for the intangible IP) and property (for the real property right in the tangible artefacts or sites).38

33 Martin Carver, ‘The Sutton Hoo Research Project, 1983–2001’ (2004) York Archaeology Data Service . 34 Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases; Copyright, Designs and Patents Act 1988 s.3A. 35 Subject to exceptions within copyright laws for research, teaching, comment, etc., in addition to the cultural heritage exceptions. 36 The National Trust is governed under the National Trusts Acts 1907–1971, with the Charities (National Trust) Order 2005, for the purposes of “promoting the permanent preservation for the benefit of the nation of lands and tenements (including buildings) of beauty or historic interest and as regards lands for the preservation (so far as practicable) of their natural aspect features and animal and plant life”. So, would the Trust constitute one gargantuan archaeological museum for the UK? 37 See Carver (n 33), subject to the Archaeological Data Service terms, which also confusingly refers to Creative Commons licences – a separate set of soft norms. ADS Terms of Use and Access to Data accessed 2 August 2021. 38 This approach is also seen in Carver (n 33).

IP and CH issues for museums of archaeological materials  401 A slightly different picture is revealed when we turn to the original recordation outputs from the 1938–39 archaeological dig by Basil Brown. These are now located in the county of the original artefacts, namely in the Suffolk Record Office. Brown was an independent amateur archaeologist hired by the owner of the private estate where the Anglo-Saxon site was situated; assuming the absence of an employment contract determining copyright terms, Brown would have been an independent contractor. Governed as the situation is under the Copyright Act 1956, copyright in textual works would have vested in him, as would have such rights in maps or drawings; however, the copyright in photographs (and he did take several) would have vested in the commissioning party, namely the landlord P.39 If that situation did not change, the copyright is still intact for 70 years post mortem auctoris.40 The digitisation and transcription of these records are currently under way, and some have been made available to the public – thus, some of these ‘new’ outputs in terms of transcriptions and websites might attract copyright. There are no discernible claims as to real property or copyright in relation to the original records/photographs, the transcriptions, the digital data or the website.41 So, what happens where such reports are out of copyright (i.e., the rapporteur has been dead for 70 years after first recordation)? Are such reports then freely available for copying, distributing, and communicating as they should be now considered to be in the public domain? Especially where the original reports themselves (as physical artefacts) considered to be ‘owned’ by a museum? First, under copyright law, one still has to examine the jurisdiction, since despite the termination of economic rights, we may encounter residual rights in documents in some countries such as moral rights (which are perpetual rights in France).42 Second, some countries have adopted the domaine public payant scheme, whereby materials in the public domain are declared by the state in question to be subject to licence fees for commercial usage, usually because they do not qualify for protection under traditional IP rights.43 In the EU, the 2019 EU Directive on Copyright in the Digital Single Market has introduced a provision where “original reproductions of public domain works of visual art” can be protected (we discuss this in Part 3). Thus, even within traditional IP law, the concept of time – as a measurement of cessation of rights within the work – can fluctuate. 2.2

IP and the Intangible Heritage in Artefacts, Treasures and Public Domain

Whether such improbable links between objects, heritage, and IP can be rationalised is explored in this section.

See Copinger & Skone James on Copyright, paras. 5.32–5.34. Accounts are that Brown acted as an independent archaeologist with no regular income; for the Sutton Hoo surveys and digs, he was paid 30 shillings a week. Brown died in 1977. Don Black, ‘My friendship with Sutton Hoo’s Basil Brown’, East Anglian Daily Times, 23 January 2021. 41 The output includes collections of his diaries, site logs, lecture notes and photographs, recording not only his work at Sutton Hoo, but also at other important sites across Suffolk. The outputs were initially donated by Brown’s widow to Ipswich Museum. See The Basil Brown Archive, at . 42 Which can be exercised by the heirs or the state; for further discussion of the types and nature of moral rights, see Dutfield & Suthersanen on Global IP Law, 128–135 43 An archaic system born from French doctrine – it is now applied in several African countries under the Bangui Agreement of the African Intellectual Property Organization 1977. 39 40

402  Research handbook on intellectual property and cultural heritage Archaeological artefacts as treasures We employed the Sutton Hoo narrative to illustrate the different ownership issues – arising from real property and IP laws. Can we look at the entirety of the Sutton Hoo site and artefacts (and any ensuing recordations) as also constituting UK’s cultural heritage? Specially, it is one further aspect of the Sutton Hoo narrative that allows to turn to traditional rules, cultural heritage, and IP, namely ‘to whom does/should the excavated artefacts belong today’? The British Museum ostensibly claims ownership of the artefacts in some places44 – this is both questionable and astonishing considering the trustee role of a national museum, and the historicity of the artefacts. The story is as follows. Since the archaeological site and artefacts therein were found on a plot of land (the Sutton Hoo estate) privately owned by Edith Pretty in East Anglia, a question arose as to the initial ownership of the artefacts,45 which was decided on the English common law of treasure trove, i.e., were these artefacts buried to be dug up later, or were these artefacts buried with a deceased person in preparation for the journey to the underworld?46 The ‘treasure’ was found to be the property of the owner of the archaeological site, namely Pretty. She, in turn, later bequeathed the artefacts as a gift to the nation, through the British Museum.47 Two interesting points arise from the inquest. The first point is that ‘ownerless objects’, far from being orphaned, can be classified as being part of a nation’s heritage or cultural patrimony. Thus, in the UK, there has been a clear doctrinal shift in the law since the Sutton Hoo inquest to current times. Any old object (i.e., more than 300 years old) found or excavated, without clear ownership entitlements, is automatically owned by the Crown, and thus arguably part of the nation’s heritage.48 The raison d’être to narrow the common law of treasure trove and to introduce the 1996 Treasure Act was 44 Carver (n 33). The British Museum is constituted as a trustee charity, and as such does not have private property rights over its artefacts, but objects become “vested in the Trustees as part of the collections of the Museum” – s.3(4) British Museum Act 1963. The trustees have legal ownership of the trust assets where the beneficial ownership of the collections belong to the public. Whether the beneficiaries of the British Museum are the citizens of the UK, or the world, is a debatable notion – dependent on whether one espouses the universalist museum doctrine. 45 Pretty started the investigation of the site, enlisting and paying for the aid of Basil Brown. Brown uncovered the remains of an Anglo-Saxon ship burial as well as the artefacts in 1939. With the impending war, the artefacts themselves were removed to an unused tunnel within the London underground. This relocation of the treasures triggered the subsequent inquest as to ownership of the artefacts. 46 For a historical and authoritative account, see Norman Palmer, ‘Treasure Trove and Title to Discovered Antiquities’ (1993) 2 Intl J of Cultural Property 275; the difference in Scotland being that all ownerless objects are Crown property under the bona vacantia rule. For a brief and comparative review of treasure trove laws elsewhere, see Lucie Lambrecht and Zacharias Mawick, ‘Breaking New Ground in Belgium: How Legal Tradition Handles Treasure-Finds and Proposed Reforms’ (2019) 24 Art Antiquity & Law 39. The notion of ‘treasure’ is also part of the EU legal order. Thus, “national treasures possessing artistic, historic or archaeological value” are exempted from EU free movement rules under Art. 36, TFEU. For a discussion of this, see Irini A. Stamatoudi, Cultural Property Law and Restitution: A Commentary to International Conventions and European Union Law (Edward Elgar 2011) 112–133. 47 The issues were, and still are, determined locally in that it was within the region of the find (or the archaeological site, if any). It is also under the aegis of the local official – the county coroner – who is historically the representative of the Crown. See TD Kendrick, Ernst Kitzinger, Derek Allen, ‘The Sutton Finds’ (1939) 11 British Museum Quarterly, XIII 111; and PV Hill et al, ‘The Treasure Trove inquest’ in RLS Bruce-Mitford, The Sutton Hoo Ship-Burial, I (1975) British Museum Publications 718–731. 48 The Treasure Act 1996, s.1(1). The Treasure Act 1996, which designates the Crown as the owner automatically if the treasure is over 300 years old, made of gold or silver, or found with artefacts made

IP and CH issues for museums of archaeological materials  403 to stop the cultural heritage of the land being lost to private collectors or overseas museums.49 We believe this is an instance – at least under British law – which highlights the importance to maintain the link between archaeological sites, artefacts and the concept of treasures, with heritage. It also accords with our further understanding, as we indicate below, that there can be no fragmentation of heritage between the tangible and the intangible. Indeed, the archaeological site in Sutton Hoo in Suffolk is now reimagined and rebranded in British heritage as England’s ‘Valley of the Kings’ – the cemetery for the royal dynasty of East Anglia.50 In this way, the archaeological heritage is allowed to replenish old narratives with new and different interpretations on England’s past heritage. Cultural institutions can and do exploit this fact of ‘old objects’ being commoditised and branded into ‘new objects’, such as tea towels, notebooks, pencils, etc. Often sold in museum gift shops (and increasingly as part of the online museum experience), these new objects are a vital part of any cultural institution’s sustainable income stream. But it should be noted that there is heavy reliance on claiming IP rights in the repackaged object or the digital surrogate (i.e., a digital reproduction of the original artefact).51 Intangible heritage within archaeological artefacts The second interesting facet of the Sutton Hoo inquest illustrates how intangible heritage is wrapped within tangible artefacts. Now, one of the most difficult facets of the common law on treasure trove was in determining the intention of the original owner of the artefact.52 In the Sutton Hoo inquest, this intention was elicited from archaeological fragments of early Anglo-Saxon prose and poetry, especially Beowulf.53 The question of ownership of the tangible object was, thus, anchored to the intangible heritage of the Anglo-Saxon community.54 Based on the textual records of this community, which revealed its practices, knowledge, and representations, the burial was found to be an internment. The private owner of the archaeological site, Mrs Pretty, owned the treasures found therein. As one historian relates in reference to the Sutton Hoo inquest: One of the striking characteristics of this charming story is the way it reveals that our cultural heritage often survives only in a handful of broken jewelry and scraps of poetry. It is the work of historians, principally, to put these fragments in some order and to make sense of them. How do the pieces fit together? What meaning should we read into the assemblage? There may be competing reconstructions and interpretations. Our cultural heritage is contested ground, but, as the case of Sutton Hoo

of precious metals. It applies to amateur individuals as well as archaeological excavations. For ownerless artefacts which fall outside the Act’s remit, the common law treasure trove rule continues to apply. 49 If unclaimed by any museum, the Crown disclaims ownership and it is returned to the finder or landowner – Geoffrey Bennett, ‘Striking Gold: The Case of the Shropshire Piano’ (2018) 23 Art Antiquity & Law 269, 270–271. 50 ‘The Royal Burial Ground at Sutton Hoo’ accessed 1 August 2021. 51 Grischka Petri, ‘The Public Domain vs. the Museum: The Limits of Copyright and Reproductions of Two-dimensional Works of Art’, (2014) 12(1) Journal of Conservation and Museum Studies, p. 8. 52 Clive Cheesman, ‘Religious Offerings and the Intention to Recover in the Law of Treasure Trove’ (1996) I Art Antiquity and Law 27. 53 Peter Hunter Blair, ‘The Foundations of England’ in MP Charlesworth and MD Knowles (eds), The Heritage of Early Britain, (George Bell & Sons 1952) 128–152 (stating the Sutton Hoo find as a reflection of Anglo-Saxon society), at pp. 134–135. 54 Art. 2, 2003 UNESCO, see discussion above in relation to note 4.

404  Research handbook on intellectual property and cultural heritage shows, sometimes we cannot leave it unsettled. Ownership, wealth, and the national patrimony may be at stake.55

IP within reconstructed archaeological artefacts One issue that arises from the above quote is in relation to ‘scraps’ of archaeological findings. Consider the archaeological community which discovers ancient manuscripts in a desert cave, written in Aramaic, and mostly in a fragmented state. Several factions of scholars work on the manuscripts. Some amount of reconstruction of texts is required as perhaps up to 40% of the original manuscripts are lost. One scholarly faction photographs and publishes the images of the reconstructed text. The author of the reconstructed text (of course she belongs to an opposing faction) seeks an injunction to prevent further publication and distribution, based on her claim to the copyright in the reconstructed ancient text. Can she? This scenario is a tamer version of the facts in the Dead Sea Scrolls decision in relation to scrolls dated to 250 BC–AD 68, discovered in Qumran.56 The author of the reconstructed text brought a copyright infringement suit in relation to unauthorised publication of his reconstructed text before the Israeli courts. The Israeli Supreme Court ruled in favour of the author:57 compilations of raw material (including archaeological scraps of paper) are subject to copyright protection; the protection is confined to the ‘expression’ and not the underlying ideas; and the requirement of originality under copyright law merely requires that the work in question (i.e., the reconstructed text) has its origin in the author of that text, and not in another source (despite the original Scrolls having been written by another person in ancient times). At the core of the dispute was whether the contemporary historian ‘created’ an original work.58 Accounts are that he never claimed to have invented or created the text. On the contrary, the historian claimed “to have discovered the original text, the one written at the time the Temple stood in Jerusalem and Christianity was born. Without such a claim, his work would not have been scientific.”59 Indeed, this appears to reflect research practices in relation to ancient texts in that fragments of archaeological documents are pieced together with the intention of restoring the document’s original text. The reconstructed document is presented as being factually

55 Stanley Chodorow, ‘To Represent Us Truly: The Job and Context of Preserving the Cultural Record’ (2006) 41(3) Libraries & the Cultural Record 372, at 374. 56 This paragraph is based on the following: Hector MacQueen, ‘The Dead Sea Scrolls and the Legal Definition of Authorship’ in Timothy H Lim and JJ Collins (eds), The Oxford Handbook of the Dead Sea Scrolls (Oxford 2010) Chapter 30; Michael Birnhack, ‘The Dead Sea Scrolls Case: Who is an Author’ (2001) 23(3) EIPR 128–133; Lisa Michelle, ‘Ancient Works, Modern Dilemmas: The Dead Sea Scrolls Copyright Case’ (1993–1994) 43 Am. U. L. Rev. 1637. 57 Israel’s legal system is based on the common law, with some continental elements, and during the decision was based on the UK Copyright Act of 1911, the Copyright Act (Extension to Palestine Order), 1924; and the Ordinance of Government and Law, 1948, s.11 (as revised). 58 Case law shows that the originality is interpreted as the work being ‘author’s own intellectual creation’, which can only be present when the author can make ‘free and creative choices’ that are not dictated by their technical function (EU) or it possesses at least some minimal degree of creativity (US). For EU, see Case C-5/08 Infopaq International A/S v Danske Dagblades Forening [2009] ECDR 16; Case C-145/10 Eva-Maria Painer v Standard Verlags GmbH and Ors [2012] ECDR (6) 89. For US, see Feist Publications, Inc v Rural Telephone Service Co, 499 US 340 (1991). 59 Michael Birnhack, ‘The Dead Sea Scrolls Case: Who is an Author’ (2001) 23(3) EIPR 128–133; and n 56.

IP and CH issues for museums of archaeological materials  405 correct. However, much consideration was placed by the Supreme Court on the fact that such reconstructions are not merely technical or mechanical but reveal originality and creativity.60 One major argument made in the Dead Sea Scrolls decision against conferring copyright on ‘old’ artefacts was that this would confer “a monopoly over an element of Jewish cultural heritage and would deter scholarship on the text, thus harming the public interest”.61 The Israeli Supreme Court rejected this, pointing out the limits of copyright protection – it was tied to the reconstructed text, and not to the underlying raw materials which would be still available to others. Moreover, even the reconstructed text could be accessed and used under copyright exceptions, particularly for the purposes of research and education. There is yet another particularly problematic aspect in relation to unpublished archival materials and the situation varies with each country. For example, under UK law, materials (confined to such materials which fall under the legal categorisation of ‘literary, dramatic, and musical works’) which were unpublished when the current British copyright statute came into force (i.e., 1989) remain in copyright until 2039 irrespective of the normal rules in relation to duration of the work.62 IP within public domain materials – lessons from Indigenous communities? Matters can get far more complex when we turn to examine issues from the perspective of specific communities (whether still in existence or long ceased). Do communities consider the object of recordation (i.e., records, photographs, etc.) as having a dual existence – as tangible and intangible heritage? The question then becomes whether the cessation of copyright in the records signals the cessation of the intangible heritage. Surely, the answer is no. But, in some instances, can the intangible heritage be inextricably linked to the copyright in the work? Or will the intangible knowledge aspect as captured in the recordation of the archaeological site and the excavation histories exist independently? And if we extend this exercise to the actual archaeological artefacts, can the intangible heritage exist independently of the physical object? The dominant and traditional view is that IP law, underpinned by a ‘Western’ approach to knowledge protection, is at odds with Indigenous worldviews of knowledge in terms of time, eligibility, and ownership/guardianship. A further reason is that systems like copyright focus too much on the knowledge’s engagement with the market and thus insisting that the Indigenous communities embrace copyright could even amount to forcing the community to adjust to something outside their belief system.63 Ibid. Hector MacQueen, ‘The Dead Sea Scrolls and the Legal Definition of Authorship’, above n 56. 62 Under UK law, unpublished public domain works can remain in copyright protection, with some exceptions, until 2039 (exceptions under s.7, 1956 Copyright Act as incorporated under Schedule 1, para. 16, 1988 Copyright, Patents and Design Act); under EU law, for example, unpublished works of public domain works vest a 25-year related right in publishers (Article 4, Council Directive 93/98/ EEC of 29 October 1993 harmonising the term of protection of copyright and certain related rights, L290, 1993-11-24, pp. 9–13). See also Gwilym Harbottle, Nicholas Caddick QC, Uma Suthersanen, Copinger & Skone James on Copyright (18th edn, Sweet & Maxwell 2020) paras 9.195–9.200; Patrick Masiyakurima, Copyright Protection of Unpublished Works in the Common Law World (Hart Publishing 2021); UK National Archives Guide available at: . 63 Jane Anderson, Access and Control of Indigenous Knowledge in Libraries and Archives: Ownership and Future Use (The MacArthur Foundation and American Library Association 2005); Lucas Lixinski, Intangible Cultural Heritage in International Law (OUP 2013); Michael F Brown, 60 61

406  Research handbook on intellectual property and cultural heritage IP systems accord authorship/inventorship and ownership to natural or legal entities,64 based on certain eligibility criteria (such as originality in copyright or novelty in patent), for a specifically limited period of time. Indeed, we already considered that references to the heritage of humankind65 contain conflicts with this didactic approach to IP. The general scholarship then states that this is at odds with Indigenous communities’ approach to heritage and knowledge, where: knowledge is held collectively by a community (or by an individual on behalf of or in trust for the community); authorship and originality/novelty is diffused due to the intergenerational and dynamic nature of the creation, codification and dissemination of knowledge and practices; the concepts of public domain or cessation of rights are not commonly accepted due to the ongoing nature of the trusteeship of land, plants and knowledge.66 Based on that, we suggest an alternative approach where IP law can and does adopt a more holistic approach to cultural heritage. As we saw in the Dead Sea Scrolls decision above, the reins on thresholds can be loosened to accept authorship in ancient, reconstituted texts; the concept of time limits is a very common law precept which is abandoned in the case of moral rights and domaine public payant in certain countries; and the notion of trusteeship and ownership does enter when one is dealing with archaeological artefacts, recordations of archaeological excavations, and treasures. Moreover, our assertion above – that tangible objects can perhaps house intangible cultural heritage – is also accepted within Indigenous communities. Such communities have made a further push to claim IP rights within the tangible/intangible divide by laying claims to a wider array of things including land, plants and animals, and knowledge imbibed within artefacts and practices. An illustrative example is the New Zealand framework in relation to Māori heritage. The Māori people took active steps for the Crown to recognise their claims to both cultural heritage and IP through the Waitangi Tribunal, and the Wai 262 report.67 The Māori people’s claims relate to a holistic notion of knowledge, including taonga, which is roughly understood to be tangible and intangible treasures. The Wai 262 report acknowledges the link between the taonga and mātauranga Māori (Māori knowledge), the rights in its intangible values, and ‘Heritage as Property’ in Katherine Verdery and Caroline Humphrey (eds), Property in Question: Value Transformation in the Global Economy (Berg 2004) 49–68. 64 From a personality theory perspective, a work is a manifestation of the author’s personality and is best protected by a property right. For the labour theory, the author is the person who mixes their labour with raw material. See William Fisher, ‘Theories of Intellectual Property’ in Stephen Munzer (ed), New Essays in the Legal and Political Theory of Property (CUP 2001); Robert Merges, Justifying Intellectual Property (Harvard University Press 2011); Edwin C Hettinger, ‘Justifying Intellectual Property’ (1989) 18 Philosophy & Public Affairs 31. 65 The references to shared heritage in UNESCO instruments include: ‘heritage of every people’ (1954), ‘heritage of a country’ (1964), ‘peoples of the world’ (1968), ‘civilization and national culture’ (1970), ‘in the opinion of the competent bodies in individual States’ (1976), ‘common heritage of mankind’ (1978), ‘heritage of all nations of the world’ (1972), ‘common heritage of all Europeans’ (1985), ‘cultural heritage of all humanity’ (2001), ‘communities, groups and, in some cases, individuals’ (2003). 66 See, for example, 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 (ANU E Press 2012) 1–28. 67 The tribunal and the report emanate from the founding document of the government in New Zealand, namely the Treaty of Waitangi 1840. Waitangi Tribunal Report, Ko Aotearoa Tēnei: A Report into Claims Concerning New Zealand Law and Policy Affecting Māori Culture and Identity (2011).

IP and CH issues for museums of archaeological materials  407 the inextricable link of these with the Māori relationship with the land and the environment. To this effect, the Wai 262 report suggested an alternative framework of protection based on a double approach: a system of defensive protection to prevent claims for IP rights over subject matter that incorporates Māori cultural elements including designs, words, plants, animals, or dance; and a new category of IP rights to offer positive protection of Māori cultural and IP, especially in relation to unauthorised commercial use of mātauranga Māori, taonga works, and taonga derived works.68 Though one still awaits an overhaul of the New Zealand IP system, some of these concerns have been acknowledged and addressed, albeit in terms of soft declarations. A case in point is the Ka Mate haka, which is one of the most well-known Māori traditional cultural expressions. The haka was composed in 1821 and would be, under traditional common law IP laws, out of copyright and in the public domain. It is nevertheless claimed to be part of the Ngāti Toa tribe and both copyright and trade mark applications were denied – on the grounds of time, lack of distinctiveness, and being part of the public domain.69 A stand-alone solution was sought, and in April 2014, the Haka Ka Mate Attribution Act was passed, vesting inter alia a permanent moral right of attribution to the Ngāti Toa.70 For purposes of archaeological artefacts and recordations, are we supposed to ignore ‘time’ completely? If everything is someone’s heritage, when does anything ever come out of some protective cloister into the public domain? The answer is not easy. In the example of the Haka Ka Mate, a museum can have archival anthropological sound and film recordings of the haka being performed from the late 19th century; one can ascertain that such recordings would be out of copyright protection and thus in the public domain; but the subject matter being depicted may come to be regulated under a specific country’s cultural and legal norms, as in the case of UK’s common law on treasure trove or New Zealand’s statutory law on attribution for a specific haka.

3.

DIGITISATION AND IP: A NEW UNIVERSAL MUSEUM APPROACH?

Can property within the context of culture and heritage be considered as having intergenerational aspects? Bentham argued that property can be viewed as having many seemingly disparate elements – in addition to its intrinsic value. It can be a “value of affection”, as a “reward of my own labour”, or as the “future dependence of my children”.71 From this wide Benthamite view, a related concern is that of valuation of the analogue-born object vis-à-vis its digital surrogate – some types of properties constitute national treasures (and crowd-attracting Ibid, vol 1, ch 2, at 115–116, and section 1.6.3, at 54. Though claimed as being part of the Māori taonga, it has ironically been adapted as being expressive of the identity of the wider New Zealand nation through the use of the haka by the New Zealand All Blacks rugby union team, and other institutions. 70 The Haka Ka Mate Attribution Act 2014, No. 18, available at . For a more detailed discussion, see Isabella Tekaumārua Wilson, ‘The Misappropriation of the Haka: Are the Current Legal Protections around Mātauranga Māori in Aotearoa New Zealand Sufficient?’ (2020) 51 VUWLR 523. 71 Jeremy Bentham, The Theory of Legislation, with introduction and notes by C Ogden (ed) (Kegan Paul 1931), at 115. 68 69

408  Research handbook on intellectual property and cultural heritage exhibition stars such as the Parthenon Marbles); others are mundane everyday objects. This section addresses such a scenario where a new set of rights and ownership claims are born from digitisation. 3.1

Rationales and Issues

The zeitgeist of the past half century in the cultural heritage sector is to preserve and maintain our heritage for current and future generations, whilst ensuring its accessibility to the public. In the effort to increase access to and appreciation of our cultural memories, museums have begun to explore and use digital technology. These activities have, in turn, led museums to reappraise their current roles of keepers of memories and to entertain new sustainable pathways to increase dissemination, exploitation and revenue-generation. Their activities, to this end, include converting analogue material to digital, creating digital copies of artefacts and digitally restoring them, going through digitised material with text and data mining, and creating immersive heritage experiences. Copyright affects these activities in two main ways. First, if the digitisation includes works that are protected by IP rights, the museum will need to identify and seek permissions from authors or owners of such rights. The usual right in question would be copyright and any act that seeks to reproduce anything within the collections would be tantamount to an act of reproduction within the law.72 Museums may narrow their digitisation efforts to just ‘old’ or ostensibly public domain objects – but as we also noted above, depending on the jurisdiction, there can be residual rights and claims to such objects which would interfere with a clear reproduction act. There are, of course, in certain jurisdictions, exceptions under fair use, fair dealing or cultural heritage exceptions. Second, the digitisation can also lead to a new copyright work, provided that the outcome is sufficiently original. 3.2

Originality and Control in Digital Surrogates

In the EU, the 2019 Directive on Copyright in the Digital Single Market introduced a provision where “any material resulting from an act of reproduction” of “a work of visual art” should remain in the public domain unless “the material resulting from that act of reproduction is original in the sense that it is the author’s own intellectual creation”.73 Limited only to public domain works of visual art (which is not defined but would be ordinarily confined to objects such as drawings, paintings, sculptures, photographs), this signifies the understanding that the provision can only kick in if the reproduction is ‘original’. Viewed from another perspective, one can state that the goal, in a circular fashion, was to emphasise that unless originality is proven, works of visual art that are in the public domain remain in the public domain. But what is the (potentially original) work that is created when museums digitise their public domain collections? Several new objects are created. First, the 3D scanning of an artefact (to produce mesh files) or the photography thereof (to produce TIFF or JPEG 2000 files) will produce the first ‘digital surrogate’. Next, the creation of digital versions as CAD, 72 “copying in any manner and form”, Berne Convention Art. 9(1); “fully applies in the digital environment”, WIPO Copyright Treaty Agreed Statement concerning Article 1(4). 73 Directive (EU) 2019/790 on copyright and related rights in the Digital Single Market and amending Directives 96/9/EC and 2001/29/EC, L 130, 17 May 2019, art.14.

IP and CH issues for museums of archaeological materials  409 PDF, TIFF, OCR, etc., file formats, enabling processing and accessing of the digital data on multiple platforms (e.g., 3D printing, digital channels or online portals, or through VR/AR headsets) will create the second digital surrogates. One must then assess whether these digital copies qualify as ‘original’ works, or as slavish copies, or restored/reconstructed works. And who authored the surrogate work?74 It should be noted that there is no single determining point during the digitisation process suggested here for the originality threshold. There could be sufficient originality in the contributions, such as determining and applying the right method, the right positioning and angle, and the subsequent editing for restoration or expressive scans.75 In relation to unpublished documents or objects (and recalling our discussion above on unpublished works), digitisation may lead to ‘original’ surrogates and/or new works, triggering copyright and possibly, in some jurisdictions, a related right.76 Moreover, clarity is required as to authorship and ownership of the newly created surrogates and data. Are the digitisers employees who are part of the museum’s in-house digitisation team, or are they independent contractors? In case of the latter, one should ensure presumptive claims of IP in hire contracts.77 At the very least, museums would argue for their need to maintain proprietary control over the digital outputs, underpinned by contractual or public trustee principles, including copyright and data rights over the various manifestations of the digital output – raw data, the searchable dataset, the accompanying code and algorithms, and the digital surrogates.78 IP rights – whether they actually are present – are asserted via institutional contracts for the licensing and use of the digital surrogates in whatever format – whether as raw digital files or reformatted versions.79

74 For these questions in relation to 3D digitisation: Pinar Oruç, ‘3D Digitisation of Cultural Heritage: Copyright Implications of the Methods, Purposes and Collaboration’ (2020) 11(2) JIPITEC 149. 75 Case C-145/10 Eva-Maria Painer v Standard Verlags GmbH and Ors [2012] ECDR (6) 89 [91]. See also Thomas Margoni, ‘The Digitisation of Cultural Heritage: Originality, Derivative Works and (Non) Original Photographs’ (2014) Institute for Information Law (IViR). 76 For example, a database right in the datasets – see Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases, L77, 27 March 1996, 20–28. 77 Most civil law countries have rules that assume the employee as the author unless there is a contractual provision, whereas common law countries usually have the assumption that the works created during employment belong to the employee. There are no international or regional instruments clarifying the ownership of commissioned works, it depends on national laws. See JAL Sterling, Sterling on World Copyright Law (5th edn, Sweet & Maxwell 2018) 206–210; Bas Savenije and Annemarie Beunen, ‘Cultural Heritage and the Public Domain’ (2012) 22 LIBER Quarterly 84; Thomas Margoni, ‘The Digitisation of Cultural Heritage: Originality, Derivative Works and (Non) Original Photographs’ (2014) Institute for Information Law (IViR). 78 At least in the EU, rights can be simultaneously asserted over the selection and/or arrangement of digital data, algorithms, and code in a computerised and searchable format. In such instances, copyright and database rights will reside in the data (irrespective of the fact that the underlying object or manuscript may be legally owned by the heritage institution or may be in the public domain). 79 See, for example, Section 10, British Library’s Terms and Conditions, where the institution clearly asserts its ownership in relation to digital surrogates: “Images derived from physical items that are no longer in copyright, in the event that any intellectual property rights are created in the creation of such images, or in the process of their arrangement and selection, the British Library owns all right, title and interest….” Moreover, the Library claims an underlying moral right of integrity in respect of edited images.

410  Research handbook on intellectual property and cultural heritage From the positive perspective, digitisation can be immensely helpful for reviving destroyed cultural heritage, as in Palmyra,80 or in ‘digital restitution’ of sites and artefacts back to the original community.81 On the other hand, digitisation is less useful for solving ownership disputes, as we see from the worldwide release of the digital scans of the Nefertiti bust as an act of guerrilla repatriation – whilst the original still remains in the Neues Museum in Berlin, despite the claims of the Egyptian Government.82 3.3

… And Further Controversies

As stated above, digitisation of archaeological (and ethnographic) museum collections can enable ‘digital restitution’ – a term used to describe making photographs and sound recordings available to Indigenous communities.83 But there are also questions on whether it is alright to use the term ‘restitution’ and such practices could actually be more useful to countries trying to avoid any physical restitution. Furthermore, there are also ethical considerations when determining permissible levels of access to digital versions when Indigenous heritage is involved in relation to who gets to see certain artefacts that are meant to remain secret and sacred.84 Thus, within this context, the digitisation movement embraced by Western museums has become embroiled in the worldwide discourses on repatriation and is seen, by some, as a new form of colonisation of the very cultures to which repatriation is currently being discussed. The 2018 Sarr-Savoy Report on African cultural heritage as located ex situ in French archaeological and ethnographic museums attracted much controversy over its assumptions on the digitisation of artefacts.85 Unsurprisingly the report condemns the practices of looting and 80 As part of the cooperation between ICONEM and the Syrian Directorate General of Antiquities and Museums, one project involved scanning sites by using drones and relying on photogrammetry to construct accurate models of the old city – See ICONEM, ‘Our Mission and Projects’ ; Sketchfab . For a similar project undertaken by ICOMOS, CyArk and Google Arts, see CyArk, ‘Projects’ . 81 For an example of digital repatriation, see the joint collaboration between the People’s Palace Projects (under the aegis of Queen Mary University of London) and Arte Factum (a mixed foundation and commercial entity), funded by UK research councils. Scanned reproductions of caves and village environs within the Brazilian Xingu communities were digitally recreated, virtually ematerialized and digitally repatriated to the Indigenous communities – available at . 82 Sonia K Katyal, ‘Technoheritage’ (2017) 105 California Law Review 1111, 1113; Ann Marie Sullivan, ‘Cultural Heritage & New Media: A Future for the Past’ (2016) 15 J. Marshall Rev. Intell. Prop. L. 604, 619; Charly Wilder, ‘Swiping a Priceless Antiquity … With a Scanner and a 3-D Printer’ (New York Times, 2016) accessed 1 August 2021. 83 Marilena Alivizatou, Intangible Heritage and the Museum: New Perspectives on Cultural Preservation (Routledge 2012) 101. 84 Kate Hennessy, ‘Virtual Repatriation and Digital Cultural Heritage: The Ethics of Managing Online Collections’ (2009) 50 Anthropology News 5; Peter Dawson, Richard Levy and Natasha Lyons, ‘“Breaking the Fourth Wall”: 3D Virtual Worlds as Tools for Knowledge Repatriation in Archaeology’ (2011) 11 J of Social Archaeology 387. 85 Felwine Sarr and Bénédicte Savoy, “The Restitution of African Cultural Heritage. Toward a New Relational Ethics”, (2018), available at http://​r​estitution​report2018​.com/​sarr​_savoy​_en​.pdf. See also: MGA Pavis and A Wallace, ‘Response to the 2018 Sarr-Savoy Report: Statement on Intellectual Property Rights and Open Access relevant to the digitization and restitution of African Cultural Heritage and associated materials’ (2019) 10(2) JIPITEC 115–129.

IP and CH issues for museums of archaeological materials  411 even acquisitions86 of colonial and conquered cultural heritage and defends an approach of restitution. It also incorporates a universalist approach, namely it recognises the complexity of the violence of the colonial past, as well as the manner these objects were “ripped from their cultures of origin”, but also the manner in which the artefacts “were welcomed and cared for by generations of curators in their new places of residence”, thus “an irremediable piece of Europe and Africa”.87 Some parts of the Sarr-Savoy Report’s solution – the aim is to “invert the colonial hegemonic relationship”88 of both restituted and heritage remaining in situ – expands to digital reproduction of museum artefacts. Couched in socio-cultural terms,89 the report suggests the complete revision of the questions around the rights for the reproduction of images and that everything can and should be reproduced with the end goal of free access and free use. In parallel, they suggest that “communities concerned as well as the public at large should be able to claim ownership”.90 In addition of being a method to avoid restitution, it has also been argued that digitisation itself could result in a new form of colonisation. As noted in one study: digitization without adequate consultation is like colonising people all over again … As the museum, we’re publishing stuff that doesn’t really belong to the museum. It belongs to the people, and without working with the community and then just putting it online for the whole world to see … it’s not very fair.91

A more severe reproach to the Sarr-Savoy Report comes from the Pavis-Wallace response to the report: At present, the very decisions made about these digitization processes will and are proceeding under host communities’ oversight, precluding alternative African conceptions of how its cultural heritage might be represented and then presented to the public. Accordingly, there is a real risk of digitally imposing Western perspectives of how intellectual property should be exploited (or not) and how access should be extended to Africa’s cultural heritage. … “radical practice of sharing” must be defined according to a co-developed understanding and encompass only the works deemed appropriate for digitization, unfettered open access, and public reuse, and only after the key stakeholders and communities of origin are consulted as to how this should proceed.92

Yes, digitisation can help, but a shared dialogue is vital.

Sarr-Savoy Report, 8. Note: all pages refer to the English version of the Report. Sarr-Savoy Report, 87 88 Sarr-Savoy Report, 38. 89 The Report refers to: “a radical practice of sharing, including how one rethinks the politics of image rights use”; promotion of a “polyphonic” participation; “signification of the objects and open a possibility for the ‘universal’”. Ibid. 90 Sarr-Savoy Report, 67–68, 85. 91 (Recording an interview with a curator who is also of Pacific Islander descent) Supriya Singh, Meredith Blake and Jonathan O’Donnell, ‘Digitizing Pacific cultural collections: the Australian experience’ (2013) 1 Intl J of Cultural Property 20, 77–107. 92 MGA Pavis and A Wallace (n 85) 7. 86 87

412  Research handbook on intellectual property and cultural heritage

CONCLUSION As our chapter reveals, one of the challenges for museums is discerning the ownership and control of archaeological artefacts, especially in light of the fragmented notions of tangible/ intangible, national/international, and communities/museums. Troubling aspects are how ‘time’ is factored into any discourse on the property–culture nexus, and how the propertisation of culture fuels the intergenerational debate. And it is not guaranteed that the museum collections will be free from IP issues: copyright in relation to the reports and recordings/copies, as well as any ensuing publication of books and articles or films depicting images of the site, artefact(s), and representative communities; confidentiality and fiduciary issues arising from the publication or communication of the sites or artefacts, ownership of the intellectual and intangible knowledge and the culture (and property) that arises from the archaeological research. Moreover, where IP rights are asserted, matters get obfuscated from other angles. Does the IP status of the heritage artefact dictate the intangible heritage status or vice versa? Are these recognised international IP rights or are the rights being asserted from a specific jurisdictional or cultural understanding? The incompatibility between IP laws and cultural heritage is more significant when it comes to the treatment of artefacts held in archaeological (and ethnographic) museums and Indigenous community claims. While digitisation is useful for preserving and giving access, it also creates a fresh set of issues in relation to ownership and the use of the digital surrogates. We have demonstrated that the archaeological museums have a dual role: the responsibility of preserving and sharing ‘heritage’ (which is an amorphous concept); the responsibilities that derive from the control over the tangible or intangible artefacts, versions, and surrogates. Despite the epitaph of ‘old’ and ‘public domain’ being foisted on archaeological collections, that does not mean that there are no stakeholders involved (as our Sutton Hoo narrative recounts). They may be the Crown, the owner of the land harbouring the in situ excavation site, the displaced communities, the Indigenous living communities, the independent contractors involved from ‘discovering’ other civilisations, or the culture guerrillas bent on digitising the heritage of such civilisations for repatriation or worldwide access. Individuals, communities, and states may make claims based on underlying rights and entitlements vested within artefacts and recordations (including digital surrogates) of such objects, including claims by heirs of owners of the intangible work and expressions, claims by Indigenous guardians or sovereign state owners of traditional cultural expressions, and claims for repatriation of national treasures.

22. Management issues for cultural heritage institutions Konstantinos Roussos and Irini Stamatoudi

INTRODUCTION In a constantly changing world, where rapid transformations (economic, social, technological, environmental) occur, the cultural heritage (CH) sector, meaning any institution, organization or agency, private, public or semi-public, national, regional, international, governmental or non-governmental, as well as stakeholders, dealing with issues of cultural property/heritage,1 as a whole has become increasingly competitive and complex. As the 21st century advances and brings with it new, unpredictable challenges, cultural heritage institutions (CHIs) as living organisms need to continuously reassess their role in society and reposition themselves more strongly and visibly in order to be more relevant and attain their mission. Since their role will become even more central in the coming years, they are moving away from traditional approaches by adopting more people-oriented perspectives. Their future must be designed in such a way to meet multiple challenges, such as considerable cuts of private or public funding, climate change, safeguarding public health, rise of the competitiveness level, the increasing diversification of visitors’ interests and demands, the growth of digital technologies and their enormous impact on humans’ lives, etc. In this context, CHIs are called to successfully respond to the rapidly changing reality and act timely and effectively. They are called to deal with everyday challenges and needs as well as to manage risks and respond to opportunities. The recent pandemic has been a characteristic example in this respect. This, in a structured manner, can be addressed through cultural heritage management (CHM). CHM, as a growing sector, is the main vehicle for helping them to face these challenges and secure sustainable competitiveness. This chapter aims to offer a review of the main issues to be covered in the context of CHM without, of course, being exhaustive, as this exercise would require a monograph. The aim is to cover the basic issues that should be addressed by a CHI, bearing in mind, of course, that CHIs may have varying goals depending on their nature and mission. For example, different issues should be addressed by a museum, a library, and a non-governmental organization aiming to protect intangible cultural heritage. In this sense we shall need to generalise to a certain extent (bearing in mind mainly museums and less so other types of institutions). The academic literature on CHM is vast, encompassing studies from various disciplines (archaeology, anthropology, conservation, management, technology, marketing, law, etc.) to meet the interdisciplinary nature of the CH sector. The chapter selects the most significant themes that follow the current scientific discourse and represent the basis upon which a model 1 As to the notions of ‘cultural property’ and cultural heritage’ see Irini Stamatoudi, Cultural Property Law and Restitution. A Commentary to International Conventions and European Union Law (Edward Elgar 2011) 4seq.

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414  Research handbook on intellectual property and cultural heritage of sustainable heritage management can be established. The analysis takes into account the most recent level of knowledge and development achieved in the CH sector (state-of-the-art) as well as some of the recent challenges set for CHIs by the pandemic. This work derives from the research project Redefining the future of cultural heritage, through a disruptive model of sustainability (ReInHerit), which has received funding from the European Union’s Horizon 2020 research and innovation programme. In terms of structure, the chapter is divided among six main topics corresponding to an equal number of sections. More specially, it includes key aspects related to: (1) the notion of cultural heritage management, (2) museum and other cultural institutions’ collections, (3) audience and local communities’ engagement, (4) environmental concerns and climate change, (5) new ‘business’ models and financing, and (6) marketing and branding. These topics are related to a variety of beneficiaries within the CH sector, such as museums and galleries, archaeological sites, folklore sites, monuments, libraries and archives, historic sites, religious sites, local cultural and/or historical associations, municipalities, non-profit cultural organizations (hereinafter CHIs). Issues related to the notion of CH, intellectual property (IP) and IP management, which are of great importance, are not included in this chapter (although some of those issues are mentioned) due to the fact that they are covered by other contributions in this volume.

1.

THE NOTION OF CULTURAL HERITAGE MANAGEMENT (CHM)

CHIs play a fundamental role in modern societies and their management is of great importance. Τhe wide field of CHM is steadily growing, since CHIs adopt various approaches, methods and practices in order to redefine themselves in a constantly changing world. Dealing with the inclusive and extensive concept of CH, the field of CHM became itself very broad whilst any explicit delimitation has not been established. It also became interdisciplinary since it crosses the boundaries of many disciplines and fields (social sciences, humanities, architecture, law, management, marketing, economics, restoration, conservation, curatorship, ICT, museology, etc.). The involvement of several disciplines and fields in CHM, all of them with different interest areas related to CH, has provided a wide range of perspectives. Modern studies have shown a great variation on all levels, making generalization difficult. If we want to give a working definition for the needs of the chapter, we can stress that: CHM refers to a complex and changeable process through which we can manage the diverse aspects of CH (tangible and intangible), using a wide set of tools and practices including identification, excavation, recording, documentation, protection, conservation, restoration, interpretation, enhancement, promotion, presentation, dissemination of cultural heritage production, distribution, exhibition, education, communication, economics, monitoring, marketing, evaluation, strategic management, ICT, risk management, law, etc.

Central to CHM is the concept of sustainability that currently dominates the global discussion in the CH sector. Sustainable CH is about both preserving CH for future generations, and balancing and coordinating the CH needs and the needs of people who would like to experi-

Management issues for cultural heritage institutions  415 ence it.2 The concept of sustainability acts as a framework for developing long-term strategic cultural policies and rethinking about patterns of consumption and current practices, modes of operation and managerial organization through a comprehensive approach that includes care for the environment and public health, develops practices for using new technologies and brings the concept of social awareness to the forefront. The very existence of CH is largely based on the multiple values that people attached to it.3 As a result, it is important to note that CH belongs to the societies that value it.4 In this respect, in the recent years CHM approaches tend to transform from the ‘conventional’ approach to the ‘human’ or ‘integrated’ approach. In other words, the focus has been directed from the resource itself to both the resource and the ‘users’.5 Heritage managers around the globe are implementing a form of management that emphasizes working with various stakeholders,6 interested and affected parties, relevant actors, in an attempt to identify the varied values understood by these parties.7 Central to this ‘significance-based heritage management’ is the need to maintain and enhance the significances of a CHI. In this respect, CHM has moved towards a management of social values rather than objects and places in order to bridge the divide between heritage managers and community interests. The way in which heritage managers identify and categorize values is crucial in this process.8 An important step that each CHI should take for a successful CHM is to set up their vision and mission, which would in fact run the entire institution’s system in the short and long term. A vision is a statement that gives CHIs direction, mapping out where they are headed. It describes their future and should be audacious, ambitious, and yet entirely achievable. A mission statement is the heart and foundation for any CHI and drives everything they do (vision, policymaking, planning, operations, etc.).9 It should give its visitors, employees, administrators, and stakeholders a clear idea of its values and goals. As such, it conveys an important message, at the core of which are the organizational values, i.e., the common beliefs

2 For more about various theories concerning the relationship between sustainability and culture, see David Throsby, ‘Culturally sustainable development: Theoretical concept or practical policy instrument?’ (2017) 23 Int. J. Cult. Policy 133–147; Łukasz Wróblewski, Anna Gaio, Ellen Wetherbee Rosewall, ‘Sustainable Cultural Management in the 21st Century’ (2019) 11 Sustainability 4665; Daniela Angelina Jelinčić and Dragana Glivetić, Cultural Heritage and Sustainability: Practical Guide (with contribution of Sanja Tišma, INTERREG Europe, European Regional Development Fund) 8–9. 3 Colin Michael Hall and Simon McArthur, Integrated Heritage Management: Principles and Practices (Stationery Office 1998) 220. 4 Michael Pearson and Sharon Sullivan, Looking after Heritage Places. The Basics of Heritage Planning for Managers, Landowners and Administrators (Melbourne University Press 1999) 33. 5 Visitors, future generations, local communities, tourists, professionals, citizens, etc. Hereinafter users. 6 Stakeholders can be: museums, heritage sites, cultural institutions, curators, audience, policymakers, professionals, academics, public users (e.g., visitors, commercial users, such as the tourism industry), entrepreneurs, public institutions, owners, developers, NGOs, communities, cultural groups that live near a heritage asset or are attached to it culturally, schools and universities that use it as a resource, government heritage authorities that may be responsible for managing it. Hereinafter stakeholders. 7 Mélanie Duval and others, ‘Towards a holistic approach to heritage values: a multidisciplinary and cosmopolitan approach’ (2019) 25 (193) IJHS 1279–1301. 8 Ibid. 9 The American Alliance of Museums has published a guide for ‘Developing a Mission Statement’: .

416  Research handbook on intellectual property and cultural heritage and acceptable standards, which govern the behavior of individuals within an organization. In a nutshell, mission is purpose and vision is future.10 Each CHI needs to set up a CHM plan that explains management issues, approaches and requirements relating to CHIs and sets a framework for decision-making over a given period of time.11 It should be sufficiently flexible, clear, simple, management-oriented and easily understood. It is interesting to note that UNESCO provides an extensive list of recommendations regarding the purpose, role, and content of management plans.12 A wide range of aspects and processes should be taken into account, such as: legislation, ethics and deontology, identification, assessment, statutory protection, conservation (preservation, restoration, reconstruction, adaptation), rehabilitation and revitalization, use, maintenance, guarding, interpretation, presentation, monitoring, control, and research.13 The overall objectives of the CHM plan are: (a) to protect the values of the CH for present and future generations, and (b) to promote effective sustainability practices. The CHM plan must adapt to changes in the economic, political, social, and physical environment.14 It is worth noting that there are considerable variations in the context and character of a CHM plan, depending on the type of cultural heritage. For example, drafting a CHM plan for an archaeological site, a museum or an urban center would definitely be a complex procedure. Instead, drafting a CHM plan for a single historic building or a small museum can be simpler.

2.

MUSEUMS’ AND OTHER CULTURAL INSTITUTIONS’ COLLECTIONS

2.1

Collections Management

In recent decades ‘collections management’ has become an internationally recognized term in the CH sector. It is an aspect of CHM and an absolute essential process for CHIs of all sizes and types regardless of whether their collection is small or large, public or private.15 It embraces a wide range of activities, including acquisition, accountability, inventory, documentation, digitization, preservation, conservation, protection, care, storage, movement, exhibitions, loans, and use of cultural objects. It is worth noting that managing collections also encompasses making objects available in digital form to the public as part of long-term planning. CHIs, which hold different types of collections, should establish a collections management policy that outlines the scope of their collection, explains how they care for it and make collections available to the public, and clearly define the roles of the parties responsible

10 Britt Skrabanek, ‘Difference between Vision and Mission statements: 25 examples’ (Clear Voice 19 August 2018) accessed 28 August 2021. 11 For a definition of the term ‘cultural heritage management plan’, see UNESCO and others, Managing Cultural World Heritage Resource Manual (UNESCO 2013) 122–145. 12 Ιbid, 122–145. 13 Organization for Security and Co-operation in Europe, Guidebook on Standards for Drafting Cultural Heritage Management Plans (Organization for Security and Co-operation in Europe 2020) 20. 14 Hall and McArthur (n 3) 220. 15 Susanna Hillhouse, Collections Management – A practical guide (Collections Trust 2009); Freda Matassa, Museum Collections Management: A handbook (Facet Publishing 2011).

Management issues for cultural heritage institutions  417 for managing their collections. It is clear that collections management is a quite broad topic. Given its wide scope, this chapter highlights the most significant trends and challenges faced by CHIs today, as these are presented in the literature. 2.2

Due Diligence for CHIs

Due diligence is a practice that encompasses a set of required verification concerning the legal provenance of a cultural object or specimen offered for purchase, gift, loan, bequest, or exchange.16 It precedes the acquisition and intends to clarify the full history and ownership of the cultural item looking back from the time of its discovery or production to the present day. It includes checking on provenance and documentation. Issues such as whether there is an ID number and an export certificate for the object, whether the object is mentioned in someone’s will, whether there are pictures that prove that it was indeed found in someone’s collection several years ago or receipts as to when, where, or how it was acquired. This also helps to find whether an object – that proves to be illegal – has been acquired in good faith. For example, bad faith is usually established if the third party proves that the purchaser had knowledge of the lack of valid title or such knowledge is presumed by the circumstances (for example a purchase outside a shop, during the hours of darkness, or at a very low price, which does not correspond to the object’s actual price).17 Other issues are ownership and possession, rights of disposal, third party rights, authenticity and, finally, the value of the cultural object.18 There is a framework of conventions and international codes of ethics or conduct relating to due diligence in the CH sector.19 For anyone involved in CH, due diligence is important for various reasons. First of all, there is an increasing number of high-profile restitution claims for cultural objects that are hosted in the collections of CHIs in the EU, the UK, and the US.20 CHIs need to deal with this reality and maintain their credibility, ensuring that they exist in an ethical and moral environment. Furthermore, due diligence plays a vital role as an effective process against illicit trade of CH, a trade with ties to international terrorism, money laundering, and other illegal activities.21 Finally, acquisitions of ethically acceptable items through due diligence research can strengthen the profile of CHIs, improve their image, as institutions that respect origin nations and local communities and are therefore anthropocentric and humane,22 give them an impetus 16 For a definition see International Council of Museums (ICOM), ICOM Code of Ethics for Museums (ICOM – Maison de l’UNESCO 2017) 9 and Glossary. 17 Stamatoudi, ‘Cultural Property Law’ (n 1) 225–226. 18 Thomas Christ and Claudia von Selle, ‘Basel Art Trade Guidelines: Intermediary report of a self-regulation initiative’ (2012) 12 Working Paper Series 12. 19 For a detailed analysis see Stamatoudi, ‘Cultural Property Law’ (n 1) 51, 83, 86–89, 99–100, 108, 111, 154–55, 160, 163–66, 173, 203, 223–26, 239, 250–51. See also in particular the 1995 UNIDROIT Convention on Stolen and Illegally Exported Cultural Objects. 20 Victoria Reed, ‘Due diligence, provenance research, and the acquisition process at the Museum of Fine Arts, Boston. De Paul’ (2013) 23(2) JATIP 363. 21 Leila Amineddoleh, ‘The role of museums in the trade of black market cultural heritage property’ (2013) XVIII(3) A.A. & L. 229. 22 According to the authors of this chapter, this is supposed to be one of the main aspects of the ‘ecumenical museum’, which differentiates itself from the ‘universal museum’ (see the 2002 Declaration on the ‘Importance and Value of Universal Museums’), since it places the emphasis on the ethical acquisition and maintenance of antiquities and art in general irrespective of time boundaries.

418  Research handbook on intellectual property and cultural heritage for sustainable development, attract new audience, and inspire older visitors. As such, applying high ethical standards of due diligence should be a priority for CHIs that engaged with transactions concerning cultural objects. However, even today, as is mentioned by the ICOM International Observatory on Illicit Traffic in Cultural Goods “many heritage professionals and art dealers are not made aware on due diligence concept and requirements, and its ethical framework”.23 CHIs should conduct due diligence and reject a cultural item if there is any doubt as to its legal ownership or provenance. They need to set up a clear acquisitions policy and to meet the highest standards of due diligence and transparency. The due diligence policy can be part of the broader collections management policy or a standalone text.24 It is also worth noting that literature stresses the need for more rigorous due diligence searches with strict commitment to high ethical standards, by presenting characteristic cases studies of antiquities, which seem to be illicit and which were offered for sale at famous auction houses.25 Tsirogiannis correctly points out important dangers concerning the due diligence procedure.26 These due diligence searches, either being products of incapable researchers or results of highly unethical selective collecting history, support the illicit market in any way, directly or indirectly. As such, there is a need for control in order to ensure that all parties involved are engaged in proper due diligence. In the context of the COVID-19 pandemic, a discussion has opened regarding whether CHIs will be tempted to stop due diligence searches.27 CHIs around the globe are highly recommended to continue, uninterrupted, their commitment to ethics and transparency despite major obstacles faced by the current pandemic. 2.3

Dealing with Restitution/Repatriation Claims

The extent of the literature related to repatriation/restitution claims is indicative of the subject’s growing importance as well as its complexity. Academic studies point out the variety of circumstances in which the claims of restitution/repatriation28 of cultural property29 arise (trafficking, wartime plunder, or appropriation or trades between dealers in times of coloni-

23 See ICOM International Observatory on Illicit Traffic in Cultural Goods, ‘Due diligence/Good faith’ (Obs-traffic) accessed 2 August 2021. 24 Matassa (n 15) 202–03; Amineddoleh (n 21) 229, 254. 25 David Gill, ‘Context Matters “Learning from the Herm: The Need for More Rigorous Due Diligence Searches”’ (2014) 12 JAC 57–62; Stamatoudi, ‘Cultural Property Law’ (n 1) 224. 26 Christos Tsirogiannis, ‘Due Diligence? Christie’s Antiquities Auction, London, October 2015’ (2015) JAC 28. 27 Elizabeth Campbell, ‘The only way is ethics: US museums should not neglect provenance research in the funding crisis’ (The Art Newspaper, 25 September 2020) accessed 20 July 2021. 28 It is beyond the scope of this chapter to provide exhaustive definitions of these terms. For more extensive definitions see Stamatoudi, ‘Cultural Property Law’ (n 1) 14–19. 29 The most debated and controversial issue that is related to repatriation/restitution claims is the notion of ‘cultural property’. The literature on this point is wide and diverse. Yet, it is beyond the scope of this chapter to provide a more extensive analysis on the issue. For more see Stamatoudi, ‘Cultural Property Law’ (n 1) 4–14.

Management issues for cultural heritage institutions  419 zation or occupation, etc.) as well as the complex issues that these efforts face.30 This process requires collaboration between government, law enforcement, CHIs, and antiquity dealers, while the subject is covered by local, regional, and international laws. Additionally, the actors involved in repatriation/restitution claims are many and varied: states, other public and private law entities, regional or territorial government authorities, museums, and Indigenous communities.31 The literature provides a diverse picture regarding the categorization of the claims for restitution/repatriation.32 The number of successful returns and ongoing claims is steadily increasing, reflecting a significant shift in the policy of several CHIs towards a more legitimate and morally correct attitude. This is also a trend that has been reflected in CH law.33 When CHIs enter in conflict, this alone contradicts their mission and vision while it also adversely affects their profile and role within the constantly changing modern world. Recent literature stresses the need that CHIs, when dealing with restitution/repatriation claims, should foster a fruitful and trusting dialogue as well as a mutual understanding with claimant communities, rather than create conflicts and tensions.34 Regardless the results of the claim, this process will develop sustainable relationships between communities, cultures, and CHIs. Modern literature underlines the need for designing effective strategies that take into account each repatriation/restitution claim individually, given the fact that all claims for different types of objects should not be treated the same.35 Despite the extensive bibliography as well as the numerous international conventions, committees, and panels dealing with the return of cultural property,36 there are still not clear and specific patterns for a successful repatriation/restitution.

30 Marie Cornu and Marc-André Renold, ‘New Developments in the Restitution of Cultural Property: Alternative Means of Dispute Resolution’ (2010) 17 Int. J. Cult. Prop. 1–31; Carol A. Roehrenbeck, ‘Repatriation of Cultural Property–Who Owns the Past? An Introduction to Approaches and to Selected Statutory Instruments’ (2010) 38(2) IJLI 185–200. 31 For more on this see Cornu and Renold (n 30) 4. 32 There is no agreement among the scholars concerning the number and the context of the proposed categories. For more see Patty Gerstenblith, ‘Museum Practice: Legal Issues’ in Sharon Macdonald (ed.), A Companion to Museum Studies (Wiley‐Blackwell 2011) 197–198; Shane Simpson, ‘Repatriation of Cultural Material’ (Collections Law, 22 September 2009) accessed 25 July 2021. 33 Stamatoudi, ‘Cultural Property Law’ (n 1) 216 seq.; Irini Stamatoudi, ‘Alternative Dispute Resolution and Insights on Cases of Greek Cultural Property: The J.P. Getty Case, the Leon Levy and Shelby White Case, and the Parthenon Marbles Case’ (2016) 23 Int. J. Cult. Prop. 446; Irini Stamatoudi, ‘Return of Cultural Treasures to their Countries of Origin: Principle or Trend in Cultural Property Law?’ in Photini Pazartzis and others (eds), Reconceptualising the Rule of Law in Global Governance, Resources, Investment and Trade (Bloomsbury Publishing 2016) 153. 34 Piotr Bienkowski, ‘A critique of Museum restitution and repatriation practices’ in Conal McCarthy (ed.), The International Handbooks of Museum Studies: Museum Practice (1st edn, John Wiley & Sons 2015) 435. 35 Simpson (n 32). For an overview of reported good practices in the restitution of stolen or spoliated cultural property see UNESCO, Report on the implementation of the UNESCO 2015 Recommendation on Museums & Collections. Paris (UNESCO 2019) 45. Arts Council England appoints Institute of Art & Law to develop new guidance on restitution/repatriation: . 36 Ana Filipa Vrdoljak, International Law, Museums and the Return of Cultural Objects (Cambridge University Press 2006) xx–xxviii.

420  Research handbook on intellectual property and cultural heritage However, the global debate on repatriation/restitution issues has encouraged the development of various practices and methods in this field.37 Virtual or digital repatriation/restitution deserves a special mention given the fact that it is increasingly in use. According to Pickering, the term digital repatriation/restitution “refers to the providing of copies of documentation and/or images to communities of origin. It does not include the original materials.”38 Literature has raised many doubts about this practice. As Bienkowski states, “virtual repatriation does return something significant to source communities, in that it is an opportunity to reconnect to past and culture. Sometimes, though, use of new technologies can be interpreted as a cynical replacement for repatriation, denying the necessity for a real return.”39 2.4

Display and Exhibitions

Public displays and exhibitions40 are the most popular parts of CHIs.41 It has been recognized as the major means of interaction between CHIs and their audiences. The relevant literature revolves around a wide range of strategic issues concerning the design of exhibitions for CHIs. The concept of sustainability should be at the center of attention when preparing an exhibition.42 Exhibition planning is an interdisciplinary process that combines methods and practices from other disciplines, such as architecture, conservation, industrial process management, computer programming, etc. Therefore, the participation of different specialists with skills, knowledge, expertise, and experience is suggested.43 Despite different approaches, it is widely accepted that exhibition planning helps to: (a) determine the aims and feasibility of the desired project, and (b) organize the exhibition process taking into account available human, technical and economic resources as well as timelines and cost estimates.44 The most essential step is to specify the objectives and goals of the exhibition. This may range from delivering an aesthetic and enjoyable experience for the audience to achieving educational purposes. Thus, it is of paramount importance in the designing process to identify the target group or groups (e.g., local communities, students, tourists, visitors, minorities and Indigenous peoples, special needs groups, etc.).45 This is not an easy task given the diversity

37 For more details about mechanisms for repatriation or restitution accompanied by examples see Bienkowski (n 34) 435. See also Cornu and Renold (n 30); Vrdoljak (n 36); Stamatoudi, ‘Return of Cultural Treasures’ (n 33). 38 Michael Pickering, A Repatriation Handbook: A guide to repatriating Australian Aboriginal and Torres Strait Islander Ancestral Remains (National Museum of Australia 2020) 10, 13. 39 Bienkowski (n 34) 436. 40 Definition of the term ‘exhibition’ varies according to country and language. For more see Yani Herreman, ‘Display, Exhibits and Exhibition’ in Patrick J. Boylan (ed.), Running a Museum: A Practical Handbook (ICOM – International Council of Museums 2004). 41 Herreman (n 40) 90; Matassa (n 15) 201. 42 See Museum Association (MA), Sustainability and Museums: Your chance to make a difference. (Museum Association 2008) . 43 National Park Service (NPS), NPS Museum Handbook, Part III: Museum Collection Use (National Park Service 2001) 7:9. 44 Herreman (n 40) 94. 45 NPS (n 43) 7:14–16. See also David Dean, Museum Exhibition: Theory and Practice (2nd edn, Routledge 1996) 19–31.

Management issues for cultural heritage institutions  421 that characterizes any of these groups. Many variables must be taken into account, such as differences in ages, levels of education, tastes, interests, and people’s prior knowledge of the subject. However, it is not possible to satisfy equally all different people that belong to these groups. In addition, knowing the audience facilitates the design of the plan of the necessary circulation spaces and clearances, as well as rest spaces.46 This is extremely important during the COVID-19 pandemic and, particularly, in the post-COVID-19 era when CHIs plan to reopen. New exhibitions should be designed (or existing exhibitions should be redesigned) according to strict health and safety protocols and to promote measures for staff, volunteers, and visitors. In this context, ensuring physical distancing and using protective panels are crucial. Other measures that need to be taken into account in designing or redesigning an exhibition are: promoting frequent hand washing, providing protective equipment, face coverings, etc.47 2.5

Digitizing the CHI Collections

Digitization has been identified as a growing trend that has a significant impact on the concept of CHIs, especially in times of crisis.48 Digitization of collections is still an ongoing process, and thus, the current debate points out the relevant benefits without, at the same time, ignoring important difficulties and challenges. In any case, the literature suggests that digitization is a new way for CHIs to redefine their role within the constantly changing world. It is true that cutting-edge technologies have changed the way modern humanity experiences CHIs. The recent evolution in technology has resulted in the development of various methods of digitizing a collection ranging from flat prints and paintings, which are the simplest ways to digitize with just scanning the actual image, to 3D models, which are more complicated ways to capture the detail of every angle of the cultural object. Literature provides advice, tips, and tools to consider when deciding the museum’s digitization and cataloging projects.49 It also identifies the several advantages associated with the digitization of CHIs.50 These benefits Dean (n 45) 53–55; Herreman (n 40) 95. Museums may be able to reuse exhibition materials such as Plexiglas vitrines to create barriers. See the considerations for museum re-openings of the American Alliance of Museums: . 48 Lorna M. Hughes, Digitising Collections. Strategic issues for the information manager (Facet Publishing 2004); Ross Parry (ed.), Museums in a Digital Age (Routledge 2010); Regina L. Avila, Susan A. Sanders and Keith R. Martin, ‘Tips and tools for digitizing a museum collection’ (2011) 35(6) Online 13–18; Fiona Cameron, ‘Museum collections, documentation, and shifting knowledge paradigms’ in Gail Anderson (ed), Reinventing the Museum: the Evolving Conversation on the Paradigm Shift (AltaMira Press 2012); Bryan Shelmon, ‘Digitizing the museum: A new kind of interaction’ (9 April 2018) accessed 18 July 2021; Elizabeth Pennisi, ‘Report urges massive digitization of museum collections’ (Sciencemag, 4 April 2019) accessed 18 July 2021; Rachael Cristine Woody, ‘5 Prompts to Prioritize Museum Digitization Projects’ (Lucidea, 20 February 2019) accessed 18 July 2021; Trilce Navarrete, ‘Digital heritage tourism: innovations in museums’ (2019) 61(3) World Leis. J. 200–14; Trilce Navarrete, ‘Chapter 27 Digitization in Museums’ in Trine Bille, Anna Mignosa and Ruth Towse (eds), Teaching in Cultural Economics (Edward Elgar Publishing 2020) 207–210. 49 See Avila, Sanders and Martin (n 48); Woody (n 48). 50 For more on benefits see Shelmon (n 48); Woody (n 48). 46 47

422  Research handbook on intellectual property and cultural heritage have been challenged, given the fact that the high accessibility of enhanced digital copies of art could lead to loss of appeal of the actual physical pieces. This may cause lower overall visitor traffic, lower visitor density, and lower operating income in many museums. Nevertheless, as Ridge correctly points out: digitised material seems to increase people’s desire to come and ‘see the real thing’, and hopefully it also increases scholarly attention and gets people telling more stories about collections [, while] for small museums, digitising and sharing collections might help people realise they exist or remind them to visit, but it does depend on the quality of the overall user experience and whether people can find the website in the first place!51

Digitization sets several legal issues – especially pertaining to copyright – such as clearance of rights through either normal licensing or extended collective licensing depending on the jurisdiction (ECL), status of use of the works (e.g., offered under open regimes such as Creative Commons or waivers, etc.), restricted uses and special exceptions and limitations for non-profit organizations, and uses, placement of technological protection measures (TPMs) for the prevention of copying and digital rights management (DRM) for their online licensing, special regimes applicable to orphan works and out-of-commerce works, sui generis regimes of protection for Indigenous/traditional expressions and folklore, etc. These issues are handled separately under other contributions in this volume. The recent NEMO survey (Network of European Museum Organisations) points out the absence of a mechanism to track the digitization process and the online accessibility in many museums as well as a lack of communication between stakeholders involved in the CH digitization process, in terms of operational or legal issues.52 NEMO’s report stresses the need for European decision-makers to place particular emphasis on ensuring a legal and technological framework, which will help museums to fully understand and realize their opportunities in the digital environment. Regarding the stakeholders, it suggests allocation of resources and increased capacity-building for museums. This will help museums (and other CHIs) to: (a) receive more resources to digitize their collections, and (b) require access to capacity-building opportunities and training of staff to digitize collections. It is widely accepted that the CH sector has been severely affected by restrictive measures imposed by governments around the world due to the COVID-19 pandemic. A current trend in several CHIs around the world is the implementation of projects that intend to digitize their entire collections in order to elevate their digital presence.53 Several museums had already started digitization some years ago and they have just continued it with more intensity, while

51 Adrian Murphy, Interview with Mia Ridge digital curator, Western Heritage Collections at the British Library and chair of the Museums Computer Group (March 3, 2016) . 52 See Network of European Museum Organisations (NEMO), Final report Digitisation and IPR in European Museums. Prepared by the Network of European Museum Organisations Working Group on Digitalisation and Intellectual Property Rights with the support of researcher Nina Szogs. Conducted March–May 2020 (Network of European Museum Organisations 2020). 53 Working Group of EU Member States’ Experts, ‘Promoting access to culture via digital means: policies and strategies for audience development. Final draft report of the Working Group of EU Member States’ Experts on promoting access to culture via digital means under the open method of coordination’ (Publications Office of the European Union 2017) 19.

Management issues for cultural heritage institutions  423 for many others this process was triggered by the COVID-19 pandemic.54 At the same time, there is a growing amount of posts and online publications that provide ideas for digital engagement in the time of COVID-19.55 Among these ideas are online collections, 360-degree tours, virtual museums, online publications, digital exhibitions, virtual tours of galleries via streaming platforms (e.g., Twitter), etc.56 All these new ways to promote CHIs’ content in accessible and engaging formats will impact future digital practices in the cultural sector.57 Zuanni provides an interesting map that collects and shows digital activities developed and promoted by museums during the COVID-19 pandemic.58 All these best practices are aimed at offering visitors the possibility to better appreciate the artworks before and even after a visit.

3.

AUDIENCE AND LOCAL COMMUNITY ENGAGEMENT

3.1

Culture and Tourism

It is widely accepted that culture constitutes a key component of tourism and it has a great impact on the competitiveness and effectiveness of tourism destinations.59 UNWTO’s global survey highlights the significant role of cultural tourism in the tourism policy of many countries around the world and its potential for further development.60 There are many benefits generated from cultural tourism that span a wide development spectrum, ranging from economy and society to environment.61 Nonetheless, literature identifies negative effects of cultural tourism on a local, regional and global scale, such as rapid and uncontrolled tourism growth, overdependency on tourism, overcommercialization and folklorization of intangible heritage,

54 Individual museums or consortium of museums post their collections online through open-source content, allowing users to download and make edits to any digitized art available. The project entitled ‘Van Gogh Worldwide’, for instance, is conducted by a group of Dutch museums which presents a digital collection of over 1,000 of the artist’s masterpieces. See the website of the project: . See also the digitization of Smithsonian Collections in the United States . 55 For example see: Georgia Evans and Gina van der Linden, ‘Ideas for digital engagement in the time of COVID-19’ (Pro.europeana, 29 April 2020) accessed 18 July 2021; Chiara Zuanni, ‘Mapping museum digital initiatives during COVID-19’ (Pro.europeana, 4 August 2020). accessed 18 July 2021. 56 UNESCO, UNESCO Report. Museums around the world in the face of Covid-19 (UNESCO 2020) 15–16. For examples of CHIs that have made exciting virtual tours and 3D images of their art and cultural heritage treasures see . 57 Interreg, ‘Digital technologies and museums: post-pandemic experiences’ (Interregeurope, 29 June 2020) accessed 19 July 2021. 58 For the map see: . 59 Seyed Sina Mousavi and others, ‘Defining Cultural Tourism’ in Predrag Dasic (ed), International Conference on Civil, Architecture and Sustainable Development (CASD-2016) (2016) 74. 60 United Nations World Tourism Organization (UNWTO), Tourism and Culture Synergies (UNWTO 2018) 26–42. 61 See UNWTO (n 60), 81–85; Adi Weidenfeld, ‘Tourism Diversification and Its Implications for Smart Specialisation’ (2018) 10 Sustainability.

424  Research handbook on intellectual property and cultural heritage etc.62 The challenge for CHIs as well as host communities is to offer a unique, special, and participatory cultural tourist experience that will bring with it most of the benefits, while, at the same time, will avoid all negative effects. In recent years, the growing significance of new technologies, the ongoing digitization process, and the spread of digital media has brought to the forefront the concepts of ‘digital tourism’, ‘smart tourism’, ‘e-tourism’, or ‘m-tourism’. These new concepts, which are used interchangeably, reflect new tourist trends, modern tourist demands and a relationship between digital revolution and the tourist experience. Recent studies, which deal with how digital technologies impact tourists’ consumption experiences, point out that the increasing adoption of new technologies, such as virtual reality and artificial intelligence, has altered the behavior of tourists in collecting information, evaluating tourism products, and purchasing tourism products.63 In the context of cultural tourism, this situation has changed the way that tourists access the cultural offer of available destinations. Recently, the concept of ‘digital heritage tourist’ has emerged.64 This concept is particularly relevant due to the impact of the COVID-19 pandemic on the CH sector. Literature stresses the importance of taking into consideration the needs, the behavior and the motivation of digital heritage tourists as well as the current dynamics of tourism communication, technology and human levels, when CHIs design sustainable and strategic planning activities.65 In this way, they can gain added value and competitive advantage. According to Booth et al., “today’s online fans could be tomorrow’s tourists”.66 During the COVID-19 pandemic, cultural tourism experienced an unprecedented drop. At the same time, users of cultural products are changing, either by their own decision or because health circumstances force them to do so. Now, as CHIs are struggling to reopen, international organizations, policymakers, managers, and practitioners attempt to bring cultural tourism back on track. This crisis can be seen as an unprecedented opportunity to create new partnerships and collaboration between tourism and culture in order to transform the entire cultural tourism sector. In this respect, the concepts of resilience and sustainability feature prominently in post-COVID-19 recovery planning, on a multinational, national, regional, or local level.67 The most recent literature places at the center of the ongoing discussion the ability to recover from crisis and the sustainable use of resources. The current crisis offers an opportunity to move away from international mass tourism towards a more sustainable and local tourism based on cultural heritage.68 In this respect, local and regional governments in collaboration with their communities as well as with CHIs, can play a decisive role in creating a common 62 Mousavi and others (n 59), 74; Greg Richards, ‘Cultural Tourism: A review of recent research and trends’ (2018) 36 JTHM 12. 63 See Tonino Pencarelli, Linda Gabbianelli and Elisabetta Savelli, ‘The tourist experience in the digital era: the case of Italian millennials’ (2020) 38(3) SIJM 170, with relevant bibliography. 64 Navarrete provides an interesting and thorough definition of this new term: Navarrete, ‘Digital heritage tourism’ (n 48) 201, 202–03. 65 Chiara Di Meo, ‘A digital culture for a smart tourism’ (2017) IEEE Smart Cities Initiative – Trento white paper. 66 Elizabeth Booth, Jithendran Kokkranikal and Olga Burukina, ‘Russian Artistic Gymnastics as a Sports Tourism Product: Some Observations and a Research Agenda’ in Vicky Katsoni (ed), Cultural Tourism in a Digital Era. First International Conference IACuDiT (Springer 2015) 92. 67 Brian Smith and Matthias Ripp, Guidelines for Sustainable Cultural Tourism. A Unique Opportunity for Change Post Covid-19 (Organization of World Heritage Cities 2020) 2–4, with short definitions of both terms (sustainability and resilience). 68 Ibid, 1.

Management issues for cultural heritage institutions  425 vision that provides a more sustainable and resilient future for cultural tourism. A wide range of activities are currently taking place in this direction (e.g., virtual meetings, texts and online articles, reports, etc.), while an important number of recommendations, priorities, policies and guidelines have been derived from most of these initiatives in order to facilitate the creation of new paths and directions for cultural tourism, emphasizing resilience and sustainable development.69 Nevertheless, they are still rather descriptive and general and, thus, it is necessary to become more specific and analytical. 3.2

Audience Outreach

Audience development A strategic issue in the CHM of CHIs is the process of ‘audience development’.70 CHIs are asked to re-approach their relationship with their audiences by offering them a range of experiences and by making themselves open and accessible to all. There is an increasing need for CHIs to understand the motivation, interests, barriers and wants of existing or potential audience, to reach new audiences and to achieve greater visitor satisfaction.71 All these are more relevant during the COVID-19 and post-COVID-19 era. Audience development was the response to this need while CHIs have adopted this practice to place audience at the center of their activity.72 In this respect, an effective audience development is of paramount importance for any CHI to be able to respond to the challenges and possibilities of a new era. The success of audience development largely depends on the level of professionalism of organizations’ management as well as on the training and skills of the staff.73 As a result of the increasing significance of audience development for CHM in a global scale, a number of international organizations have dealt with this broad issue, offering a wide range of guidelines, tools and recommendations.74 Audience development requires the collaboration of many disciplines

69 See United Nations World Tourism Organization (UNWTO), UNWTO Inclusive Recovery Guide: Sociocultural Impacts of COVID-19 – Issue 2: Cultural Tourism (World Tourism Organization 2021) 3–6; UNESCO, Policy Brief: COVID-19 and Transforming Tourism (United Nations 2020) 4–5; Smith and Ripp (n 67). 70 For definitions of audience development see Christian Waltl, ‘Museums for visitors: Audience development – A crucial role for successful museum management strategies’ (2006). Retrieved from , 3; The Audience Agency, Creating an Effective Audience Development Plan. An introductory guide to Audience Development Planning from The Audience Agency (The Audience Agency 2020) 33. 71 John D. Carnwath and Alan S. Brown, Understanding the Value and Impacts of Cultural Experiences (Arts Council of England 2014); John Falk. ‘Museum Audiences: A Visitor-Centered Perspective’ (2016) 39 (3) Society and Leisure 357–370. 72 Iñigo Ayala, Macarena Cuenca-Amigo and Jaime Cuenca, ‘Examining the state of the art of audience development in museums and heritage organisations: a systematic literature review’ (2019) 35(3) MMC 306-07. 73 For the relevant bibliography, see ibid. 74 British Council, Transforming Future Museums: International Museum Academy Greece. Audience Development Toolkit (British Council 2017); Alessandro Bollo and others, Guide part I – Tools of Audience development: A practical guide for cultural operators. Study on Audience Development – How to place audiences at the centre of cultural organizations (Publications Office of the European Union 2017); The Audience Agency (n 70).

426  Research handbook on intellectual property and cultural heritage (museology, management, marketing, programming, communication, arts education, cultural policy, sociology or the leisure studies, etc.) and it is fueled by various theories.75 It is necessary for CHIs to set out an audience development plan.76 It includes programming, marketing and communications, and educational and environmental activities. An audience development plan sets the context for all these activities as well as informs a delivery plan. It requires the involvement, collaboration, and support of all relevant departments of museums and other cultural institutions or sites. Therefore, the plan must be clearly articulated and communicated consistently across the organization. The Audience Agency has recently published an introductory guide to audience development planning.77 Using digital and technological tools in audience development The implementation of new technologies and digital means has altered the structure of many CHIs, as well as had a great impact on the way they engage with their audiences and on the way audiences approach their culture and its context. However, a recent report of the Working Group of EU Member States’ Experts has pointed out that the majority of CHIs are not able to follow this evolution.78 It stresses the need for there “to be a recalibration within organisations and institutions”. The report also recognizes the multiple impact of the digital shift on audience development in terms of people (creators, curators and audience), products, production and services, promotion and distribution, payment and property, and processes.79 Literature stresses the need to clearly understand the target audience and their needs in order to effectively use new technologies and digital means.80 Technologies have altered audience behavior quickly and radically, and people are not passive recipients of the cultural offer. A major issue concerning the use of digital means by CHIs is related to communication.81 Literature highlights both the benefits and the limitations that social networks and websites present in relation to CH.82 As many studies point out, an increasing number of CHIs use social networks and websites with the intention: (a) to attract and engage more audiences, frequent visitors and non-visitors, virtual visitors, online communities, (b) to build loyalty with the existing audiences, and (c) to build sustainable relations around cultural heritage.83 In some cases they seek to pursue a specific audience, such as youth, and adjust to their needs so as to

75 Macarena Cuenca-Amigo and Jaime Cuenca Amigo. El desarrollo de audiencias en España. Reflexionesdes de la teoría y la práctica (Universidad de Deusto 2019). 76 For a definition of the audience development plan, see The Audience Agency (n 70), 33. 77 Ibid. 78 Working Group of EU Member States’ Experts (n 53). 79 Ibid 8–29. 80 See . 81 Ayala, Cuenca-Amigo and Cuenca (n 72), 13. 82 Christos Vassiliadis and Zoi-Charis Belenioti, ‘Museums & Cultural Heritage via Social Media: An Integrated Literature Review’ (2015) 12 (3) TOURISMOS 97–132; Devon Rose Turner, ‘How to get your museum out of a social media rut’ (Museumnext, 9 March 2020). accessed 25 July 2021. 83 B.J. Soren, and Canadian Heritage Information, ‘Best Practices in Creating Quality Online Experiences for Museum Users’ (2005) 20 (2) MMC 131–148; Panteleimon Marakos ‘Museums and Social Media: Modern Methods of Reaching a Wider Audience’ (2014) 14 (4) MAA 75–81; Neil Forbes and Antonella Fresa, ‘Museum education with digital technologies: participation and lifelong learning’ 06 Think Papers Collection 3–4.

Management issues for cultural heritage institutions  427 improve the transmission of the cultural message.84 Furthermore, technology has diverse and growing applications in the CHI ecosystem that can enhance the dissemination of content and user experience.85 An important theme in the literature constitutes the latest technologies being integrated in the CHI environment. Instead of inviting visitors to simply view the extremely valuable works in their collections and learn limited information about them, CHIs are recommended to offer them a special museum visiting experience based on the latest immersive technology. In this sense, visitors to CHIs will interact with and learn about these precious works.86 The most recent trends of cutting-edge technologies identified in the literature are: personalization/wearable devices, augmented reality/virtual reality/mixed reality, gesture technology/non-touch interactives, haptic technologies, Internet of Things (IoT) technology, mobile technologies, artificial intelligence, indoor GPS tracking systems, LED/laser projection technologies, virtual touring, holographic representations, flexible technology exhibit platforms, augmented reality selfie moments.87 Furthermore, gamification and games are increasingly used by CHIs to create more interactive and engaging experiences.88 A recent literature review has identified a growing focus on creating digital game add-ons to existing exhibitions and, at the same time, the lack of studies that emphasize the implementation of gamification into an exhibition design creating a holistic

84 Maria Kampouropoulou and others, ‘The Virtual Museum in Educational Practice’ (2013) 5 (4) Rev. Eur. Stud. 120–129. 85 For successful implementations of technology in the cultural sector see Manuel Charr, ‘How technology is bringing museums back to life’, (Museumnext, 17 June 2020) accessed 18 August 2021. 86 According to the ReInHerit (Horizon 2020) project: Technology-assisted immersive performances are produced when augmented reality or virtual reality or other technologies are used to create multisensory experiences for audience members. The physical world is merged with a digital or simulated reality during a live performance, which may use elements of music, video or spoken word. 87 For more see Eleni Alexandri and Antonia Tzanavara, ‘New technologies in the service of museum education’(2014) 12(2) WTE&TE 317–320; Davide Pantile and others, ‘New Technologies and Tools for Immersive and Engaging Visitor Experiences in Museums: The Evolution of the Visit-Actor in Next-Generation Storytelling, through Augmented and Virtual Reality, and Immersive 3D Projections’ in Kokou Yetongnon (ed), 12th International Conference on Signal-Image Technology & Internet-Based Systems (SITIS) (Conference Publishing Services 2016); Brendan Ciecko, ‘Museums are the best place to find innovation in AR’ (Venturebeat, 27 March 27 2018) accessed 19 July 2021; Florin Nechita and Catalina-Lonela Rezeanu, ‘Augmenting Museum Communication Services to Create Young Audiences’ (2019) 11 Sustainability 1–18; Timothy Mansfield and Peter Sollogub, ‘The Future of Technology in Museums’ (Cambridgeseven, 2021) accessed 19 July 2021. 88 For a state-of-the-art review until 2010 see Eike Falk Anderson and others, ‘Developing Serious Games for Cultural Heritage: A State-of-the-Art Review’ (2010) 14(4) Virtual Reality 1–34. For a more recent critical literature review see Kristina Maria Madsen, ‘The Gamified Museum – A critical literature review and discussion of gamification in museums’ in Thessa Jensen, Ole Ertløv Hansen and Claus Andreas Foss Rosenstand (eds), Gamescope: The potential for gamification in digital and analogue places (Aalborg Universitets forlag 2020). For gamification examples see Albertine Corre, ‘12 Gamification examples transforming the visitor experience in museums’ (Octalysis group, 9 April 2020) accessed 23 July 2021.

428  Research handbook on intellectual property and cultural heritage exhibition.89 Serious games approach is a current trend in the literature related to gamification focusing on education in the context of entertainment.90 Marshall correctly points out that if gamification is not pursued thoughtfully and with specific and clear goals, it risks being ineffective, resulting in a waste of organizations’ time and money.91 As Du notes, the current COVID-19 pandemic has changed the gamification usage in CHIs.92 He suggests that in the future, forms of online gamification will be more widely applied, while gamification will be combined more with technology, such as augmented reality and virtual reality, to create more immersive experiences. The use of technologies gives rise to several legal issues. Indicatively some of those issues are how digital technologies are protected (e.g., by patents, utility models, industrial design, copyright, etc.) and who is the owner of such protection. With cutting-edge technology, such as augmented or virtual reality or AI, not all issues have been set out with certainty or in detail, and laws fail to accommodate their needs or do not accommodate them adequately on many occasions. Who owns, for example, a painting produced based on AI?93 This means that CHIs should have detailed and clear-cut contracts with those engaged with such tasks (i.e., their creation/production/promotion). Also, when using social media or other platforms for promoting their applications or technical devices, CHIs should be aware both of the terms and conditions of the platforms as well as have specified their own terms and conditions of use. The use of TPMs and DRM is also an issue as well as trademarks and other logos for the promotion of games/videogames, tourist guides, apps, etc. These all are issues that should be dealt with under IP management. 3.3

Local Communities’ Engagement

Αn ever-increasing need for CHIs is the establishment of deep connection and relationship with their local communities.94 It is clear that community support is of vital importance for the survival of most CHIs. A growing number of CHIs are constantly looking for strategies and new ways to play crucial roles in the lives of their communities and establish themselves as a relevant and valuable asset to their communities.95 In many cases, these attempts are the product of collaboration between CHIs and the social and political agents involved.96 Many

Madsen (n 88). Oleg Konstantinov, Eugenia Kovatcheva and Natalia Palikova, ‘Gamification in cultural and historical heritage education’ in Proceedings of INTED2018 Conference 5–7 March 2018, Valencia, Spain (IATED 2018) 8445–8446. 91 Andrea Marshall, ‘How to Avoid the “Gamification” Trap in your Museum’ (Museum Next, 8 January 2020) accessed 15 July 2021. 92 Yuxin Du, ‘Implementing Gamification for Museum Engagement’ (Amt Lab, 20 May 2021) accessed 2 July 2021. 93 Andres Guadamuz, ‘Artificial intelligence and copyright’, WIPO Magazine, 5/2017 accessed 17 October 2021. 94 Rachel Mackay, ‘Keeping it local: how museums are connecting with communities post-lockdown’ (Blooloop, 11 May 2021) accessed 18 July 2021. 95 Ayala, Cuenca-Amigo and Cuenca (n 72), 7–8; Mackay (n 94). 96 For the relevant bibliography see Ayala, Cuenca-Amigo and Cuenca (n 72), 8. 89 90

Management issues for cultural heritage institutions  429 CHIs around the world have set community involvement action.97 Literature offers important guidelines and tools in order to facilitate them in planning and designing community engagement.98 The COVID-19 pandemic was a challenging period, particularly for local communities’ engagement with CHIs. Literature stresses the pressing need for CHIs to reconnect with local communities.99 During the COVID-19 pandemic, CHIs around the world have responded to the crisis with new, mainly digital, strategies of engagement with their local communities. They have stepped up during the pandemic to help address needs in their communities.100 A number of ideas and ways that CHIs can use to connect with their community are presented.101 The preliminary report of the Design and Creative Practice Platform (RMIT University, Australia) has identified three general categories of digital engagement:102 ● Virtual exhibitions, curatorial talks, viewing rooms, and tours of current collections, art fairs, and touring exhibits; ● Education and engagement through remote learning, including drawing and photography classes; ● Programming and events, often interactive and based on specialty or demographic (for example museums asking people to recreate paintings from their collection at home or visual diaries from artists who are working in isolation). 3.4

Social Inclusion

The impact of ‘social inclusion theory’ has become increasingly prominent in the field of CHM. The meanings of ‘social inclusion’ and its antithetic term ‘social exclusion’ are diverse

97 See Margeret Kadoyamma, Museums Involving Communities. Authentic Connections (Routledge 2018) 119–132. For an interesting example see the National Museum Wales: . 98 Ontario Museum Association (OMAAMO), Engaging your Community: A Toolkit for Museums. Toronto: Ontario Museum Association (Ontario Museum Association 2015); Kadoyamma (n 97), 120–124. 99 Elizabeth Crooke, ‘Communities, Change and the COVID-19 Crisis’ (2020) 18(3) Museum & Society 305–310; Mackay (n 94). 100 Alyson Krueger, ‘How Museums Are Reaching Out to Their Local Communities’ (NY Times, 21 May 2021) accessed 29 July 2021. 101 For more see Evans and van der Linden (n 55); International Council of Museums (ICOM), ‘How to reach – and engage – your public remotely’ (ICOM, 12 March 2020) accessed 15 July 2021; International Council of Museums (ICOM), Museums and COVID-19 Crisis 8 steps to support community resilience (ICOM, April–August, 2020). 102 Design and Creative Practice Platform, Digital Engagement Strategies in Cultural Sector During COVID-19 A Preliminary Report (RMIT University June 2020).

430  Research handbook on intellectual property and cultural heritage and broad.103 Many CHIs around the world have taken on the commitment to get involved with programs of social inclusion.104 However, there is still a lot of work that needs to be done. Minority and Indigenous peoples can have a sense of belonging if their culture is represented in CHI exhibitions or if they can be involved as parts of the staff. However, as Xanthaki has pointed out, there is a gap in the protection of the CH of minorities in the EU, despite the fact that the latter recognizes CH of minorities and their contribution.105 This is a result of the particular attention placed by the EU on the common EU culture rather than on the cultures of subnational groups. Furthermore, in recent decades, presenting and managing Indigenous CH in CHIs has become a global issue. In recent years Indigenous peoples have been actively involved as key stakeholders in the management of their tangible and intangible cultural heritage. Some studies dealt with the ways in which Indigenous people run museums following the so-called ‘decolonizing’ methodologies in order to serve their agendas and present their culture.106 Other studies focused on museums suggest that the representations of Indigenous peoples’ cultural heritage is only one task among many others.107 The former approach collaborations with Indigenous people as a decolonizing practice at these museums or a way to avoid many of the pitfalls associated with representing Indigenous cultures, while the latter consider these complex relationships as part of ethical museum practice, which treats Indigenous stakeholders and their culture respectfully taking into account their input. Carr-Locke introduced the concept of ‘Indigenous museology’ to describe “the management and subsequent presentation of Indigenous heritage in museums through an examination of the process of collaboration and the content of the resulting museum exhibits”.108 Finally, a major issue in the literature concerning social inclusion and CHIs revolves around the cultural accessibility of special needs groups (SNG). Although SNG contains many categories, most of the literature emphasizes the broad and diverse group of people with disabilities. Even today disability is not an integral part of many CHIs, and it is important to understand why this happens and how it can change.109 Another major issue is the enhancement of visitors with disabilities experience through active involvement in programming and interactive exhibits. More recently, important studies are dealing with how multisensory museum experiences

103 For an overview of the definitions of the terms ‘social inclusion’ and ‘social exclusion’ see Steven Davey and Sarah Gordon, ‘Definitions of social inclusion and social exclusion: the invisibility of mental illness and the social conditions of participation’ (2017) 10(2) Int. J. Cult. Ment. Health 1–3. 104 For an interesting example see the Museum Picasso . 105 Alexandra Xanthaki, ‘The Cultural Heritage of Minorities and Indigenous Peoples in the EU: Weaknesses or Opportunities?’ in Andrzej Jakubowski, Kristin Hausler, and Francesca Fiorentini (eds), Cultural Heritage in the European Union. A Critical Inquiry into Law and Policy (Brill | Nijhoff 2019). 106 See Amy Lonetree, Decolonizing Museums: Representing Native America in National and Tribal Museums (University of North Carolina Press 2012). 107 Sarah Elizabeth Carr-Locke, Indigenous Heritage and Public Museums: Exploring Collaboration and Exhibition in Canada and the United States (DPhil thesis, Simon Fraser University 2015). 108 Ιbid 5–6. 109 Steph Niciu, ‘Rethinking Disability – time for change within the Museum’ (Disability Arts, 13 March 2018) accessed 10 August 2021.

Management issues for cultural heritage institutions  431 prompted the re-evaluation of physical access to museums’ collections.110 Lisney et al. provide museums with a disabled person’s point of view, which could help in inspiring improvements for the future.111 The most recent literature is discussing threats posed by the COVID-19 pandemic to the experience of disabled people given the fact the current situation creates new barriers to access museums and other cultural institutions or sites. These studies call on CHIs to “identify the long-term positive and negative effects of the pandemic on the physical and digital museum experience of disabled visitors”, stressing the need to work hard in order to ensure that “new embodied and digital practices become long-term opportunities to enhance accessibility and inclusion, rather than another insurmountable barrier for disabled people”.112

4.

ENVIRONMENTAL CONCERNS AND CLIMATE CHANGE

4.1

Cultural Sector and Climate Change

Since 2016, there has been an ongoing global discussion concerning how the CH sector can contribute to the Paris Agreement building on six elements, i.e., education, training, public awareness, public access to information, public participation and international co-operation.113 Many scholars and professionals have supported the view that CHIs have a lot to offer to help humanity meet the challenge of climate change.114 As many studies highlight, CHIs became less neutral on issues related to environmental concerns and climate change only during the last decade.115 CHIs are now encouraged to play the key role of change-makers and leaders globally in order to better respond to the change that confronts the communities they serve. They are called not only to be relevant to the visitor and their interests, but also to be relevant

110 Constance Classen, The Museum of the Senses: Experiencing Art and Collections (Bloomsbury Publishing Plc. 2017); Rafie R. Cecilia, Inclusive visions: embodied practice and meaning making in the museum experience of blind and partially sighted visitors. (DPhil thesis, University College London 2021). 111 Lisney and others, ‘Museums and Technology: Being Inclusive Helps Accessibility for All’ (2013) 56(3) Curator 353–361. 112 Rafie R. Cecilia, ‘COVID-19 Pandemic: Threat or Opportunity for Blind and Partially Sighted Museum Visitors?’ (2021) 19(1) JCMS. 113 For the Paris Agreement see . 114 Sarah Sutton, ‘The Museum Sector and the Paris Agreement’ (AAM, 5 July 2017) accessed 5 July 2021; Henry McGhie, ‘Museums as key sites to accelerate climate change education, action, research and partnerships’ Non-party stakeholder submission to the Talanoa Dialogue from the ‘International Symposium on Climate Change and Museums’, Manchester (UK), April 2018; Henry McGhie, ‘How have museums been contributing to the Paris Agreement?’ (Curating Tomorrow, 1 September 2020) accessed 2 July 2021. 115 Robert R. Janes, ‘The End of Neutrality: A Modest Manifesto’ (2015) 135 ILR, 3–8; Julie Decker, ‘Climate of change’ (2020) 35 MMC; Sarah Sutton, ‘The evolving responsibility of museum work in the time of climate change’ (2020) MMC 7–8.

432  Research handbook on intellectual property and cultural heritage participants in the world.116 As has been suggested, “as climate change will impact everywhere and all aspects of life, all museums are relevant to climate change, and climate change is relevant to all museums”.117 It is important to become socially engaged spaces in their communities acting as agents of positive change. According to Decker, “this may be the last chance for museums to earn the trust of their audiences on the key issues of our day: climate, racial justice, systemic change”.118 The full range of CHI types across the world has an important role to play concerning climate action.119 The most recent literature suggests that sustainability and climate action practices can be integrated into various aspects of CHI work.120 The International Symposium on Museums and Climate Change held 10–13 April 2018 in Manchester (UK) brought to the forefront the need for the creation of networks of communication that facilitate CHIs to expand and refine their climate work.121 Workers in the CH sector are in need of support to build knowledge, confidence and networks.122 It is therefore important for CHIs to know ‘who’ and ‘how’ can help them to learn and move forward. A growing number of networks are strengthening CHI contributions towards climate change education and action: the Museums and Climate Change Network (Australia),123 the Coalition of Museums for Climate Justice (Canada),124 and We Are Still In (United States).125 4.2

Green CHIs

Energy management is of crucial importance in the CHM of CHIs, which should operate in a more ‘eco-conscious’ manner.126 Central to this discussion is the concept of ‘energy efficient’, ‘sustainable’ or ‘green’ CHIs.127 As pointed out, most existing CHI buildings are not energy efficient and therefore not sustainable.128 Due to their high performance standards and their 116 Steve Lyons and Kai Bosworth, ‘Museums in the Climate Emergency’ in Robert R. Janes and Richard Sandell (eds), Museum Activism (Routledge 2019) 177. 117 McGhie, ‘How have museums’ (n 114). 118 Decker (n 115). 119 Sutton, ‘The evolving responsibility’ (n 115) 1. 120 Janes (n 115); Sarah Sutton and others, ‘Museums and the Future of a Healthy World: “Just, Verdant and Peaceful”’ (2017) 60(2) Curator 151–175; Sutton, ‘The Museum Sector’ (n 114); Sarah Sutton, ‘Museums & Climate Change: A Global Response’ (AAM, 23 April 2018) accessed 12 July 2021; Sutton, ‘The evolving responsibility’ (n 115); Decker (n 115); Lauren Styx, ‘Museums and the art of environmental sustainability’ (Museum Next, 30 June 2020) accessed 2 July 2021. 121 For this conference see Sutton, ‘Museums & Climate Change’ (n 120). 122 For synergies with green policies, practices, and networks see Sarah S. Brophy and Elizabeth Wylie, The Green Museum: A primer on Environmental Practice (2nd edn, Altamira Press 2013). 123 See . 124 See . 125 See ; Sutton, ‘The evolving responsibility’ (n 115), 12. 126 Brophy and Wylie (n 122); Fatma Faheem and K. Abduraheem, ‘Energy Management in Museums: A New Approach to Implementing the Sustainable Development Goals’ (2021) 2(1) IARJET 46–49. 127 For a definition of green building, site and operations see Brophy and Wylie (n 122), chapter ‘What Makes Buildings, Sites, and Operations Green’. 128 Joyce Lee, ‘Energy Star Score for Museums: You can Manage what you Measure’ (Insight Blog, 6 October 2017) accessed 5 July 2021; Faheem and Abduraheem (n 126).

Management issues for cultural heritage institutions  433 architectural and structural features, they present high energy demands in heating, cooling, ventilation and lighting, while temperature and humidity must be strictly controlled.129 In the context of sustainable development and climate change measures, Faheem and Abduraheem suggest that improving the energy efficiency and sustainability of existing museums building should be a key priority.130 The current trend in the literature for the design and erection of new museum buildings is to find the balance between high-quality construction and low environmental impact.131 It is important for new cultural institutions to be able to combine material and processes to maximize efficiencies, resilience and savings (thermal control, light control, water management, etc.). These buildings (and their architectural plans) could even be copyright-protected and in certain cases they could also become the emblem for the CHI’s promotion, either de facto or through their protection by (industrial) designs or trademarks.132 CHIs are requested to adhere to environmental certification systems, such as Leadership in Energy and Environmental Design (LEED), BREEAM (Building Research Establishment Environmental Assessment Method), etc., to lower their impacts on the environment.133 According to the LEED project dataset, the number of museums around the world that have earned LEED green building certification or have registered to go green is growing.134

5.

NEW ‘BUSINESS’ MODELS AND FINANCING

The key question related to the CH sector is to clarify how business models can be successfully incorporated into CHIs. According to Schiuma et al., business model innovation and management for CHIs “aims to understand how to enhance and renew the way they operate and create value”.135 They also highlight that “although there is a need to inform cultural organizations about how to analyse, shape and renew their practices, there is a general lack of data around the cultural sector and specifically about the challenges and characteristics distinguishing the business models of cultural organizations”.136 CHIs present specific features and have specific needs. As Russo-Spena et al. point out, “the audience—both actual and potential—is more than just customers. Consequently, the companies providing cultural services are more than mere providers.”137 As such, there is a difficulty to simply transfer traditional business rules 129 Helmut F. Mueller, ‘Energy efficient museum buildings’ (2013) 49 Renew. Energy 232–236; Elena Lucchi, ‘Review of preventive conservation in museum buildings’ (2018) 29 J. Cult. Herit. 180–193. 130 Faheem and Abduraheem (n 126). 131 BK Sharanya and others, ‘Green and sustainable building practices for museums’ in International Conference on Sustainable Engineering and Technology Conference Proceedings (AIP Publishing 2018). See also Mueller (n 129). 132 To the extent that they fulfill the requirements provided by the law. 133 For recent examples of museums that have successfully lowered their impact on the environment see Sutton, ‘The evolving responsibility’ (n 115) 3. 134 Faheem and Abduraheem (n 126). 135 Giovanni Schiuma, Paul Bogen and Antonio Lerro, Creative Business Models: Insights into the business models of cultural centers in trans Europe halles (Trans Europe Halles 2016) 13. 136 Ιbid. 137 Tiziana Russo-Spena and others, ‘Digital Business Models’ in Tiziana Russo-Spena and Francesco Bifulco (eds), Digital Transformation in the Cultural Heritage Sector: Challenges to Marketing in the New Digital Era (Springer 2021) 62.

434  Research handbook on intellectual property and cultural heritage from the business sector to the CH sector. These rules must be adjusted to the features and needs of the CH sector to work in the same way and with the same implications and benefits. In recent years, the use of digital technologies is both a challenge and an opportunity for the CH sector while it changes business models.138 This trend towards the use of digital technologies has resulted in an impetus to invent new digital business models.139 Russo-Spena et al. propose a new framework based on seven pillars: ‘actors integration’, ‘content and users resources generation’, ‘experience proposition’, ‘personas and crowd actor’, ‘social customer relationship management’, ‘omnichannel strategy’, and ‘economic, social, and cultural outcomes’. They argued that the major change that digital transformation brought to CHIs was related to their transformation from the point of view of their social role. This framework highlights the crucial role of the relations and interactions between the CHIs and the plethora of actors in CH contexts that can contribute to multiple ways to create something valuable. What is crucial for CHIs is to find new forms of interaction by integrating sources of knowledge and resources (e.g., digital applications, software platforms, tools, and services) from key partners.140 At the same time, customers/audience/visitors play an important role in CHIs’ activities as contributors in highlighting new chances to set up value propositions and as content generators.141 Recently Eid has proposed the Museum Innovation Model, which is based on three concepts, i.e., open innovation, social enterprise, and social innovation.142 The concept of social enterprise can be understood as a hybrid business model that facilitates CHIs to tap into the advantages offered by business strategies to fulfill their social, cultural, or environmental mission. The recent COVID-19 pandemic and the subsequent lockdowns have challenged many aspects of museums’ established business models.143 In response to this emerging situation, they propose innovation and diversification of museum business models. According to Larkin and Burtenshaw, it is necessary for museums to “develop methods of creating experiences and products they can offer directly to the public, thus building dispersed supporter communities rather than solely relying on attracting visitors to a site”. They consider it as an opportunity for museums to “create compelling forms of engagement in light of the developing digital economy and changing modes of cultural consumption”. They propose the following strategies for the development of off-site revenue: sales of museum-related products, sales of digital content, stories and experiences, and build digital monetizable communities.144 These strategies that change museums’ established business models, of course, cannot replace the 138 Feng Li, ‘The digital transformation of business models in the creative industries: A holistic framework and emerging trends’ (2020) 92–93 Technovation 92–93. 139 See Luciana Lazzeretti and Andrea Sartori, ‘Digitisation of Cultural Heritage and Business Model Innovation: The Case of the Uffizi Gallery in Florence’ (2016) 14 Cap. Cult. 946–949. For a definition of ‘digital business model’ see Russo-Spena and others (n 137), 48. 140 Alexander Osterwalder and Yves Pigneur (2010). Business Model Generation: A Handbook for Visionaries, Game Changers, And Challengers (Wiley 2010). 141 Russo-Spena and others (n 137), 63. 142 Haitham Eid, ‘The Museum Innovation Model: A museum perspective on innovation’ in MW2016: Museums and the Web 2016 (MW 2016, published 14 January 2016, Consulted September 2, 2021) accessed 7 July 2021. 143 Jamie Larkin and Paul Burtenshaw, ‘Museums and New Business Models’ (ICOM, 31 March 2021) accessed 2 July 2021. 144 Ibid.

Management issues for cultural heritage institutions  435 importance of visiting museums but can facilitate the creation of meaningful digital experiences beyond their walls, attract new audiences and provide necessary resources for their sustainability, especially in times of crisis. Palmi’s and Madaro’s recent research on the effects of digitization on the business model of the MAXXI National Museum of Arts of the XXI Century in Rome shows that the extensive use of digital technologies during the COVID-19 pandemic revitalizes the museum by innovating its model.145 A final issue in the recent literature revolves around the relationship between museums, non-fungible tokens (NFTs),146 and blockchain technology.147 A major question is how museums can tap into some ideas related to NFTs without compromising their mission.148 NFTs are more than a simple way to make revenue. The recent NFT boom has made some CHIs align themselves with a new emerging reality.149 As Liddell argues, due to the special importance of museums in modern societies, “museum object NFTs are more than commodities to be bought and sold; they should offer more than simply monetary value”.150 It is true that NFTs are driving a new wave of mass interest in the CH sector, so it cannot be simply ignored by cultural professionals. The discussion is still ongoing and in the following years the effects of NFTs on business models will be important. However, NFTs could be harmful if one does not know how to properly apply them. NFTs set a number of IP issues. The most important, though, is whether an NFT grants the purchaser copyright. An NFT only grants the purchaser ownership of the specific copy or version of the work that the NFT represents and not to every copy or version of the underlying work. As Andres Guadamuz put it, an NFT is simply “a cryptographically signed receipt that

145 Pamela Palmi and Lorenzo Madaro, ‘Business model innovation through digitalization in cultural organizations: the case of MAXXI’ in ENCATC (ed), Congress Proceedings: Cultural management and policy in a postdigital world –navigating uncertainty (Tanja Johansson, Sibelius Academy 2020). 146 “A non-fungible token (NFT) is a unique and non-interchangeable unit of data stored on a digital ledger (blockchain). NFTs can be used to represent easily-reproducible items such as photos, videos, audio, and other types of digital files as unique items (analogous to a certificate of authenticity), and use blockchain technology to establish a verified and public proof of ownership. Copies of the original file are not restricted to the owner of the NFT, and can be copied and shared like any file. The lack of interchangeability (fungibility) distinguishes NFTs from blockchain cryptocurrencies, such as Bitcoin” . 147 For a definition of NFT see Frances Liddell, ‘What Makes a Museum Object NFT Valuable Beyond the Scope of the Technology?’ (Artnome, 5 May 2021). accessed 9 July 2021. For important issues concerning the relations between NFTs and CHIs see Sarah Cascone, ‘A Collective Made NFTs of Masterpieces Without Telling the Museums That Owned the Originals. Was It a Digital Art Heist or Fair Game?’ (News artnet, 22 March 2021). accessed 16 July 2021; Stepheer Fans, ‘NFTs and Museums: a match made in Blockchain heaven’ (Cointribune, 8 May 2021) accessed 18 July 2021; Frances Liddell, ‘“Disrupting the Art Museum Now!”: Responding to the NFT social experiment’ (Cultural Practice, 5 March 2021)

accessed 5 July 2021. 148 Brett Renfer and Hillary Cleary, ‘Making the Most of NFTs Without Pressing “Mint”’ (Museum Next, 28 May 2021) accessed 23 July 2021. 149 Fans (n 147). 150 Liddell, ‘What Makes a Museum Object NFT’ (n 147).

436  Research handbook on intellectual property and cultural heritage you own a unique version of a work”.151 In addition, the smart contract which governs an NFT could specify how proprietary rights, including copyright, are transferred upon sale of the NFT. The other side of the coin is that by minting an NFT, one may misrepresent that one is the author or copyright owner of the work. This is especially due to the anonymity features of the blockchain, which make it difficult to verify who is the creator or rightful owner of copyright in the underlying work of an NFT.152

6.

MARKETING AND BRANDING

CHIs have recognized the importance of adopting different communication and marketing techniques in order to stand out in an overcrowded market. Marketing and strategic communication is nowadays used by the majority of CHIs as tools to investigate and understand the market, to produce and promote their products and services suitable for those communities surrounding the museum, and to reach their target audience. In this context, branding techniques can be used by CHIs as a relationship-building tool. Museum branding is a new trend in the literature related to the CH sector and it is still in its infancy. A number of researchers identify cultural branding as a need for CHIs in order to redefine their social role in the 21st century.153 As Kotler et al. point out, there is a connection of a brand with identity and image.154 A brand is what a museum projects as its identity, while its image is how the audience actually reacts to what is projected. As they argue, brand management intends to bridge the gap between brand identity and image. Brand is more than a logo and means how people perceive an institution.155 Wallace states that branding a museum with

151 Lynne Lewis, Jane Owen, Hamish Fraser, Rohit Dighe, Non-fungible tokens (NFTs) and copyright law (June 2021), accessed 18 October 2021, where it is also mentioned that “NFTs could completely democratise industries such as art […]”. “Many commentators have also expressed concerns over the environmental harm caused by NFTs as well as the technical risk of link pertinence, whereby an NFT links to an off-chain digital asset that no longer exists.” 152 Guadamuz, Andres, The Treachery of Images: Non-fungible Tokens and Copyright (August 15, 2021). Available at SSRN: or . Okonkwo, Ifeanyi E. and Okonkwo, Ifeanyi E., NFT, Copyright; and Intellectual Property Commercialisation (May 29, 2021). Available at SSRN: or . 153 Neil G. Kotler, Philip Kotler and Wendy I. Kotler, Museum marketing and strategy: designing missions, building audiences, generating revenue and resources (2nd edn, Jossey-Bass Publishers 2008); Christos Vassiliadis and Zoi-Charis Belenioti, ‘Branding in the New Museum Era’ in Androniki Kavoura, Damianos P. Sakas and Petros Tomaras (eds), Strategic Innovative Marketing 4th IC-SIM, Mykonos, Greece 2015 (Springer 2017); Joy Chih-Ning Hsin, Museum branding: Redefining museums for the 21st century. Selected papers from the ICOMMPR 2014 conference, National Museum of Natural Science, Taichung. ICOM International Committee for Marketing and Public Relations (MPR) (Chinese Association of Museums 2015) ‘Forward’; Jim Richardson, ‘How to Create a great Museum Brand Identity?’ (Museum Next, 30 August 2019). accessed 4 July 2021. 154 Kotler and others (n 153). 155 Charlotte Coates, ‘Museum Branding that Stands out from the Crowd’ (Museum Next, 1 May 2021) accessed 25 July 2021.

Management issues for cultural heritage institutions  437 the identification of its mission, continues with the development of a personality to include a museum’s distinctive style of talking, and of interpreting, and of collecting, and “becomes truly effective when all the museum’s constituents hold the same indelible image of the institution”.156 Scheff-Bernstein recognizes branding as a broad organizing principle, while he points out that brand carries meaning and associations that tap into emotions.157 However, as Brynes notes, “the way an organization markets itself and establishes a brand still depends a great deal on how the marketing is viewed from within the organization”.158 We could also add that branding also creates a ‘label’ under which staff develop a feeling of belonging to the CHI, which bears certain values, and which makes the institution recognizable on the basis of its brand. In other words, branding contributes towards enhancing the benefits of affiliation between the institution and its staff and other stakeholders linked to it (e.g., friends of the museum) and makes them proud of their mission, values and aims, as reflected in the brand and the image surrounding it. If this linkage is worked upon properly within the institution, these people are more inclined to keep up the good work and correspond to their mission and goal, as also dictated by the image. Their loyalty is enhanced. They acquire an incentive to keep this image up and, as businesses invest in their image and brands, in the same sense institutions may invest in their missions and goals and into making them successful and visible to the outer world. The brand and image themselves may in this sense contribute towards maintaining and enhancing audiences.159 It is worth noting that some CHIs have been directly associated with specific cities or broader regions acting as important ‘landmarks’. Some examples are the Acropolis Museum in Athens (Greece), the Prado Museum160 (i.e., the main Spanish national art museum located in Madrid), and the archaeological site of Olympia in the region of Ilia (Greece). The creation of a powerful brand can contribute to the enhancement of the direct association with a city or a broader region in such a way that cultural heritage institutions and sites become cultural attraction. In other words, cultural heritage institution and site brands contribute to the city, town, or broader area brand image in terms of perception.161 They add value in terms of the status and visibility of a city, town or broader area and they boost the economic development through cultural tourism. In addition, CHI brands can have great impact on the pride of local citizens, changing their mentality towards their city or region. An example is the Museum of Ancient Eleutherna in Crete, which is one of the very few in Greece exclusively focusing on a single archaeological site.162 156 Margot A. Wallace, Museum Branding: How to Create and Maintain Image, Loyalty, and Support (1st edn, Rowman and Littlefield Publishers, Inc 2006) 1. 157 Joanne Scheff-Bernstein, Arts marketing insights.The Dynamics of Building and Retaining Performing Arts Audiences (John Wiley & Sons, Inc. 2007) 193. 158 William J. Brynes, Management and the Arts (4th edn, Focal Press 2009) 374. 159 Irini Stamatoudi, Presentation at the National Workshop on IP in Tourism and Cultural Management Promotion: IP Management in Museums in Egypt organized by the World Intellectual Property Organization (WIPO) and the National Museum of Egyptian Civilization (NMEC) in collaboration with the Ministry of Foreign Affairs of the Arab Republic of Egypt, Cairo, Egypt, 17–19 March 2019. 160 Known as Museo Nacional del Prado. 161 For more see Carmen Ruiz, ‘The importance of branding museums and how museums contribute to a city brand’ (ISSUU, 1 September 2009). accessed 12 July 2021, 96–97. 162 See .

438  Research handbook on intellectual property and cultural heritage Many researchers argue the contribution of segmentation to successful museum branding and marketing.163 It is, therefore, important for a CHI to communicate its brand accurately and specifically to target segments, building relationships with them. Literature also presents some important steps towards effective museum branding.164 Collaboration between museum managers and external experts is crucial in managing the museum branding process.165 Marketing and branding also set a number of IP issues (discussed in Chapter 23). The main ones being that (a) a CHI needs to ensure that it either owns all the IP rights in the works and materials used for marketing, branding, and promotion, or possesses the necessary licenses for doing so in all media and for all platforms as well as that the licenses it acquires provide for guarantees that third parties’ rights are not infringed,166 (b) set up a policy (which, in fact, will be part of the CHI’s general IP policy) as to how its trademarks and logos are to be used by third parties and state this policy clearly on the materials as well as the sites where these materials appear, (c) acknowledge the creators of the copyright materials according to the moral rights provisions in your law and provide for the necessary credit lines, and (d) provide for terms and conditions and legal notices as well as the name and contact details of a person that will be responsible for dealing with issues of IP infringement and act expeditiously if it is to remove material that may be infringing in any manner or form.

7. CONCLUSIONS A series of parameters, such as the involvement of various stakeholders and agents in the sector, the major opportunities offered by the technological advances, the effects of regional or global crises (financial, political, military, health, social, environmental, etc.) and the considerable cuts of private or public funding and support for CHIs, has altered important issues in the management of CH. In recent years the entire CH sector has found itself in the challenging position of exploring new ways of management to reposition itself more strongly and visibly within the constantly changing world. In the following years, the CH sector and CHIs have the opportunity to play a pivotal role in building a sustainable ground for the wellbeing of humanity. CHM, as a growing sector, is the main vehicle for facilitating CHIs to recognize their role in society, to work together with the communities, to exchange experience, to promote solidarity, to contribute to the world’s social and economic recovery, to provide inspiration for the future, and to demonstrate their full potential as agents of positive change. Based on the fundamental concepts of sustainability, inclusion, resilience, innovation, and relevance, CHM should offer the policy framework to make CHIs ready for playing the role of positive change-makers and leaders globally to better respond to the changes that confront the communities they serve. The themes discussed in the context of this chapter represent the basis upon which a model of sustainable CHM can be established. 163 Christos Vassiliadis and Thomas Fotiadis, ‘Multiple museum construct motivators: A multivariable analysis with repertory grid analysis (RGA) approach’ (2008) 3(1) TOURISMOS 12–35. See also Ruiz (n 161), 52–61. 164 Richardson (n 153); See also ; . 165 Ruiz (n 161), 93. 166 Contracts with employees and freelance creators and producers should be drafted in detail concerning IP rights and ownership.

23. IP management for cultural heritage institutions Rina Elster Pantalony

Intellectual property experts have long advocated for the assessment of rights as part of the collections management process in cultural heritage institutions (Pantalony 2013, pp. 22–33). To intellectual property experts, it made sense that institutions would wish to know more about how to carry out their mission-driven activities lawfully. The primary purpose, it was argued, for the assessment of rights and interests associated with materials and objects in collections was to ascertain the degree of risk and to ensure that institutions act lawfully when working with collections and providing access to them. This preoccupation, particularly at the turn of the 21st century, was based on the introduction of institutional mass digitization efforts where the overall purpose or magnitude of digitization was not fully understood. Digitization was associated with access to collections, but the purpose of access, the means of access, and the interplay with intellectual property interests and risk remained unclear. Cultural heritage institutions would experiment in the online environment, hosting virtual exhibitions and would consider these exhibitions as research and outreach mandates. As technology developed, cultural heritage institutions continued their research and development, engaging in social media, with some mixed results (Pantalony 2019, pp. 271–288). Intellectual property experts began to play a more prominent role in collections management, with the call for both the legal and practical assessments of risk in digitizing collections with the purpose of making them available online for discovery purposes or even downloadable where risk and rights assessments might permit.1 It was not until digitization efforts of cultural heritage institutions, such as libraries, archives, museums and other historic societies and foundations, reached a robust critical mass did historians, curators, and researchers understand more fully the power of providing access to digitized collections for research and discovery purposes.2 Open-access policies, introduced by a growing number of cultural heritage institutions,3 wishing to share their collections online for research, discovery and other uses, whether commercial or non-commercial as risks permitted, accelerated the process even further. And now, with the onset of climate change having a profound impact on collections and the institutions responsible for their stewardship, coupled with Covid-19 imposing physical limits on access to collections, the purpose of digitization, and indeed, the opportunities afforded by digitization, have crystalized at hyperbolic speed.

1 In fact, certain museums and libraries have long introduced copyright assessments as part of their collections management and cataloging processes, such as the J. Paul Getty Museum. 2 An example of the power of digitization of materials found in collections is reported by New York Times reporter Elain Sciolino in her article ‘The Louvre’s Art Sleuth is on the Hunt for Looted Paintings‘ (2021, July 16), New York Times. 3 For example, the Metropolitan Museum of Art introduced an open-access policy concerning the objects inventoried in their collections (Metropolitan Museum of Art, (2021) Open Access Policy).

439

440  Research handbook on intellectual property and cultural heritage The notion of the ‘access copy’ has been a preservation mainstay, protecting fragile objects and materials from deterioration due to repeated handling. The concept of ‘future-proofing’ collections (Raju 2021, p. 5) against climate change disasters is a relatively recent form of preservation and involves the digitization and distribution of objects and materials held in collections. Climate change has broadened and heightened the need for robust preventative disaster planning that includes detailed documentation of collections and the making of copies of objects and materials in collections including research output, whether published or unpublished, associated with collections, in the event that original objects and materials found in collections might be lost or damaged by fire or flood.4 In addition, due to the experience of the Covid-19 pandemic, patrons, researchers and audiences expect to access collections in a hybrid world, where the online space is an extension of, and sometimes a substitution for, physical access. How do cultural heritage institutions meet the challenges of preservation and the expectations of their patrons while at the same time mitigating risk by respecting and managing intellectual property rights? What objects and materials can cultural heritage institutions share with their online patrons and researchers and for what purposes, particularly if they’ve enacted open-access policies? How can they provide remote access for research purposes while remaining onside not only intellectual property laws, but contractual obligations found in acquisition instruments, limitations posed by privacy laws, confidentiality issues, and cultural sensitivities that may be considered forms of collective intellectual property rights of traditional cultures? Preservation and access activities, as defined by the experiences of the last 20 years and, in particular, by the last 5, are dependent upon the knowledge and assessment of rights and interests in the materials and objects of collections. Rights can no longer be viewed as a barrier, but instead, as a tool that unlocks the capacity of the cultural heritage institution to deliver upon its most fundamental mission-driven activities. Cultural heritage institutions must, therefore, develop the capability and harness knowledge about rights for the purpose of acting with confidence and conviction when preserving and providing access to collections. Rights assessments, if carried out consistently, and documented as part of or interoperable with a collections management system, are quickly becoming a necessary facet of processing collections to meet these 21st-century challenges. By rights assessment, it is meant that a cultural heritage institution collects rights data about objects and materials in a collection, captures the data in a system and generates metadata to communicate what is known about rights and interests associated with the materials and objects in the collection. Much of the metadata sits with the internal records of the institution. In this way, professionals working in cultural heritage institutions will hold the knowledge about what rights they may hold, what limitations they face, what rights they may require and what risks they face when preserving and future-proofing their collections, and serving patrons, researchers and audiences as robustly as possible. If, for example, an institution runs a rights assessment upon the materials and objects in a collection, digitized reproductions of materials and objects where rights have expired and other limitations are not present, may be released online and publicly with little or no risk. For 4 See for example the Performing Arts Readiness Program, a program developed with funding from the Andrew J. Mellon Foundation in response to severe flooding through the United States damaging the archival collections of perming arts organizations to ensure that preventative measures are developed and implemented to preserve collections.

IP management for cultural heritage institutions  441 those cultural heritage institutions who wish to commit to open-access policies, this exercise is particularly relevant. This chapter seeks to examine the complexities of building and implementing a rights and access data system that works in tandem with collections management already existent in cultural heritage institutions. It requires specific skillsets and capability in-house, that is, a profound understanding of rights, including copyright, privacy, publicity, confidentiality, contractual rights and obligations relating to the materials and objects found in the collections. It also requires that professionals and administrators comprehend the risk tolerance levels of their respective institutions, implement contemporary and fast-changing approaches to the management of rights institutionally and apply these principles and their own guidelines consistently and with confidence. In short, 21st-century preservation practices and patron expectations concerning access to collections now require cultural heritage professionals to treat rights as inherent to collections management. Finally, this chapter is inherently descriptive. It does not provide legal analysis of risk but instead examines how to operationalize and implement responsible stewardship practices in a cultural heritage institution engaged in intellectual property management relevant to 21st-century preservation and access practices. This chapter will assess and describe the steps necessary to create and implement a rights data system, including taxonomies, fields of information based on copyright and other types of rights and interests, the use of standardized rights metadata, special considerations, and assessing risks in building the institutional capability and capacity to undertake and sustain the job.

1.

PRELIMINARY CONSIDERATIONS

1.1

Object-Based vs. Archival or Distinctive Collections

There has long been a tradition in certain types of cultural heritage institutions, particularly those that steward object-based collections, to carry out some form of rights assessment. Assessments were often carried out on an ‘as needed’ basis, depending on needs connected to reproduction, patron demands, publisher or researcher requests, loan of either the original or a reproduction for exhibition purposes, exhibition or preservation needs. Records of the assessments were often held by various units of the institution, whether in the archival or administrative files connected to collections, in the unit responsible for publishing, or in units responsible for exhibitions or photographic reproductions of objects and materials in the collection. Certain institutions began to centralize rights information and held the information in card catalog format in photographic and reproductions departments, especially those institutions that managed rights-heavy collections, such as modern art.5 As early as 2002, rights experts working with institutions managing object-based collections advocated for some form of consistent approach to rights assessment and inventory where information about rights would be centralized in some way and cataloged consistently, and spreadsheets were most often used to track rights, a system that is still in use. Maria Pallante, then Director of 5 Mikki Carpenter, Director of Photographic Services and Permissions centralized vital rights information in her unit in card catalog format while at the Museum of Modern Art, New York during the 1980s and 1990s.

442  Research handbook on intellectual property and cultural heritage Licensing for the Guggenheim Museums, created and made publicly available an inventory assessment checklist for licensing and rights that provided a road map to identifying where rights information might be found within institutions, what forms and types of intellectual property to identify in the inventory process, and who on staff could contribute towards the rights data cataloging and the development of guidelines supporting rights inventory and assessments (Pallante-Hyun [2002] 2013, p. 25). According to Pallante’s checklist, it became apparent during the course of her work with the Guggenheim Museums that any member of staff benefitting from rights information could have data to contribute to the inventory process. It is therefore important that institutions examine their own workflows and activities that generate rights assessments to identify where exactly rights information may be found in the administration of the institution or the management of collections, and who is responsible for these activities, prior to initiating the inventory process. During the same period, other art and history museums, consistent with the development of and introduction of contemporary collections management systems, experimented with the introduction of a basic field of information about the copyright status of objects cataloged in their inventories. An initial field of information was introduced as part of the metadata for an object in a collection concerning its copyright status, essentially creating the first known metadata statements about rights held in institutional records.6 While it is true that library marc records have long had a field to identify rights status, it is only relevant for published literary materials held in collections and is not considered a standard in rights documentation.7 Over time it became apparent that object-based collections lent themselves well to rights assessments, and it is no accident that museums introduced rights status statements into their records far earlier than archives or libraries. Museums will catalog collections at the object level and rights are assessed against the object being cataloged. However, institutions that hold archival and rare collections that represent a spectrum of genres of works, both published and unpublished, including many 20th-century formats such as recordings and audiovisual materials, will catalog at the folder and sometimes at the box level. Consider a folder of correspondence found in an archival collection. Archivists will catalog the folder or the box in which the folder sits. However, the copyright-protected work is in fact a single form of correspondence that sits in the folder. This issue becomes more pronounced when archival collections are cataloged at the collection or fond level. One of the greatest challenges that remains is how to reconcile the need to catalog rights on a work in copyright, for example, when that work itself is not cataloged per se. It impacts greatly when and for what purpose rights may be cataloged in archival collections because it may not be possible to assess rights on a ‘work in copyright’ until the copyright-protected work is the subject of reproduction, display or distribution.

6 For example, the J. Paul Getty Museum introduced rights metadata statements into their inventories in 2002. Records may be viewed in their online inventories. (J. Paul Getty Museum, (2021) Sample Record). 7 As can be reviewed in the description of Library of Congress Marc Records, a field for copyright is present complete with instructions for use. Other information management systems, developed in concert with the Library of Congress, such as ‘Premis’, also considered fields of information associated with rights documentation but to date is not used as a widely adopted standard (Coyle 2006).

IP management for cultural heritage institutions  443 1.2

Descriptive Taxonomies vs. Rights Taxonomies

Rights taxonomies, that is, how rights information is captured and then communicated with consistent meaning, were developed independently from the descriptive taxonomies developed by cultural heritage professionals for new formats or genres of materials that do not necessarily lend themselves well to rights assessments. Rights taxonomies are a recent phenomenon, while librarians and archivists have been using descriptive taxonomies for new genres or formats for objects and materials found in their collections for some time. For example, archivists and librarians often refer to certain materials as ‘time-based media’ or ‘born-digital materials’.8 A hard drive that forms part of a collection may be cataloged as an object and categorized as born-digital material. Descriptive metadata is subsequently created to catalog the hard drive as part of a collection using descriptive taxonomy. Clearly, rights cannot be cataloged as part of the record describing the hard drive nor against a hard drive as an object unless reference is made to the content saved on the drive and only where all the content on the drive constitutes one copyright-protected work. This is hardly ever the case. Similarly, the term ‘time-based media’ does not resonate in copyright law. Terms more commonly found in copyright statutes refer, instead, to cinematographic works, film, audio-visual works, recordings and other terms with statutory, regulatory or case law guidance to further define meaning. It is therefore difficult to ascertain what is actually meant by ‘time-based media’ and therefore difficult to subsequently assess rights based on the descriptive metadata found in the records. In contrast, rights taxonomies and standardized rights status statements for objects and materials in collections were not developed until 2016. Until then, there were no standards to convey rights status information. The challenges in developing standardized rights status statements arise from copyright law still being very much jurisdiction dependent, regardless of the international treaties setting general standards of copyright protection. Even within jurisdictions there were long held debates about how to communicate copyright status. For example, the Digital Public Library of America introduced a mandatory field of copyright status for materials uploaded by its members to its publicly accessible inventory only to find that their members produced thousands of variations in a free-text field. For this reason, the Digital Public Library of America, working in tandem with Europeana and Creative Commons, developed standardized rights status statements for cultural heritage objects and materials held in collections, complete with standard descriptions that will remain constant through the use of digital object identifiers. These rights statements go beyond simply identifying works protected by copyright but also identify where certain permissions have been obtained to allow patrons, third parties and researchers to reproduce or download digital reproductions for subsequent identifiable uses. These rights status statements are now entered as rights metadata into the records of cultural heritage institutions, not only on the Digital Public Library of America site but by thousands of cultural heritage institutions globally online and displayed with digital reproductions to inform the public about what they know to be the rights status of material represented as part of their collections (Digital Public Library of America 2016).9

8 See, for example, the preliminary taxonomy assessment where rights taxonomies are mapped against descriptive taxonomies at Columbia University Libraries (De Armond et al. 2019, p. 58). 9 RightsStatements.org announced the launch of the standardized metadata for cultural heritage institutions managing collections, which has now become the prevailing standard for rights status statements of objects and materials in collections.

444  Research handbook on intellectual property and cultural heritage There are clear preliminary lessons to be learned from these experiences for cultural heritage institutions embarking upon rights assessments. First, an institution may hold both object-based and archival or distinctive collections. While it is not suggested that rights assessments should change how collections are processed or described, it may very well be that descriptive records and the metadata contained therein may not be employed in cataloging rights. This means that while a rights data system has to be interoperable with the collection inventories of a cultural heritage institution, it may be that the existing records themselves cannot form the basis of a rights data system. Instead, the rights data system should operate in tandem, that is, linked with the collections management system, so as to allow fields of information in rights to be entered independently from those used in the development of descriptive metadata. Finally, consider using existing rights metadata standards, where they are already developed and in use to ensure that rights information is conveyed consistently with far fewer questions about their meaning over time. Because rights taxonomies are still in their infancy, apart from rights status statements as founded by Rightsstatements.org, consider creating a legend to ensure that whatever rights data is entered into fields of information in an institution’s system, it is done so consistently and with particular meaning for the institution whose collection is being cataloged for rights.

2.

FIELDS OF INFORMATION AND UNDERLYING RIGHTS

Rights assessments do not only record that an object or materials are still in copyright, but to be useful over time, the data that leads to the assessment needs to be captured as well. For example, it can be that at the time the collection is being processed and cataloged, it is ascertained that the objects or materials are still ‘in copyright’. It will be important to also determine, at a minimum, their date of creation, the author and, if no longer living, the author’s date of death to ascertain when copyright on the object or materials expire so that they fall into the public domain. This is especially important to cultural heritage institutions committed to making their collections discoverable online and, in jurisdictions with limited preservation exceptions, it enables facile contemporary preservation practices, including the future-proofing of these collections. During the copyright term, other vital data may facilitate management of the materials, such as the copyright owner and their contractual information in the event that permissions are needed to carry out programmatic activities. Finally, if certain licenses are obtained, the data supporting vital license information may be entered to provide institutional staff with an understanding of the rights and obligations found in the license and whether and when the license might require renewal. No matter how detailed or simple a system may be in the identification of the fields of information necessary to catalog rights, at a minimum, the general characteristics should include those fields that capture institutional knowledge about copyright status, including whether a work is created domestically or in a foreign jurisdiction, fields that track existing licenses and permissions for which rights in copyright law and their duration, if not for the lifetime of copyright protection.10

Based on research undertaken by Columbia University Libraries 2016–2020.

10

IP management for cultural heritage institutions  445 Fields of information become more complex depending on the complexity and the genre of works identified in the collection. After much analysis and research at Columbia University Libraries in developing the prototype of a rights and access data system, it was determined that fields of information needed to be developed for each genre of work identified in the collection. Therefore, fields of information were customized for literary works, photographs, three- and two-dimensional artworks, music and audio recordings (including oral histories), film, video and online or digital media (such as online exhibitions, online workshop materials and courses, and online and social media content). Apart from the fields of information already mentioned above, there were consistent fields in each and very much dependent on US copyright law, such as whether the materials or objects had been ‘published’. Other questions arose, such as the degree to which the system could or should auto-populate fields. Initial research in 2017 suggested that a degree of auto-population could be introduced to, for example, release reproductions and materials publicly online. After much debate and consultation, it was determined that in order to manage risk, it was best to start with a system that was scalable but, in its first iteration, create a system that required the human assessment of the data. The only true auto-like features that have been recommended11 are to embed a reminder system to either require period review of rights data (after, for example, several years to ensure that the data is up to date) or to flag objects and materials whose copyright has expired, based on date of expiration entered into the system, so as to allow a staff member to make the decision to release digital reproductions to the public online. Curatorial and archival staff, very knowledgeable about collections, also wanted a rights system that cataloged contractual limitations agreed to either at acquisition or identified over time by staff working with collections. Curatorial and archival staff also wanted a system that identified objects and materials that may be subject to particular cultural sensitivities (categorized in some jurisdictions as collective traditional community rights). For these reasons, a vast and thorough review of collections was undertaken to try to ascertain the general categories of contractual limitations impacting preservation and access to collections. The categories were aggregated into a drop-down menu and, for idiosyncratic circumstances, a free-text field was also added to the system. In this way, the system grew to be more than a rights data system about copyright but, instead, into a system that allowed staff to broadly access opportunities and limitations based on data and standardized fields. Copyright became one of several factors impacting access. Finally, curatorial staff wanted a system that allowed rights data to be added over time. In other words, rights cataloging should not be subject only to the data known at the time of initial assessment but instead, when more data is obtained over time or when permissions are granted during the course of working with collections, data concerning these permissions may be added to the records. Finally, rights assessments on works that are copyright-protected but are inherently not complex from a rights perspective are far easier to assess because only one rights layer is present. For example, a painting is created by one artist and represents one work in copyright. What happens when objects or materials assessed for rights are far more complex that include multiple layers of copyright-protected works, such as musical recordings or audio-visual works? The technically correct answer from a rights perspective is that all layers of rights require assessment to fully understand the degree of risk when working with materials 11 As recommended by consultants reviewing the beta system created by Columbia University Libraries in 2020.

446  Research handbook on intellectual property and cultural heritage subject to complex rights. As developed for the curriculum of the Moving Image Archive Preservation Program at New York University’s Tisch School of the Arts and subsequently published, fields of information can be created on a spreadsheet to document the underlying rights present in television programming. (Pantalony 2013, pp. 22–24). The spreadsheet was in fact put to the test by graduate students in the program, who were required, as part of their field research, to enter the archives of WNET Channel Thirteen, the New York affiliate of the Public Broadcasting Service, to carry out rights assessments of past programming that ultimately assisted the network in making its older programming available once more to the public as streamed content off their website.12 From a practical perspective, this degree of detail is also required where materials and objects in collections are being considered for streaming purposes, for example, or where they will be communicated to the public otherwise, such as in an exhibition open to the public. The issues faced by professional staff cataloging rights within a cultural heritage organization is that many of the legal instruments, production agreements and contracts documenting the flow of rights in the production of complex media, such as television programming, are not available as part of the supporting documentation. It is most often the case that a master film enters a collection as simply that, a can of film. It requires remarkable tenacity and dedication to try to understand the flow of rights and, even if the producer of the film is known and confirms to hold the rights to the film, the company or individual most often licensed the underlying works (often music or a script) for the production and limited distribution of the film itself. The rights licensed by the producer will not often extend to allow for the reproduction, translation, or distribution of the film by a cultural heritage institution now holding the master. The question, however, for cultural heritage institutions becomes one of priority. Rights data systems can be created to support infinite rights assessments and sub-rights assessments on objects or materials in collections, but what of the cost–benefit analysis? Should this be the standard for all audio-visual or audio recordings? Does the cultural heritage institution have the capability and capacity to assess for underlying rights, which can take an enormous amount of effort and time? Should the system, instead, be scalable to support sub-rights analysis but that sub-rights analysis take place only on objects and materials on an ‘as needed’ basis as, for example, where the film is included as part of a public exhibition or screening? For cultural heritage institutions that hold significant film archives and are building programming surrounding the archives, it is recommended that rights experts working with curatorial staff work as a team to assess opportunities afforded both by the breadth and scope of collections, the law, workflows, budget and capacity to create programming. Complex and layered rights assessments will be necessary to understand the true degree of risk in working with audio-visual materials, examining all works, underlying works, rights, and rightsholders. For those rights assessments undertaken for this purpose, it is highly recommended that a rights data system be sufficiently robust to scale up to capture the data in assessing and then clearing all the rights necessary to carry out film programming so that the knowledge and effort is not lost over time. At a minimum, a free-text field should also allow for the ability to upload

12 Moving Image Archive Preservation Program, New York University introduced mandatory copyright courses at the graduate level in 2004, and in 2007 broadened requirements to include a four-credit copyright course that included field research working with archival television programming at Channel Thirteen WNET.

IP management for cultural heritage institutions  447 copies of permissions in digital formats so that they are not forgotten, an unfortunate but all too common problem. As an example, below are sample fields of information determined necessary for the cataloging of rights associated with photographic materials and artworks created as a prototype by Columbia University Libraries, and in keeping with US law: Rights Metadata Fields of Information for Artwork, Photographs and Sculpture I.

ID of Work Subject to Copyright

Descriptive metadata record: Drop-down menu:

II.

Artwork Photograph Sculpture

Characteristics of Work

Artist Name: Date of Creation: Date of Death: Country where created: Work published: yes/no Name and contact info of publisher: Date of publication: III. Copyright Status, Owner and Duration Copyright Status: [rightsstatements.org standards] Copyright Owner (if different from artist): Heirs of Copyright Owner: Contact information for Copyright Owner or Heirs: Copyright Registered: yes/no Copyright Renewed: yes/no Date of Renewal: Copyright Expiration Date: IV. Copyright Transfer to University? If created pre-1978 (pick one) a. Written transfer document b. Evidence of transfer

448  Research handbook on intellectual property and cultural heritage c. No transfer If created post-1978 (pick one) a. Written transfer document b. Written proof of specific terms of transfer c. No transfer Date of Transfer: Termination date of transfer, if any: Restrictions on Transfer: yes/no If yes Rights Restricted – check as many as required Reproduction Distribution Derivative Works Public Display Right of first publication V. Copyright License to University – only relevant where no transfer of copyright Date of License: Termination date of license: Rights and limitations licensed [drop-down menu]: Reproduction Distribution Derivative Works Public Display Right of first publication VI. Contractual Limitations and other Obligations Contractual terms and limitations [drop-down menu]: Access limited to onsite for research and study Reproduction and distribution prohibited until XXX date No reproduction and distribution unless with prior permission of copyright owner No reproduction and distribution unless with prior permission of donor Reproduction and distribution online limited to non-profit educational use only Photographic credit required [photo credit entered here] Other – [free text field] Other Legal Restrictions 1. Are publicity rights present in work? yes/no

IP management for cultural heritage institutions  449 If yes, did university obtain: (pick one) a. written release b. proof of release in written form c. no release 2. Are trademarks prominently visible? yes/no 3. Is material culturally or otherwise sensitive in nature? yes/no 4. Are there privacy concerns? yes/no 5. Are children materially identifiable in work? yes/no 6. Are underlying copyrights present that may require permission? yes/no 7. Are there VARA rights concerns? yes/no VII. Link to PDF of Permissions and Other field [free text field]

3.

RIGHTS ASSESSMENTS AND TIMING

This issue is inherently connected to institutional priorities and workflows. It has often been the case that staff working within cultural heritage institutions are overwhelmed with the prospect of cataloging rights for entire collections. While the Pallante checklist refers to this objective, for those institutions with vast and diverse holdings, this objective, taken on its face, is likely impossible to achieve in an identifiable period of time. Decisions are therefore necessary to determine how to prioritize rights assessment that include both an assessment of risk and curatorial priorities. The first question often asked by curatorial staff and catalogers faced with the prospect of carrying out rights assessments is whether rights assessments may be carried out only upon collections accessioned hereinafter or whether a strategy needs to be developed to deal with objects and materials already accessioned into collections. The answer is yes, to both, since materials and objects already accessioned into collections may be as vulnerable to deterioration and loss, or as valuable to patrons and researchers as those accessioned after rights assessments systems are developed and implemented. There is a need, therefore, to develop a strategic approach that enables and supports good rights data practices upon acquisition and accession and provides a consistent approach, often driven by preservation and access activities deemed priorities by the cultural heritage institution, in tackling rights assessments of objects and materials already accessioned into the collections. One of the best opportunities to gather rights data and information is during the acquisition process. They can reveal opportunities where cultural heritage institutions may seek licenses and permissions to carry out programmatic activities and embed them in the acquisition agreements for the collection. This is particularly true in instances where donors are either rightsholders themselves or where they have particular and intimate knowledge of the objects and materials that they have collected. Certain cultural heritage institutions have developed rights questionnaires that they use as part of the acquisition process and it has been the case that decisions to decline the donation or carry through with the acquisition have been made as a result of rights assessments before accession, where it has been determined that the objects or materials may not, without great difficulty, be either preserved or made accessible over time.

450  Research handbook on intellectual property and cultural heritage It is arguably the case that rights questionnaires are, in fact, a form of provenance research for 21st-century collections. Consider the photographic collection of a photojournalist whose photos were often published by magazines or news outlets. It may be the case that he or she may not own the rights to the photos if they were taken as a commission or if rights were assigned as a condition of payment. It may also reveal where and how a series of photos were taken, with rights held to photos considered substantially similar to those considered by the cultural heritage institution as either a donation or acquisition. If the photos are licensed out by commercial photo stock agencies who purchased photo archives over time, this can raise certain risks or effectively limit what the cultural heritage institution can do with the photos without raising the prospect of notice and take down, and subsequent negotiation about proof of ownership and rights. While this may not ultimately preclude acquisition, it does provide the cultural heritage institution with a greater understanding of what activities may be carried out to preserve the photos, what rights may be required and from whom in order to engage in greater programmatic activities and how much funding may be required to support the collection over time. If it is not possible to work with rights questionnaires prior to acquisition or where the donor has little knowledge about the rights issues that may exist within the collection (this is often the case where heirs have inherited collections that are not well documented), the next option is to try to assess rights while the collection is being processed for accession. While not all the data points may be available at that time, the basic data elements may become known to curatorial and cataloging staff as they review objects and materials during the processing phase. In certain circumstances, it will be possible to return to fill in more data fields about rights and limitations as staff work with collections over time. From a staffing perspective, this is a point in their work where curators and catalogers will spend the most time reviewing the collection as a whole. It is also the case that the terms and conditions remain fresh in the minds of curatorial staff so that any contractual limitations may be cataloged appropriately with little time and effort. It therefore is an optimal time to gather at least the most basic information about rights and risks, such as materials and objects in the collection that, because of their commercial nature, may not lend themselves easily to exhibition, reproduction, display or digitization. If collections have not been assessed for rights at acquisition or accession, namely legacy collections, curatorial and preservation priorities should likely dictate which of these collections should be assessed for rights. Digitization efforts, whether for preservation purposes or to meet access needs, particularly for scholarly purposes or where exhibitions are planned or where catalogs might be published, may dictate the speed or need for rights assessments. Therefore, activities connected directly to institutional priorities should dictate the rights assessment strategy.

4.

RISK ASSESSMENTS

Risk assessments, while an outcome of rights assessments, are, in fact, a distinct process. The risk assessment process considers the rights data and what is known about rights associated with materials and objects in a collection, examines the legal risk against the data based on intellectual property and contracts law, determines whether legal risk is present, that is, the potential for a violation of the law, and then considers actual risk, that is, what the likelihood may be that a set of circumstances may come to pass. How does risk assessment correspond

IP management for cultural heritage institutions  451 to rights assessments and when should risk assessments take place? The Pallante checklist suggests that rights assessments should be undertaken to assess both opportunities but also in response to litigation. This approach has in fact evolved. The purpose of rights assessments is to place a cultural heritage institution in a position of strength through knowledge about rights so that decisions about how to manage and provide access to collections are made in good faith. The worst outcome from a risk perspective is not to have made an error during rights assessments, but, instead, to have failed to assess for rights in the first instance. Good and responsible stewardship, both from a legal and arguably from an ethical perspective, must now include intellectual property assessment and ultimately information about risk, especially given the reliance on digitization and remote access when both future-proofing collections and providing remote access to digitized reproductions of materials and objects in collections, in either the event of institutional closure due to climate events or other natural disasters, such as the Covid-19 pandemic. How to assess risk and evaluate an institution’s comfort level with risk is perhaps one of the most difficult undertakings, especially for those activities that do not have precedent. Technical violations of copyright law may, in some circumstances be tolerable where the prospect of actual harm is very low or non-existent. How to determine what constitutes high risk and what activity may generate actual harm is an exercise best undertaken with the assistance and input of legal counsel working together with curatorial staff and technology experts conversant with how digitized materials and objects are reproduced, displayed, communicated and then subsequently copied or downloaded. Instead of working on a case-by-case basis, it may be better to initiate a preliminary triage of the collection by examining activities more holistically together with a review for the presence of the kinds of materials and objects in the collection that pose significant risk. Examples of high risk materials include those materials that hold inherent commercial value, or were created to generate revenue and were distributed commercially, or where materials or objects include information that, if distributed or made publicly available, could cause harm to the author or artist, such as in the case of moral rights. In effect, a team approach should be developed to assess risk based on triage results about the nature of the materials and objects that may be the subject of digitization or preservation. Materials of inherently high risk should be excluded from any practices that cannot be justified pursuant to the law or where permissions cannot be obtained to carry them out. In certain jurisdictions, where exceptions to copyright or provisions such as fair use or fair dealing exist to allow for the activities anticipated as mission-driven by the cultural heritage institution, the question subsequently becomes whether the activities anticipated by the cultural heritage institution can be justifiable under these exceptions or fair use, fair dealing provisions. The answer to this question may only become known after a rights assessment is undertaken on the objects and materials in the collection. While triage cannot provide a thorough assessment and does not negate the need for rights assessments, triage does segregate high-risk objects and materials from those that may pose lower risks, when considered for activities that trigger legal issues. Cultural heritage institutions, working in concert with intellectual property experts and curatorial staff, may make recommendations concerning the need for generalized guidelines to assist with the interpretation rights data. Guidelines are arguably a reflection of responsible stewardship and the consistent application of intellectual property principles in concert with rights assessment may provide the greatest evidence of good faith. Guidelines should be vetted and approved and reviewed every few years, however, to ensure that they reflect changes

452  Research handbook on intellectual property and cultural heritage and developments in intellectual property law and remain consistent with the aspirations and mission of the cultural heritage institution. While guidelines may not originate with legal counsel, they should, however, be reviewed by counsel, if possible, to ensure that they do not inadvertently create even more risk for the cultural heritage institution applying them.13 Finally, in addition to general guidelines on how to interpret rights data, a cultural heritage institution should consider developing a risk grid together with legal counsel and approved by the executive management of the cultural heritage institution. The grid identifies the types of objects and materials in a collection that need to be assessed for risk at a higher level. In fact, a risk grid acts as a type of risk assessment checklist. If a risk grid is created at the outset, it can be employed to allow staff to triage materials and objects in the collection and to work consistently and more efficiently in proposing collections for preservation, digitization and remote access to collections. Staff will better understand the degree of permissions that may be required or the likelihood of success in employing exceptions to copyright or fair dealing or fair use to justify certain activities. Clearly, however, risk grids and assessments of risk can only be employed where rights data is handily available. This is not to say that assessing risk should not be undertaken if a collection has not been assessed for rights. It may still be the case that risk is assessed but only after the rights assessment takes place and that can take, in some cases, a considerable amount of time. Certain risks may require an immediate response.

5.

A NOTE ABOUT CAPACITY AND CAPABILITY

Even low-budget cultural heritage institutions can assess for rights. If there is little or no budget to develop a rights data system, spreadsheets can be used to track rights so long as the spreadsheets contain links to the relevant records in the collections management system. The clear issues are those of institutional capacity and capability. Curatorial and cataloging staff need to have the capacity to do the work. Staff may be stretched to capacity in some instances, but even the integration of a copyright status statement as one field of information and provided for by Rightsstatements.org is a good starting point. Rights assessments grow over time and exponentially when cultural heritage institutions undertake specific projects with complex collections or work with funding agencies that require them. Rights status assessments, if integrated into the records as part of the metadata, will at a minimum trigger and alert staff that risk may be inherent in working with materials or objects in a collection and may warrant further investigation and review. Capability, however, may be a more problematic requirement. Rights education for cultural heritage professionals has never before become so urgent. During the winter and spring of 2021, LYRASIS in partnership with Columbia University Libraries launched a pilot online copyright education program for professionals working in libraries, archives and museums. The base Copyright 101 course, anchored in US law, was made open and over 300 registrants registered, with more on a waiting list because the learning platform could only support a set number. Four more advanced courses were offered and over 1,500 professionals attended over 13 The issue of copyright guidelines in academic libraries and the need to ensure legal accuracy was the subject of a long running case in the United States. Cambridge University Press et al. v Becker et al. (Evans, Orinda, “District Court: Final Order (2020)” (2020). Georgia State University Copyright Lawsuit. 12.).

IP management for cultural heritage institutions  453 a five-month period, with requests to re-offer the courses during the fall of 2021.14 Given the level of sophisticated expertise required to understand complex rights and technology issues in managing collections, this need will only continue to grow. While some cultural heritage institutions in North America, the UK and in Europe may have intellectual property experts or counsel on staff, many others do not. These inequities may require immediate attention to ensure that cultural heritage institutions that do not have access to staff education about rights or have the budget to support in-house rights experts, place their collections at risk of loss or inaccessibility in the future. In conclusion, rights assessments, if carried out consistently and documented as part of or interoperable with a collections management system, are quickly becoming a necessary facet of collections stewardship in order to meet 21st-century challenges. Rights assessments provide professionals working in cultural heritage institutions with the knowledge about what rights they may hold, what limitations they face, what rights they may require and what risks they face when preserving and future-proofing collections while also serving patrons, researchers and audiences as robustly as possible. For those cultural heritage institutions that wish to commit to open-access policies, this exercise is particularly relevant. The expectations of audiences and researchers concerning access to collections resulting from the Covid-19 pandemic places considerable stewardship responsibility on cultural heritage institutions to ensure that they are able to provide remote access to collections. And the preservation challenged posed by climate change and the need to future-proof collections require a greater degree of depth of knowledge, capacity and capability so as to ensure that collections remain available and accessible to future generations.

REFERENCES Association of Art Museum Directors, (2017), Guideline for the Use of Copyrighted Materials and aamd​ .org/​ sites/​ default/​ files/​ document/​ Works of Art by Art Museums, Oakland, AAMD https://​ Guidelines​%20for​%20the​%20Use​%20of​%20Copyrighted​%20Materials​.pdf Cambridge University Press et al. v Becker et al. (Evans, Orinda, “District Court: Final Order (2020)” (2020), Georgia State University Copyright Lawsuit. 12. https://​scholarworks​.gsu​.edu/​univ​_lib​ _copyrightlawsuit/​12 Coyle, K., (2006), Rights in the Premis Data Model: A Report of the Library of Congress, Washington, Library of Congress, https://​www​.loc​.gov/​standards/​premis/​Rights​-in​-the​-PREMIS​-Data​-Model​.pdf De Armond, M., Pilato, V., Pantalony, R., Cram, G., (2019), “Copyright Assessment in the Trenches”, Art Documentation, Volume 38 No. 1, pp. 53–69. Digital Public Library of America, (2016), RightsStatements.org, at https://​dp​.la/​news/​announcing​-the​ -launch​-of​-rightsstatements​-org J. Paul Getty Museum, (2021), Record Including Rights Statement, https://​www​.getty​.edu/​art/​collection/​ objects/​144/​vincent​-van​-gogh​-portrait​-of​-joseph​-roulin​-dutch​-1888/​?dz​=​0​.5000​,0​.6450​,0​.43 Library of Congress, (2011) Marc Records, https://​www​.loc​.gov/​marc/​bibliographic/​bd264​.html LYRASIS and Columbia University Libraries, (2021), Pilot Initiative to Create A Virtual Copyright Education Center for Professionals Working in Libraries, Archives and Museums, https://​wiki​.lyrasis​ .org/​display/​VCEC/​Virtual+​Copyright+​Education+​Center Metropolitan Museum of Art, (2021), “Open Access Policy”, https://​www​.metmuseum​.org/​about​-the​ -met/​policies​-and​-documents/​image​-resources

14 LYRASIS and Columbia University Libraries have launched a Pilot Initiative to Create a Virtual Copyright Education Center for Professionals Working in Libraries, Archives and Museums.

454  Research handbook on intellectual property and cultural heritage New York University (2021), Moving Image Archive Preservation Program, https://​tisch​.nyu​.edu/​ cinema​-studies/​miap Pallante-Hyun M., (2002) “The Process of Policymaking: From IP Audit to Valuation and Management”. Pantalony, R., (2013) The WIPO Guide to Managing Intellectual Property, Second Edition, Geneva, World Intellectual Property Organization, p.  25, https://​www​.wipo​.int/​publications/​en/​details​.jsp​?id​ =​166 Pantalony, R. (2019), “Social Media and the Ethics of Scholarship: A Call for the Assessment and Communication of Rights Information, Provenance, and Context”, S. Benson (ed.), Copyright Conversations: Rights Literacy in the Digital World, pp. 271–288, Chicago, ACRL, https://​doi​.org/​ 10​.7916/​d8​-9vdr​-g376 Pantalony, R. (2013), The WIPO Guide to Managing Intellectual Property for Museums, Second Edition, Geneva, World Intellectual Property Organization, https://​www​.wipo​.int/​publications/​en/​details​.jsp​ ?id​=​166 Performing Arts Readiness Program, (2021), https://​per​formingart​sreadiness​.org/​ Raju, R. (2021), “From Disaster to Preservation and Dissemination”, https://​www​.un​.org/​sites/​un2​.un​ .org/​files/​reggie​_​-​_ppt​.pdf Sciolino, E. (2021, July 16), “The Louvre’s Art Sleuth is on the Hunt for Looted Paintings”, New York Times, https://​www​.nytimes​.com/​2021/​07/​16/​arts/​design/​louvre​-art​-sleuth​-emmanuelle​-polack​.html​ ?smid​=​url​-share

24. Cultural heritage, galleries and auction houses Leila A. Amineddoleh

CULTURAL ARTIFACTS ARE DIFFERENT THAN OTHER OBJECTS Cultural heritage is the manifestation of mankind’s past imbued with historical significance. For this reason, cultural heritage is treated differently under international law and most national laws. It occupies a distinct place in the body of international law, at the intersection of human rights instruments, international law, and a vast legal framework. Generally, property law protects the rights of owners;1 property is something that can be owned by one party to the exclusion of all others.2 In this way, property law has long protected the right of an owner to exclude others from possessing or using their property.3 On the other hand, the legal framework for both private and national ownership of cultural heritage is not quite as straightforward. Valued as important to either a nation, an ethnic or religious group, or to humankind at large, cultural heritage receives enhanced protection in some instances, and it has restrictions placed upon its trade and movements. One central tenet of cultural heritage law is the protection of objects for present and future generations. Specialized treatment of cultural heritage dates back millennia. As early as the second century B.C.E., ancient Roman author Polybius decried the Roman looting of Greek sanctuaries on the island of Sicily.4 A century later, famed Roman orator, statesman, scholar, and philosopher Marcus Tullius Cicero prosecuted the Roman governor of Sicily, Gaius Verres, in a series of speeches, In Verrem (‘Against Verres’).5 Verres faced charges for plundering cultural objects while ruling Sicily. Amongst other things, Verres sacked towns for their art and stripped the principal temple in Syracuse. During the trial, Verres pled no contest and voluntarily went into exile in modern-day Marseilles. Centuries later, after Napoleon’s defeat at the conclusion of the Napoleonic Wars, British leaders recovered art and heritage items. They treated them with special consideration by ordering that looted works be returned to their homes.6 It was during this tumultuous period that a Vice-Admiralty Court in Halifax, Canada, returned an art collection seized by the British from a French vessel during the War of 1812. Notably, the court opined that cultural heritage Thomas W. Merrill, Property and the Right to Exclude, 77 Neb. L. Rev. 730, 731 (1998). Id. at 734. 3 Calder v. Bull, 3 U.S. 386, 394 (1798) (“If anyone has a right to property such right is a perfect and exclusive right.”); see also Green v. Biddle, 21 U.S. 1, 20 (1823) (“A right of property necessarily includes the right to recover the possession, to enter, to enjoy the rents and profits, and to continue to possess undisturbed by others.”). 4 The Histories of Polybius Vol. 1, University of Chicago, https://​penelope​.uchicago​.edu/​Thayer/​ e/​roman/​texts/​polybius/​1*​.html. 5 D. H. Berry, “In Verrem: Introduction,” in Cicero: Political Speeches (Oxford University Press 2006). 6 Diane Rowell, Paris: The “New Rome” of Napoleon I (Bloomsbury Publishing 2010). 1 2

455

456  Research handbook on intellectual property and cultural heritage belongs to all humanity. Emphasizing the unique nature of cultural goods and their ownership, the court stated: “The arts and sciences … [are] the property of mankind at large, and as belonging to the common interests of the whole species.”7 International Efforts Treaties and international instruments protecting cultural heritage date back as early as the nineteenth century and have continued through to the current day.8 The Brussels Declaration on the Law of War (1874) and other legal treatises relate to military conduct and concern the treatment of all types of property, including cultural property.9 This declaration formed the basis for the first major international meetings in The Hague (1899 and 1907), whose outcome was a series of international treaties and declarations known as the Hague Conventions.10 Along with the Geneva Conventions, the Hague Conventions were among the first formal statements on the laws of war and war crimes in the realm of international law. In 1899, the first Hague Convention addressed the need to preserve cultural and religious buildings and objects in the context of armed conflict: The property of the communes, that of religious, charitable, and educational institutions, and those of arts and science, even when State property, shall be treated as private property. All seizure of and destruction, or intentional damage done to such institutions, to historical monuments, works of art or science, is prohibited, and should be made the subject of proceedings. (Art. 56)11

The 1907 Hague Convention echoed this language: The property of municipalities, that of institutions dedicated to religion, charity, and education, the arts and sciences, even when State property, shall be treated as private property. All seizure of,

7 The Marquis de Somerueles, Vice-Admiralty Court of Halifax, Nova Scotia Stewart’s Vice-Admiralty Reports 482 (1813). 8 See generally Ana Filipa Vrdoljak, Cultural Heritage in Human Rights and Humanitarian Law, Int’l Hum. Rts. & Humanitarian L. 250 (2011). The United States’ Lieber Code from 1853 influenced the Brussels Declaration on the Law of War (1874) and led to the first major international meetings in The Hague in 1899 and 1907, which prompted further refinement of cultural property protection in times of armed conflict. This resulted in the Hague Conventions, which were among the first formal international proclamations on the laws of war. International militaries did not abide by the conventions during the First World War, but the Hague Conventions of 1899 and 1907 have been updated and superseded by other treaties, including the 1935 Washington Treaty, the 1949 Universal Declaration of Human Rights, the 1949 Geneva Convention, the 1954 Hague Convention for the Protection of Cultural Property in the Event of Armed Conflict and its Protocols, the 1970 UNESCO Convention on the Means of Prohibiting and Preventing the Illicit Import, Export and Transfer of Ownership of Cultural Property, the 1995 UNESCO Convention on Stolen or Illegally Exported Cultural Objects, the 2003 UNESCO Declaration on the International Destruction of Cultural Heritage, and the 2005 Council of Europe Framework Convention on the Value of Cultural Heritage for Society. 9 Sean Watts, Reciprocity and the Law of War, 20 Harv. Int’l L. Rev. 394–98 (2009). 10 Id. 11 Convention (II) with Respect to the Laws and Customs of War on Land and its annex, The Hague, July 29, 1899, https://​ihl​-databases​.icrc​.org/​ihl/​INTRO/​150.

Cultural heritage, galleries and auction houses  457 destruction or willful damage done to institutions of this character, historic monuments, works of art and science, is forbidden, and should be made the subject of legal proceedings. (Art. 56)12

Unfortunately, these conventions were not honored during the First World War. Since then, the Hague Conventions have been updated and superseded by other treaties. Despite the protection provided by the 1899 and 1907 Hague Conventions, European cultural heritage suffered devastating losses during both World Wars. The most recent Hague Convention of 1954, adopted in the wake of massive destruction during World War II, is the first international treaty focusing on cultural heritage protection in the event of armed conflict. The treaty addresses both movable and immovable forms of heritage. It imposes obligations on States to safeguard and respect cultural property in times of peace and armed conflict, both within their own territories, occupied territories, and the territory of other States Parties. States must take appropriate measures to ensure that cultural property is protected, and refrain from reprisals and acts of hostility against such property (Arts. 3 and 4). Notably, the Convention expressly imposes a duty on States Parties to prohibit, prevent, and put a stop to “any form of theft, pillage, or misappropriation” of it (Art. 4.3).13 Subsequently, this Convention’s two Protocols and Regulations have provided additional means of cultural property protection. The First Protocol, enacted at the same time as the Convention, prohibits the export of cultural property from occupied territories during armed conflict (Art. 1.1) and requires States Parties to take any such items imported into their territory into custody, to be returned at the conclusion of hostilities to its country of origin (Arts. 1.2 and 1.3).14 During the second half of the twentieth century, there was a growing recognition that looting and loss of heritage occurred outside the context of conflict. This led to coordinated efforts to curb the illicit traffic of heritage with the ratification of international legal instruments. The United Nations Educational, Scientific and Cultural Organization (UNESCO) was formed to address issues specific to cultural objects and locations and has promulgated a number of binding international agreements designed to preserve important works and undermine global trafficking of illegally sourced cultural heritage. The most significant of these agreements is the 1970 UNESCO Convention on the Means of Prohibiting and Preventing the Illicit Import, Export and Transfer of Ownership of Cultural Property (the 1970 UNESCO Convention).15 To date, the convention has 140 States Parties. The 1995 UNIDROIT Convention on Stolen or Illegally Exported Cultural Objects, developed in tandem with UNESCO and serving as a complement to the 1970 UNESCO Convention, provides a uniform method of restitution for all stolen or illegally exported

12 Convention (IV) respecting the Laws and Customs of War on Land and its annex, The Hague, Oct. 18, 1907, https://​ihl​-databases​.icrc​.org/​ihl/​INTRO/​195. 13 Convention for the Protection of Cultural Property in the Event of Armed Conflict, The Hague, May 14, 1954, http://​www​.unesco​.org/​new/​en/​culture/​themes/​armed​-conflict​-and​-heritage/​convention​ -and​-protocols/​1954​-hague​-convention/​. 14 First Protocol to the Convention for the Protection of Cultural Property in the Event of Armed Conflict, The Hague, May 14, 1954, http://​www​.unesco​.org/​new/​en/​culture/​themes/​armed​-conflict​-and​ -heritage/​convention​-and​-protocols/​first​-protocol/​text/​#c280777. 15 UNESCO, Convention on the Means of Prohibiting and Preventing the Illicit Import, Export and Transfer of Ownership of Cultural Property, Paris, Nov. 14, 1970, https://​en​.unesco​.org/​fighttrafficking/​ 1970.

458  Research handbook on intellectual property and cultural heritage cultural objects. Notably, it allows private parties to participate in this process.16 It reflects a growing trend, whereby private stakeholders are more and more involved in, and held accountable for, the protection and restitution of cultural heritage. Importantly, the United States and the United Kingdom, two major participants in the antiquities market, have not joined the 1995 UNIDROIT Convention. Incorrectly, art market participants often refer to 1970 as a type of ‘cutoff’ date for the acquisition of antiquities, meaning that there is a blanket rule that allows objects with a provenance dating back to 1970 to be traded legally. Yet, the year 1970 does not have any legal significance.17 The 1970 Convention did not create a blanket law or policy that allows any pre-1970 item to be freely traded. Although the 1970 UNESCO Convention was drafted then, signatories to the convention decide when to ratify it and how and when to implement the convention into law. The convention places a responsibility on nations “to establish a licensing system for the export of cultural objects; to protect cultural objects from looting, theft, and illegal export; and for signatories to cooperate in recovering illegally exported cultural objects.”18 It is the responsibility of each signatory nation to implement the convention through national legislation.19 Further, nations enacted cultural heritage laws prior to the 1970 UNESCO Convention, and perhaps most critically these laws are still valid and enforceable. The Development of National Laws Protecting Cultural Heritage Laws developed around the world that reflected the principle that cultural heritage was entitled to enhanced protection. Nations developed laws to regulate the ownership, trade, and movement of cultural heritage, declaring that it could not be exploited as purely commercial. In furtherance of this goal, nations enacted patrimony laws. These laws vary by country, but they typically regulate ownership and export of cultural objects, and the laws may even prohibit private ownership of certain objects. In some instances, cultural heritage has been declared a public asset which may not be privately owned or exported absent express permission from government authorities. These laws also guard against people removing certain types of property, which help prevent the destruction of archaeological sites. Some of the oldest patrimony laws were passed by Egypt, the Republic of Italy, and the Hellenic Republic, all of which have a wealth of movable and immovable cultural property that has been subject to plunder and looting throughout the centuries. Often, governmental agencies, such as ministries of culture or foreign affairs, are tasked with overseeing heritage protection and the enforcement of patrimony laws. Efforts to protect national heritage date back to at least as early as the sixteenth century in Europe, when the

16 UNIDROIT, Convention on Stolen or Illegally Exported Cultural Objects, Rome, June 24, 1995, https://​www​.unidroit​.org/​instruments/​cultural​-property/​1995​-convention. 17 Patty Gerstenblith, The meaning of 1970 for the acquisition of archaeological objects, 38 Journal of Field Archaeology 364 (2013). 18 See Patty Gerstenblith, Implementation of the 1970 UNESCO Convention by the United States and Other Market Nations, in The Routledge Companion to Cultural Property 70, 71 (Routledge 2017). The United States ratified the 1970 Convention in 1972, but passed domestic implementing legislation a decade later through the Convention on Cultural Property Implementation Act, 19 U.S.C. §§ 2601–2613 (1983). 19 Id.

Cultural heritage, galleries and auction houses  459 Papal States instituted legislation for these materials.20 In fact, one of the many interests of Renaissance painter Raphael was his passion for the discovery and resuscitation of ancient Rome. In 1515, Pope Leo X appointed the painter as a supervisor of the preservation of the Vatican collection of classical antiquities, and in 1517, Raphael was made commissioner of antiquities for the City of Rome.21 In modern times, decades prior to the passage of the 1970 UNESCO Convention, nations enacted patrimony laws to protect cultural assets. Generally, national patrimony laws vest ownership in the sovereign for all undiscovered antiquities within the nation’s borders.22 Unlike property not subject to a patrimony law, cultural heritage property has been declared to be a state asset which may not be privately owned or exported absent express permission.23 These laws vary by country, but they typically regulate the ownership, sale, and export of cultural heritage. These laws often also impose civil and/or criminal penalties on those who violate the laws.24 Nations such as Greece, Italy, and Egypt were the first to past this type of legislation. The Italian peninsula had patrimony laws enacted prior to the unification of Italy in 1861.25 Due to the popularity of artifacts collected by tourists on the Grand Tour during the nineteenth century, hoards of objects were excavated and sold to private collectors thirsty to acquire a piece of history. Italian authorities deemed it essential to stop the exodus of objects leaving Italy. The Kingdom of Naples first passed a patrimony law in 1822. Italy continues to enforce its laws and the nation has updated them many times during the past two centuries. A similar account is true for Egypt. Ancient Egyptian culture has captured imaginations around the globe since the Napoleonic Wars. The turmoil of the time provided ample opportunity for soldiers to loot objects and fuel a market for artifacts in Europe. Not only were riches plundered, but collectors sought to purchase mummies and other bodily remains. As such, Egyptian authorities passed the nation’s first heritage decree in 1835 to prevent the removal of treasures and human remains. Similarly, the storied culture of Ancient Greece has long fascinated collectors, and so the Greek nation has found it of the utmost importance to prevent the loss of its heritage. The Hellenic Republic of Greece passed a patrimony law in 1834, within two decades of gaining its independence from the Ottoman Empire. The ban on exporting antiquities without a permit, enforced by penal sanctions, was enshrined in the first national archaeological legislation of 20 At which time successive Popes began issuing norms and bans to limit the export of art and antiquities. This continued for centuries, culminating in the Edicts of Pacca in 1819–1820, following Carlo Fea’s (Pontifical Commissioner of Antiquities) notion that heritage should be conserved because it is “nourishment of the arts.” See Salvatore Settis, The Cultural Heritage of the Church in Contemporary Culture in Twenty Years of the Pontifical Commission for the Cultural Patrimony of the Church 90 (Libreria Editrice Vaticana 2011). 21 Last years in Rome of Raphael, Encyclopedia Britannica. https://​www​.britannica​.com/​ biography/​Raphael​-Italian​-painter​-and​-architect/​Last​-years​-in​-Rome 22 The word ‘patrimony,’ in a domestic context, means property which has descended within the same family or is inherited from one’s ancestors. Patrimony, Black’s Law Dictionary (11th ed. 2019). 23 Unknown author, Get the Facts; What is cultural property?, Cultural Prop. News, https://​ culturalpropertynews​.org/​get​-the​-facts/​#what​-is​-cultural​-property. 24 See David L. Hall, Cultural Property Law, 64 U.S. Att’y Bull. 2, 17–24 (Mar. 2016). 25 See Donata Levi, The Administration of Historical Heritage: The Italian Case, in National Approaches to The Governance of Historical Heritage Over Time: A Comparative Report 103, 109–11 (IOS Press 2008).

460  Research handbook on intellectual property and cultural heritage 1834, which was pioneering for its time.26 It remains one of the foundations of Greek cultural heritage legislation today. The most current Greek patrimony law is from 2002,27 and continues to vest title in the Greek State for the ownership of antiquities and strictly regulate the export of those items. Patrimony laws are enforced by other nations. For example, U.S. courts have applied patrimony laws in U.S. proceedings and have found them enforceable;28 courts have found that property taken in violation of a patrimony law are deemed stolen under the National Stolen Property Act of 1934. Further, national patrimony laws are meritorious. These laws play a significant role in protecting heritage not only for a nation’s citizens, but for the global community. Patrimony laws prevent unsanctioned individuals or groups (including criminal looting networks) from digging sites within a nation’s borders.29 Further, by placing export and sales restrictions on objects illicitly removed, patrimony laws aim to stifle the trade in plunder by restricting the movement of looted items.30 Without patrimony laws, layman could initiate excavations and freely exchange the materials on the antiquities market. Not only would this lead to a physical loss of historical objects, but it would result in the destruction of archaeological sites, loss of archaeological context, and the disappearance of important objects from the public realm at a future time in which they are eventually excavated.31 Rather, patrimony laws place the protection and regulation of these objects in the hands of a government to protect and research the objects within their borders, rather than simply selling them to private buyers.32 Patrimony laws also allow governments to promote, properly excavate, and research objects and sites by granting permission to worthy institutions to excavate and work with materials found within their borders.33 In this way, patrimony laws protect shared cultural heritage not only for its own citizens, but for humanity at large.

26 Daphne Voudouri, Greek legislation concerning the international movement of antiquities and its ideological and political dimensions, in A Singular Antiquity: Archaeology and Hellenic Identity in Twentieth-Century Greece 125 (Benaki Museum, 3rd supplement edition 2008). 27 Law 3028/2002, “On the protection of antiquities and cultural heritage in general.” 28 See, e.g., United States v. Schultz, 333 F.3d 393 (2d Cir. 2003) (interpreting Egypt’s law); United States v. An Antique Platter of Gold, 184 F.3d 131 (2d Cir. 1999) (interpreting Italy’s law); United States v. McClain, 545 F.2d 988 (5th Cir. 1977) (interpreting Mexico’s law); United States v. Hollinshead, 495 F.2d 1154 (9th Cir. 1974) (interpreting Guatemala’s law); Hall supra note 24 at 20–21, 41–42 (providing background on the enforcement of patrimony laws in the US). 29 Timothy Potts, Combatting Illicit Trade: An Assessment, 11 Art Antiquity & L. 131, 136 (2006). See, e.g., 16 U.S.C. § 470ee(a) (2012) (prohibiting unauthorized “excavation, removal, damage, alteration, or defacement of archaeological resources”). 30 See Alessandra Chechi, The Settlement of International Cultural Heritage Disputes 119, at 66 (2014). 31 See generally U.S. Dep’t. of Justice Exec. Off. for U.S. Att’y, Cultural Property Law, 64 U.S. Att’ys Bull. 1 (Mar. 2016) (providing additional information about the importance of cultural property and laws protecting it). 32 See Alessandro Chechi, The Settlement of International Cultural Heritage Disputes 119 (2014). 33 Luis Li & Amelia L.B. Sargent, The Getty Bronze and the Limits of Restitution, 20 CHAP. L. REV. 25, 44, 50 (2017).

Cultural heritage, galleries and auction houses  461

LOOTED OBJECTS ON THE ART MARKET Even with extensive laws protecting cultural heritage and international treaties aimed at stemming the illicit trade, looting still occurs. It is difficult to estimate the number of plundered items, or the value of loot, on the market because the nature of theft is that the source of stolen goods is hidden. But what is clear is that the illicit trafficking of artifacts is a concern for States attempting to protect their cultural heritage as an extension of their national identity. Yet it goes further than that, as looting damages heritage.34 Looting harms all citizens because it leads to the destruction and loss of heritage from the populace.35 Culturally and artistically significant objects have been repatriated for centuries. However, the past few decades have witnessed an uptick in legal claims made by foreign sovereigns for the return of looted cultural heritage objects. These objects were not necessarily displaced as war plunder, but as objects that entered collections through the art market. The increasing number of legal cases brought by sovereign governments indicates that cultural heritage disputes are not merely between private parties. Rather, the issue is of concern to sovereign nations, as trustees of heritage items. These disputes reveal broader issues related to diplomacy, international relationships, and our shared human history. When looted items appear on the market, either at auction or through a private sale, nations have a number of ways to reclaim antiquities. Typically, repatriations claims are made through one of the following four mechanisms: (1) litigation; (2) communications and negotiations; (3) law enforcement actions; or (4) diplomacy. Litigation Mosaics looted during conflict A litigation against an American art dealer exposed the vulnerability of cultural heritage during conflict and revealed how cultural items enter the art market. The case involved four rare mosaics that were plundered during the Turkish military intervention in Cyprus of 1974.36 By the end of 1976, all Cypriots living in the village where the Panagia Kanakaria Church is located fled to southern Cyprus, after which time four valuable mosaics were violently removed from the apse of the church and ushered onto the black market.37 In 1979, the Department of Antiquities of the Republic of Cyprus learned that the mosaics had been stolen. Immediately, the department began a wide-reaching campaign to recover

34 Neil Brodie & Colin Renfrew, Looting and the World’s Archaeological Heritage: The Inadequate Response, 34 Ann. Rev. Anthropology 343, 344 (2005) (“[D]istressingly a significant proportion of the ongoing destruction [of heritage] is brought about by looters, acting from commercial motives….”). 35 Monica Hanna, Losing Heritage, Losing Identity, 5 Al Rawi: Egypt’s Heritage Rev. (2013), https://​rawi​-magazine​.com/​articles/​losingheritage/​ [https://​perma​.cc/​5AEC​-5XWB] (“The value of Egyptian heritage lies in commemorating the country’s past and defining its collective identity and cultural memory. With widespread looting and destruction, both culture and identity become diluted. People use spaces and objects both to define themselves and to teach new generations about the failures and successes of the past, all of which have formed the reality of their present.”). 36 See Autocephalous Greek-Orthodox Church v. Goldberg & Feldman Fine Arts, Inc., 917 F.2d 278, 284 (7th Cir. 1990). 37 Id. at 281.

462  Research handbook on intellectual property and cultural heritage the artifacts.38 Nearly a decade later, dealer Peg Goldberg flew to Europe with the intention of purchasing a painting.39 The sale never came to fruition, but Goldberg was shown a photo of the mosaics. After conducting no due diligence, she opted to purchase the rare pieces for a little over $1,080,000.40 Once she retained possession of the artifacts, the dealer attempted to sell them by contacting collectors.41 The Cypriot church and the Republic of Cyprus learned that the mosaics were with Goldberg, so they requested their return.42 The Church even offered Goldberg reimbursement for her purchase price. Peg Goldberg refused.43 The Church and Cyprus sued for the mosaics’ return.44 The case involved complex issues related to international law and the statute of limitations. Goldberg ‘zealously’ argued that the mosaics were removed long before the church initiated the lawsuit, and thus the case should be dismissed due to lack of timeliness.45 The federal court in Indiana disagreed, and allowed the case to move forward, ultimately finding that the mosaics should be repatriated.46 Goldberg appealed the decision, but to no avail.47 The United States Court of Appeals for the Seventh Circuit affirmed the District Court’s decision, finding that (1) Goldberg knew of the mosaics origin in a conflict zone; (2) the mosaics were crudely removed from an extant building and they are of unique cultural and economic value; (3) the low purchase price is in stark contrast to the market price of $20 million; (4) Goldberg knew little about the salesmen and other intermediaries (they had faced criminal charges for other art crimes); and (5) the rapid sale was atypical for objects of such rarity and value.48 Goldberg failed to prove that she conducted due diligence, and she likely perjured herself during the trial.49 Goldberg acted in bad faith by purchasing from middlemen that were virtually unknown to her and “fail[ing] to take reasonable steps to resolve” the “suspicious circumstances surrounding the sale.”50 In fact, the sellers were part of a large-scale organized illicit trafficking ring involving Cypriot cultural property.51 The court expressed the importance of conducting due diligence when acquiring antiquities.52 It also commended the Cypriot church for its persistence in seeking and recovering the objects, and its use of diplomatic channels to locate the works.53 Although the mosaics were returned with much fanfare in 1991, they had already been irreversibly damaged due to the Id. Id. 40 Id. at 282. 41 Id. at 283. 42 Id. 43 Id. 44 Id. at 284. 45 Id. at 287–90. 46 Autocephalous Greek-Orthodox Church of Cyprus v. Goldberg & Feldman Fine Arts, Inc., 717 F. Supp. 1374, 1404 (S.D. Ind. 1989). 47 Autocephalous Greek-Orthodox Church, 917 F.2d at 279. 48 Autocephalous Greek-Orthodox Church, 717 F. Supp. at 1400–02. 49 Id. at 1403–04. 50 Id. at 1401–02, 1404. 51 See Jake Hanrahan, How I Became One of the Most Successful Art Smugglers in the World, Vice (Oct. 12, 2012), https://​www​.vice​.com/​en​_us/​article/​ex5qj4/​how​-i​-became​-one​-of​-the​-most​-successful​ -art​-smugglers​-in​-the​-world [https://​perma​.cc/​ATD4​-59DF]; Tasoula Hadjitofi, The Icon Hunter: A Refugee’s Quest to Reclaim Her Nation’s Stolen Heritage (Pegasus Books 2017). 52 Autocephalous Greek-Orthodox Church, 717 F. Supp. at 1391. 53 Id. at 1380. 38 39

Cultural heritage, galleries and auction houses  463 looting and their placement on the art market. First, they were ‘forcibly’ removed from their in situ location (hacked off of a religious building).54 Then they were ‘conserved’ to make them more marketable to a broader public.55 The ‘conservation’ involved flattening the mosaics from the curved space of the apse to a flat presentation to appear more marketable in an art gallery.56 The mosaics returned to Cyprus serve as a symbol of the nation’s and the church’s determination in recovering its stolen heritage. A hidden treasure trove In the 1960s, Lydian tombs in Güre, Turkey, were extensively looted. Locals found gold, silver, and bronze artifacts dating from the sixth century B.C., plundered the objects, and the works eventually entered the art market through New York art dealer John Klejman.57 Between 1966 and 1968, the dealer sold the collection (now known as the ‘Lydian Hoard’) to the Metropolitan Museum of Art (the ‘Met’) in New York for over $1.5 million. The objects were placed in storage for years. In 1984, part of the collection went on public display, but the provenance of the collection was misrepresented, with the museum describing the pieces as ‘Eastern Greek.’ However, even with this misinformation, Turkish authorities determined that the works originated from the Uşak region (the pieces closely resembled other looted items recovered by Turkish authorities). In 1986, Turkey demanded the repatriation of the hoard, but the Met refused. The following year, the Turkish government initiated a lawsuit.58 The country alleged that the museum intentionally concealed the origins of the collection in an attempt to avoid a repatriation demand by Turkey due to the assertion that the objects were illegally excavated and sent to the United States in contravention of Turkey’s patrimony law. Turkey claimed that its law vests ownership in the country for all artifacts found within its borders. In response, the museum moved to dismiss the case due to the expired statute of limitations. The museum asserted that it had acted in good faith when acquiring the hoard, and that Turkey had unreasonably delayed in filing a claim. Relying on New York’s Demand and Refusal Rule (which holds that the statute of limitations only begins to run once the true owner has made a demand for the property’s return and the good faith purchaser refuses to do so), the court denied the museum’s motion. In this case, the statute of limitations only began to run in 1986, after the Met refused to return the property. Ultimately, the case did not go to trial. In 1993, the parties reached a settlement that resulted in the repatriation of the Lydian Hoard. The agreement also provided for collaborative efforts to promote cultural projects, including excavations in Turkey, the development of a fellowship in Turkey, art conservation, and reciprocal loans. The collection was sent to the Uşak Museum in 1995.

Id. Mark Rose, Special Report: Church Treasures of Cyprus, Archaeology (July 1998), https://​ archive​.archaeology​.org/​9807/​etc/​special​.html [https://​perma​.cc/​PE7M​-TTS5]. 56 Id. 57 Jeannette Greenfield, The Return of Cultural Treasures 420 (Cambridge University Press 2007). 58 Republic of Turkey v. Metropolitan Museum of Art, 762 F. Supp. 44 (S.D.N.Y. 1990). 54 55

464  Research handbook on intellectual property and cultural heritage Unfortunately, the contentious battle includes a disappointing post-script. Some of the items from the hoard (including the famous golden hippocampus brooch) were subsequently stolen from their home in the Turkish museum and replaced with fakes. Ten people, including the Uşak Museum’s director, were charged in connection with the theft.59 Private party claims Private parties also make claims for the return of cultural objects. It is estimated that during World War II, 20% of all art in Europe was displaced, stolen, or destroyed.60 As such, many legal claims arise concerning both national, institutional, or private ownership of cultural objects. Families that owned large collections continue to track down their art collections. One family that is actively making claims against museums and governments consists of the descendants of the wealthy German banking family, the Gutmanns. The heirs to the family’s fortune and art collection have successfully recovered dozens of objects, but their work continues today as they seek to reclaim other valuable objects.61 Another family active in the restitution arena is the descendants of Max Stern. One of the best-known cases involving the Max Stern Estate is Vineberg v. Bissonnette.62 There, the court made a landmark ruling that equated a ‘forced sale’ with a theft. In 1937, Max Stern, a German-Jewish dealer, had been ordered by the Reich Chamber for the Fine Arts to liquidate the inventory of his gallery, a collection of hundreds of artworks. This collection included Girl from the Sabine Mountains, by Franz Xaver Winterhalter. The collection was auctioned through Lempertz Auction House in a sham auction; the works sold for well below their fair market value, but the transactions allowed the Nazis to claim that the works were ‘sold’ to them, not stolen. Tellingly, Stern did not even receive payment from the auction house. Stern fled to Canada shortly after the forced liquidation. After the war’s end, Stern attempted to recover his artworks. He successfully recovered five works during his lifetime. Upon his passing, his estate took up this mantel. One of the works it pursued was the Girl from the Sabine Mountains. In 2005, the estate discovered that the work was consigned to auction in Rhode Island in the United States after the Art Loss Registry located it. The estate demanded the return of the painting, but the consignor refused. The parties engaged in litigation, with the court ultimately ruling in favor of the estate. In November 2008, the U.S. Court of Appeals for the First Circuit affirmed that the forced sale of the painting constituted a ‘de facto confiscation,’ and thus title did not transfer with the work. In other words, a ‘forced sale’ was equated to a theft. This ruling has been important precedent for other victims of Nazi persecution who were ‘coerced’ to sell their property due to threats against them and their families. The painting was returned to the Max Stern Estate in 2008.

59 Unknown author, 10 Charged in Missing Brooch Case, Turkish Daily News (July 14, 2006), http://​arama​.hurriyet​.com​.tr/​arsivnews​.aspx​?id​=​-583486. 60 Greg Bradsher, Documenting Nazi Plunder of European Art, The Record (November 1997), https://​www​.archives​.gov/​research/​holocaust/​records​-and​-research/​documenting​-nazi​-plunder​-of​ -european​-art​.html 61 See generally Simon Goodman, The Orpheus Clock: The Search for My Family’s Treasures Stolen by the Nazis (Scribner 2016). 62 529 F.Supp.2d 300 (D.R.I. 2007); aff’d 548 F.3d 50 (1st Cir. 2008).

Cultural heritage, galleries and auction houses  465 Communications and Negotiations The Euphronios Krater One of the most highly publicized antiquities disputes involved an antiquity that never even appeared on the open market. Rather, it was an object that was privately sold to a museum, rather than publicly put on sale through a gallery or auction house. However, the acquisition and its subsequent dispute has had a major effect on the art and antiquities market. In 1972, the Metropolitan Museum of Art (the ‘Met’) acquired the Sarpedon Krater, now famously known as the ‘Euphronios Krater.’ The work, dating from around 515 B.C.E., was painted by Euphronios, with a scene depicting the death of Sarpedon (son of Zeus) attended by Hypnos (Sleep), Thanatos (Death), and Hermes (the Messenger), all rendered in the red-figure style.63 The reverse features Athenian youths preparing for battle.64 Due to its rarity and quality, the seller received $1 million for the work, at the time the highest price paid by a museum for an antiquity.65 Even after questions about the object’s provenance were raised, the Met’s then-director, Thomas Hoving, announced that the object had been purchased from a private English collector, but he declined to reveal the identities of the vase’s dealer and previous owner.66 The museum insisted that secrecy was necessary to protect a potential source of future acquisitions.67 Almost immediately, suspicions were raised that the piece had been looted.68 Italian authorities were convinced it was smuggled out of Italy in contravention of the nation’s patrimony law. However, authorities were unable to prove the object’s origin or date of removal.69 Without that evidence, Italian authorities were unable to successfully demand repatriation.70 Finally, in 1995, evidence was discovered by the Italian Carabinieri that revealed information about the krater. Indeed, the item had been looted by a criminal network that operated throughout the whole of Italy.71 In particular, the krater was stolen from an Etruscan tomb 63 Sarah Keim, The Euphronios Krater Controversy, Penn St. U. Museum Stud. (Feb. 1, 2015), https://​sites​.psu​.edu/​museumstudies2015/​2015/​02/​01/​the​-euphronios​-krater​-controversy/​ [https://​perma​ .cc/​VUH5​-TQK5]. 64 Id. 65 Id. 66 Id. 67 James R. Mellow, A New (6th century B. C.) Greek Vase for New York, N.Y. Times (Nov. 12, 1972), https://​www​.nytimes​.com/​1972/​11/​12/​archives/​a​-new​-6th​-century​-b​-c​-greek​-vase​-for​-new​-york​ -greek​-vase​-the​-other​.html [https://​perma​.cc/​8VUE​-MHG8]. 68 See Randy Kennedy & Hugh Eakin, The Met, Ending 30-Year Stance, Is Set to Yield Prized Vase to Italy, N.Y. Times (Feb. 3, 2006), https://​www​.nytimes​.com/​2006/​02/​03/​arts/​03muse​.html​?mtrref​=​ www​.google​.com​&​assetType​=​REGIWALL [https://​perma​.cc/​N5XX​-LVUY] (“When the Met bought the krater in 1972 for more than $1 million from a dealer whose practices were already under scrutiny, its appearance stunned the art world and led to front-page headlines about its provenance. Italy almost immediately began an investigation, with help in the United States from the F.B.I.”). 69 See id. (“When the Met bought the krater in 1972 for more than $1 million from a dealer whose practices were already under scrutiny, its appearance stunned the art world and led to front-page headlines about its provenance. Italy almost immediately began an investigation, with help in the United States from the F.B.I.”). 70 See id. (Noting that Italian repatriation efforts “foundered” in the 1970s, impliedly due to lack of evidence). 71 See generally, Peter Watson and Cecilia Todeschini, The Medici Conspiracy: The Illicit Journey of Looted Antiquities – From Italy’s Tomb Raiders to the World’s Greatest Museums (PublicAffairs 2007).

466  Research handbook on intellectual property and cultural heritage in Cerveteri, Italy.72 (Quite tragically, the investigation revealed that the priceless artifact was miraculously discovered intact, but was intentionally broken to more easily smuggle the piece from Italy and into the U.S.73) Italian officials raided the Swiss warehouse of antiquities dealer Giacomo Medici, exposing thousands of stolen objects and the records of their sales to museums and collectors.74 Medici, who subsequently faced prosecution in Italy for his criminal enterprise, bought the krater from tomb robbers who found the artifact in the Etruscan cemetery of Cerveteri.75 He then sold the krater to Robert Hecht, an American antiquities dealer, who in turn sold it to the Met.76 After authorities discovered the krater’s true history, the Italian government demanded its return from the New York museum.77 Due to Italy’s strong patrimony laws,78 antiquities found within its soil belong to the Republic of Italy; it is illegal to sell or export these objects without permission from authorities. However, restitution claims are usually more difficult to make because it is often challenging for nations to prove from where an object originates and when an object left the country.79 Italy was only able to prove this information because authorities happened upon records of the looting network, but that is not typical.80 In 2006, the Met and the Republic of Italy reached an agreement. The museum agreed to return over a dozen objects, including the Euphronios Krater.81 In exchange, Italy agreed to offer the Met long-term loans of works of comparable value.82 The krater was returned to Italy in January 2008, where it was displayed with other returned objects at the exhibition Nostoi: Capolavori Ritrovati, before being exhibited at Rome’s museum of Etruscan art, Villa Giulia, and finally returning to its permanent home in Cerveteri in 2014.83 The artifact has gained wide recognition and is a symbol of the repatriation movement.84 The dispute over the Euphronios Krater was an internationally publicized case that shed light on the robust market for looted art, and it brought attention to the fact that internationally

72 Euphronios (Sarpedon) Krater, Trafficking Culture (Sept. 6, 2012), https://​traffickingculture​ .org/​encyclopedia/​case​-studies/​euphronios​-sarpedon​-krater/​ 73 Lisa J. Borodkin, The Economics of Antiquities Looting and a Proposed Legal Alternative, 95 Colum. L. Rev. 377, 383 (1995). 74 Vernon Silver, The Lost Chalice: The Epic Hunt for a Priceless Masterpiece 174 (William Morrow 2009). 75 Id. at 50–51. 76 Euphronios (Sarpedon) Krater, supra note 72. 77 Silver, supra note 74, at 215. 78 See Lauren Fae Silver, Recapturing Art: A Comprehensive Assessment of the Italian Model for Cultural Property Protection, 23 N.Y. Int’l L. Rev. 1 (2014). 79 See Marion P. Forsyth, International Cultural Property Trusts: One Response to Burden of Proof Challenges in Stolen Antiquities Litigation, 8 Chi. J. Int’l L. 197 (2007); see also Kavita Sharma, From the Mayan Machaquila Stele to Egyptian Pharaoh Amenhotep’s Head: United States Courts’ Enforcement of Foreign National Patrimony Laws after United States v. Schultz, 56 Hastings L. J. 749 (2005); Eric C. Schneider, Plunder or Excavation? Observations and Suggestions on the Regulation of Ownership and Trade in the Evidence of Cultural Patrimony, 9 Syracuse J. Int’l L. & Com. 1, 14 (1982). 80 Kennedy & Eakin, supra note 68. 81 Id. 82 Id. 83 The University of Glasgow, The Metropolitan Museum of Art’s ‘Hot Pot’, Future Learn, https://​ www​.futurelearn​.com/​courses/​art​-crime/​0/​steps/​11865 [https://​perma​.cc/​L8C5​-QRK7]. 84 See id.

Cultural heritage, galleries and auction houses  467 renowned and reputable institutions play a role in the market for loot. The case also demonstrated a nation’s determination in reclaiming objects, halting the plunder of objects from its borders, investing resources in uncovering looting networks, and attempting to stop criminal networks. This ultimately led other institutions to cooperate with the Republic of Italy, return loot,85 and more heavily scrutinize their acquisitions.86 Finally, the matter revealed a cooperative approach for resolving antiquities disputes. Rather than proceeding through litigation, the Met and Italian officials negotiated a widely lauded loan agreement.87 By returning looted objects to Italy, the museum received access to long-term loans and other favorable treatment by Italy.88 This approach demonstrates the value of mutually beneficial agreements and diplomatic attempts to resolve a highly charged dispute. Italy is not the only nation to pursue repatriation outside the scope of litigation. Using an alternative, and less contentious, approach is sometimes preferred due to the benefits gained by avoiding litigation. Engaging in alternative dispute resolution (ADR)89 is often less costly and more time efficient. Additionally, it allows parties to avoid drawn-out proceedings involving jurisdictional questions and choice of law disputes, the uncertainty of judicial determinations, and the unenforceability of judgments in foreign jurisdictions.90 At the same time, avoiding litigation allows parties to control the proceedings and address ethical and moral concerns that do not weigh as heavily in a court’s legal analysis. Italy’s neighbor, Greece, has effectively used alternative dispute resolution to recover looted property. Notably, the Greek government successfully negotiated the repatriation of four antiquities from the J.P. Getty Museum believed to have been illegally exported from the Mediterranean nation.91 After learning that the country intended to file a legal complaint for the return of the four objects, the Getty Museum consented to out-of-court negotiations in order to minimize costs and avoid negative publicity.92 Although the museum had not been sufficiently diligent in its acquisition policies, the negotiation with Greece ultimately led to the passage of stricter acquisition guidelines for the institution, as well as cooperative projects between the 85 Italian Ministry of Culture Agreement, Museum of Fine Arts Boston, https://​www​.mfa​.org/​ collections/​provenance/​antiquities​-and​-cultural​-property/​italian​-ministry​-of​-culture​-agreement [https://​ perma​.cc/​VJ5F​-YK5K]; Cass Cliatt, Princeton University Art Museum and Italy to Sign Agreement Over Antiquities, Princeton U. (Oct. 26, 2007), https://​www​.princeton​.edu/​news/​2007/​10/​26/​princeton​ -university​-art​-museum​-and​-italy​-sign​-agreement​-over​-antiquities [https://​perma​.cc/​J84E​-LJ52]; Kelley N. Schreiber, Cleveland Museum of Art to Transfer Roman Sculpture of Drusus Minor to the Republic of Italy, Cleveland Museum of Art (Apr. 18, 2017), https://​www​.clevelandart​.org/​about/​press/​media​-kit/​ cleveland​-museum​-art​-transfer​-roman​-sculpture​-drusus​-minor​-republic​-italy​-0 [https://​perma​.cc/​Q8RZ​ -DNKP]; Unknown author, J. Paul Getty Museum to Return 26 Objects to Italy, J. Paul Getty Museum (Nov. 21, 2006), https://​www​.getty​.edu/​news/​press/​center/​statement06​_getty​_italy​_meeting111706​ .html [https://​perma​.cc/​PZ7H​-6NYK]. 86 The case led to the appointment of the first provenance curator in a U.S. institution at the Museum of Fine Arts in Boston. Italian Ministry of Culture Agreement, supra note 85; Cliatt, supra note 85; Schreiber, supra note 85; J. Paul Getty Museum to Return 26 Objects to Italy, supra note 85. 87 Kennedy & Eakin, supra note 68. 88 Id. 89 Alternative dispute resolution (ADR) methods include arbitration, mediation, and negotiation. 90 Irini Stamatoudi, Alternative Dispute Resolution and Insights on the Cases of Greek Cultural Property: The J.P. Getty Case, the Leon Levy and Shelby White Case, and the Parthenon Marbles Case, International Journal of Cultural Property (2016) 23: 433–457, 434–37. 91 Id. at 441. 92 Id. at 443

468  Research handbook on intellectual property and cultural heritage museum and Greece, such as loan programs. The Greek government has also negotiated with private parties to recover stolen artifacts. Wealthy collectors Leon Levy and Shelby White had come under public scrutiny for a number of acquisitions that were later revealed as looted. Two such items (an early fifth-century B.C. grave stele and a fourth-century B.C. bronze calyx krater) were illicitly removed from Greece and eventually repatriated after a series of difficult negotiations between the Greek Ministry of Culture and the American collectors.93 Yet for all its successes, the Greek government has been unable to persuade the British government to engage in discussions concerning the marble sculptures taken forcibly from the Parthenon and purchased by Britain in 1816. Often considered an emblematic symbol of Ancient Greek and Athenian culture, the Parthenon Marbles hold incredible significance for the Greek people. In perhaps the most hotly contested and longest running antiquities controversy, the British government purchased some of the Parthenon Marbles from British ambassador Lord Elgin. The ambassador and his team violently removed the carvings from the ancient structure (purportedly without the requisite permission from government authorities) and then sold them to the British government after he went bankrupt. The British government’s claim relies on the fact that Lord Elgin obtained a firman94 from an Ottoman official granting him permission to remove the pieces.95 The Greek government counters that this is incorrect, asserting that Lord Elgin did not have the proper authority to remove any of the marbles. Further, even if Lord Elgin had been granted limited authority to do so, he exceeded the bounds of the firman by removing large pieces from the Parthenon, irreversibly ravaging it.96 The fight to recover these precious marbles has persisted for nearly 200 years; however, the United Kingdom has refused invitations to engage in negotiations with Greece despite recommendations from international bodies such as UNESCO.97 The fight for the priceless artifacts continues to this day. Failed Negotiations The Republic of Turkey has pursued the repatriation of cultural objects on a number of occasions, including disputes which resulted in the high-profile returns of the Lydian Hoard (discussed above), the Elmali Hoard,98 as well as the return of the top-half of the Weary Herakles.99 However, Turkey recently lost a long-fought battle for an object that appeared on the catalog cover for Christie’s ‘Exceptional Sale’ in April 2017. Standing only 9 inches tall, Id. at 446. An official decree, order, license or grant issued by a ruler. See Merriam-Webster Dictionary, https://​www​.merriam​-webster​.com/​dictionary/​firman. 95 Lee Rosenbaum, Elgin’s Shaky Grounds: How Firm was the Firman?, CultureGrrl (Aug. 13, 2009), https://​www​.artsjournal​.com/​culturegrrl/​2009/​08/​deciphering​_elgins​_firman​_is​_t​.html. See also, The British Museum, The Parthenon Sculptures: The Trustees’ statement, https://​www​.britishmuseum​ .org/​about​-us/​british​-museum​-story/​objects​-news/​parthenon​-sculptures/​parthenon​-sculptures​-trustees. 96 Lee Rosenbaum, supra note 95. 97 Tessa Solomon, UNESCO Advisory Board Urges British Museum to Return the Parthenon Marbles, ARTNews (Oct. 4, 2021), https://​www​.artnews​.com/​art​-news/​news/​unesco​-advisory​-board​ -urges​-british​-museum​-to​-return​-the​-parthenon​-marbles​-1234605592/​. 98 Mark Rose, Hoard Returned, The Archaeological Institute of America (May–June 1999), https://​archive​.archaeology​.org/​9905/​newsbriefs/​hoard​.html. 99 Suzie Thomas, Weary Herakles, Trafficking Culture (Dec. 31, 2012), https://​traffickingculture​ .org/​encyclopedia/​case​-studies/​weary​-herakles/​. 93 94

Cultural heritage, galleries and auction houses  469 the Anatolian idol dates from the third millennium B.C. As it is one of only fifteen known complete sculptures of its kind, it was expected to fetch $3 million. Instead, it brought in over $14 million when it sold to an anonymous bidder. Known as the ‘Guennol Stargazer,’ the idol was part of the Guennol Collection owned by Alastair Bradley and Edith Martin. The impressive collection was exhibited at the Met numerous times between 1967 and 2007. The Stargazer was acquired by the Martins in 1961 or before, although this is the earliest date available in the object’s provenance information. It was then passed down through the family by descent. In 1993, the Merrin Gallery acquired the antiquity before selling it to Michael Steinhardt that same year. Steinhardt then consigned the idol to Christie’s. Nine days before the sale, the Consul General of Turkey sent a letter to Christie’s, stating that the idol originated in Turkey and as such rightfully belongs to the nation. Christie’s would not halt the sale. The parties met but were unable to resolve the dispute through negotiations. On the eve of the auction, Turkey filed an injunction in the Southern District of New York to stop the sale, claiming that the statue was illicitly excavated and constitutes national property. The request was denied, and the sale proceeded as planned. Christie’s offered to hold the work for 60 days following the auction to allow Turkey to provide evidence supporting its ownership claim. One month after the sale, Turkey sued Christie’s to recover the Stargazer. The dispute put into question the application of foreign patrimony laws and the evidence required by a State to substantiate its ownership claim over an antiquity. Turkey’s ownership claim is primarily based on the concept of sovereign ownership via a 1906 Ottoman Decree on Antiquities, while Christie’s questioned the validity of this law. In addition, the parties disagreed as to whether the 1906 law applied to the Stargazer because the exact date of the object’s removal from Turkey was unclear. Turkey argued that the law has been in continuous effect since 1906, whereas Christie’s noted that the Republic of Turkey did not exist at the time of the enactment of the 1906 law, and that Turkey did not adopt a patrimony law of its own until the 1980s, meaning that the relevant patrimony law was inapplicable to the case at hand. An eight-day bench trial was held in April 2021. Five months later, the District Court ruled in favor of Christie’s and Steinhardt. The court found that Turkey did not meet its burden of proof to properly establish ownership over the Stargazer. In analyzing the ownership claim, the court examined the 1906 law. Citing US v. Schultz,100 the court concluded that Turkey’s law is in fact a valid ownership law that applies to cultural objects such as the Stargazer. Thus, Turkey could have claimed ownership if it had established that the Idol was removed from the boundaries of modern-day Turkey after 1906. Unfortunately for Turkey, it was unable to prove those facts. Although the court found that it was feasible for societies outside the territory of modern-day Turkey to trade with societies in Anatolia, it ultimately found that there was insufficient evidence to support Turkey’s view that the idol could not have been traded to other regions outside of the boundaries of modern-day Turkey, and that the trade predated 1906. In fact, the court pointed to two specific instances in which idols circulated prior to the enactment of the 1906 patrimony law. Additionally, even if Turkey had established ownership, it slept on its rights, which bars recovery under the doctrine of laches. In terms of the timeliness of the action, the court noted that the Stargazer’s “prominence began to rise after the Martins acquired the Idol in 1961.”

333 F.3d 393 (2d Cir. 2003), cert. denied 540 U.S. 1106 (2004).

100

470  Research handbook on intellectual property and cultural heritage The Martins loaned the Idol to the Met for public display from 1968 through 1993, with very few interruptions. Documents from the Met’s archives indicate that the text of the gallery label for the Idol identified it as being Anatolian and a part of the Guennol Collection. After Steinhardt acquired the Idol, he also loaned the item to the Met from 1999 to 2007. The court noted that the publication history was ‘equally important,’ identifying the Idol as Anatolian and discussing its origins, referencing its place in the Guennol Collection, and indicating its location in the U.S. The court then listed over a dozen publications, the first dating back to 1964. As a result, there was enough publicly available information for Turkey to know about the Stargazer’s whereabouts. It is enough, under New York law, that a party ‘should have known’ of the existence of its claim in order to apply laches. The court held that “Turkey was, or should have been aware, of the existence of the Idol, of its historical significance, of its Anatolian origins, and of its location in New York by the 1990s, if not sooner.” The court found that this delay was prejudicial to the parties because of the death of potential witnesses and the loss of documentary evidence during the intervening decades. Turkey’s claim was untimely and caused prejudice, so the application of laches was appropriate. After the ruling, Turkey filed an appeal contesting the District Court’s decision, which is currently pending. Law Enforcement Seizures The Warrior Statue During the past decade, Cambodian officials have more aggressively sought to protect the nation’s cultural objects, items that are growing in popularity with collectors. The first case to demonstrate this strategy began in 2011 when Sotheby’s was scheduled to auction a tenth-century statue of Duryodhana, an epic warrior. But the sale was stopped because the statue was looted in or around 1972 from Koh Ker.101 In fact, the exact spot from where the footless statue was looted was identified due to a photograph that featured the missing feet.102 According to authorities, the statue was hacked off from its base in the 1970s, during a period of conflicts and civil wars that plagued Cambodia during the 1960s and 1970s. In addition to the loss of life, the Asian nation suffered from the extensive looting of its archaeological sites, including Koh Ker.103 The statue was ushered onto the black market and was sold to a Belgian collector in 1975.104 The collector’s wife eventually consigned the statue to auction in 2010 and imported it into the U.S.105 In June 2010, a Khmer art consultant to Sotheby’s, Emma Bunker, expressed her

101 United States v. A 10th Century Cambodian Sandstone Sculpture, No. 12 Civ. 2600 (GBD), 2013 WL 1290515, at *1 (S.D.N.Y. Mar. 28, 2013). 102 See id. at *3. 103 See Unknown author, Cambodia Profile – Timeline, BBC News (July 20, 2018), https://​www​ .bbc​.com/​news/​world​-asia​-pacific​-13006828 [https://​perma​.cc/​BK7T​-6PWV]; Simon Mackenzie & Tess Davis, Temple Looting in Cambodia: Anatomy of a Statue Trafficking Network, 54 British J. Criminology 722, 727–28 (2014). 104 Ece Velioglu, Anne Laure Bandle & Marc-André Renold, Khmer Statue – Cambodia and Sotheby’s and the United States, Platform ArThemis (June 2014), https://​plone​.unige​.ch/​art​-adr/​cases​ -affaires/​khmer​-statue​-2013​-cambodia​-and​-sotheby2019s​-and​-the​-united​-states [https://​perma​.cc/​ZX9T​ -FHVK]. 105 Id.

Cultural heritage, galleries and auction houses  471 concerns about the object in an email, opining that the statue was stolen from the Prasat Chen Temple.106 However, Bunker had a change of heart. Later that month, she amended her opinion about the sale and advised Sotheby’s that Cambodia generally does not request the return of looted art. She stated, “it did not appear as if Cambodia, as a general practice, was requesting the return of looted Cambodian art and artifacts.”107 While Cambodia had not previously demanded repatriation for stolen works, the nation surprised Sotheby’s by doing so. On auction day, Cambodian officials requested Sotheby’s to withdraw the lot and return it.108 Sotheby’s withdrew the item but supported the consignor’s ownership claims.109 The U.S. Department of Homeland Security then opened an investigation, and the United States filed for forfeiture.110 After much negative press against the auction house, in December 2013, the U.S. government and Sotheby’s signed a settlement agreement and the statue went home.111 Due to that case, the Cambodian government began scrutinizing the art market more closely to investigate other works taken from archaeological sites and temples. As a result of the highly public litigation and Cambodia’s new strategy, other institutions returned items to Cambodia.112 The Persepolis Frieze Another case that involved law enforcement did not begin with a request from the origin nation. Rather, the case began with a tip from an academic who recognized that a work for sale had actually been looted decades prior. The ‘Persian Guard Relief’ is a sixth-century B.C. bas-relief created as part of a procession of figures in Persepolis.113 In October 2017, Dr. Lindsay Allen114 contacted the author of this chapter concerning the limestone object: she saw that it was advertised for sale for $1.2 million as part of the prestigious TEFAF art fair (The European Fine Arts Fair) in New York.115 As an expert in the Achaemenid and Persian

106 Id. (citing United States v. A 10th Century Cambodian Sandstone Sculpture at *3); see also Jason Felch, Rebuilding Koh Ker: A 3D Reconstruction Restores Context to a Looted Khmer Temple, Chasing Aphrodite (Apr. 10, 2014),  http://​chasingaphrodite​.com/​2014/​04/​10/​.rebuilding​-koh​ -ker​-a​-3d​-reconstruction​-restores​-context​-to​-a​-looted​-khmer​-temple/​ [https://​perma​.cc/​73BV​-UYZP]. 107 A 10th Century Cambodian Sandstone Sculpture at *3. 108 Velioglu, Bandle & Renold, supra note 104. 109 Id. 110 Id. For a discussion of the role of civil asset forfeiture in the recovery of looted art and antiquities, see generally Stefan Cassella, Recovering Stolen Art & Antiquities Under the Forfeiture Laws: Who Is Entitled to the Property When There Are Conflicting Claims, 45 N.C. J. Int’l L. 389 (2020) (providing an overview of civil asset forfeiture in the cultural patrimony context). 111 Velioglu, Bandle & Renold, supra note 104. 112 Tom Mashberg & Ralph Blumenthal, Christie’s to Return Cambodian Statue, N.Y. Times (May 6, 2014), https://​www​.nytimes​.com/​2014/​05/​07/​arts/​design/​christies​-to​-return​-cambodian​-statue​.html [https://​perma​.cc/​Y8ZT​-8YR3]. 113 See Norman Sharp, Persepolis, Encyclopedia Britannica (last updated Oct. 23, 2019), https://​ www​.britannica​.com/​place/​Persepolis [https://​perma​.cc/​CL9A​-TMVQ]. 114 See Dr. Lindsay Allen, King’s College London, https://​www​.kcl​.ac​.uk/​people/​lindsay​-allen [https://​perma​.cc/​SY6X​-3Y3K]; see also Louise Lerner, Oriental Institute helps in return of stolen Persepolis artifact to Iran, UChicago News, Oct. 24, 2018, https://​news​.uchicago​.edu/​story/​oriental​ -institute​-helps​-return​-stolen​-persepolis​-artifact​-iran 115 Henri Neuendorf, Police Seize a $1.2 Million Ancient Persian Sculpture at the Ritzy TEFAF New York Art Fair, ARTNET (Oct. 30, 2017), https://​news​.artnet​.com/​market/​relief​-seized​-tefaf​-new​-york​ -1132610

472  Research handbook on intellectual property and cultural heritage Empire,116 she has spent years examining fragmentary reliefs from Persepolis in museums around the world, and she has searched archives for their histories. Due to her extensive experience, she recognized it as stolen from the archaeological site. I then immediately informed authorities about the artifact. One morning in 1935, during sanctioned excavations conducted by the Oriental Institute at the University of Chicago,117 archaeologists discovered that someone hacked the relief off the wall and stole it during the prior evening.118 Authorities were alerted to the theft, and the Iranian government attempted to find the piece, but it disappeared on the global black market.119 Information about the relief, its image, and the Iranian government’s attempts to recover the piece were recorded in photographic and written records. Unfortunately, the work was never recovered because it disappeared on the black market. Unbeknownst to authorities, it was sold to a Canadian museum, where it was stolen again years later.120 Like other antiquities-rich nations, Iran safeguards its cultural heritage, with the nation’s first patrimony laws passing in 1930.121 The global trade in Persian objects surged in the 1920s, and so Iran enacted laws intended to prevent so many significant pieces from leaving the country.122 The bas-relief falls under the protection of the country’s patrimony law.123 Due to its patrimony law, at the time of its theft, title to the relief never passed to the thieves, but remained with the nation. Iran owned the relief and thus it was not possible for the relief to exit Iran legally, absent permission from the cultural ministry. A basic tenet of property law is that a thief cannot transfer title.124 Therefore, any subsequent purchaser also could not gain or transfer title,125 and thus ownership remains with the nation of Iran. For this reason, the relief was stolen material. After the Manhattan D.A. learned of the looted property within its jurisdiction, Homeland Securities Investigations seized it at TEFAF.126 The

See Lerner, supra note 114. See id. 118 See id. 119 See id. 120 See id. 121 National Heritage Protection Act of 3 November 1930 (Iran) [hereinafter Iran Act]. 122 Kamyar Abdi, Reviewed Work: The Great American Plunder of Persia’s Antiquities 1925–1941, 37 Iranian Stud. 738 (2004) (reviewing Mohammad Gholi Majd, The Great American Plunder of Persia’s Antiquities 1925–1941 (UPA 2003)). 123 “Observing Article 3 of this Law, all artifacts, buildings and places established before the end of the Zandieh Dynasty era in Iran, either movable or immovable, may be considered as the national heritage of Iran and shall be protected under State control.” Iran Act, supra note 121, Art. 1. 124 Nemo dat quod non habet is a Latin legal maxim, which literally means “no one can give what he does not have.” The general rule is that no one can transfer a better title than he has himself, meaning that if goods are purchased from a thief or a person who is not the owner, then the buyer does not acquire legal title, even if he has paid value for the items in good faith. The original owner retains their ownership right over the goods. Nemo dat quod not habet, ICLR (last updated 2021), https://​www​.iclr​.co​.uk/​knowledge/​ glossary/​nemo​-dat​-quod​-not​-habet/​ [https://​perma​.cc/​V93J​-SZTP] (codified in Uniform Commercial Code § 2-403 (stating that a thief cannot transfer title to stolen property)). 125 Id. 126 James C. McKinley Jr., Ancient Limestone Relief is Seized at European Art Fair, N.Y. Times (Oct. 29, 2017), https://​www​.nytimes​.com/​2017/​10/​29/​arts/​design/​ancient​-limestone​-relief​-seized​-european​ -fine​-art​-fair​.html [https://​perma​.cc/​6WSX​-UJYG]. 116 117

Cultural heritage, galleries and auction houses  473 Manhattan D.A. then submitted a turnover request in pursuit of repatriation in May 2018.127 The evidence in the filing convinced the dealers that the relief was stolen, leading the parties to reach an agreement. The dealers acquiesced and returned the relief, while the D.A.’s Office agreed not to charge them for any wrongdoing they may have committed when acquiring the artifact. In July 2018, the New York Supreme Court ordered the Manhattan D.A. to transfer custody of the Guard to the Republic of Iran.128 It was repatriated in September 2018. Diplomacy Finally, items are repatriated through diplomatic channels because cultural heritage is valuable currency. An important case of cultural diplomacy involved a government seizure that ultimately led to the highest level of diplomatic talks. Persian Rhyton – A case in ‘archaeo-diplomacy’ In 2002, dealer Hicham Aboutaam sold a 700 B.C.E. silver griffin rhyton to a collector in the United States for $950,000.129 The object originated in Iran, and the dealer hand-carried it on a flight from Switzerland to the United States,130 yet the commercial invoice falsely stated that its origin was Syria.131 Most likely, it was removed from the Kalmakarra Cave, a treasure hunter’s dream. The area was extensively looted between 1989 and 1992 during the conflict between Iran and Iraq.132 The dealer was arrested in December 2003 for illegally importing an Iranian artifact.133 He was released on $500,000 bail,134 and pled guilty to a one-count misdemeanor of providing false information to U.S. Customs, and he was fined $5,000 for his ‘mistake.’135 The rhyton

127 See In the Matter of an Application for a Warrant to Search the Premises Located at the Park Avenue Armory, 643 Park Avenue, New York, New York 10065, Sup. Ct. N.Y., County of N.Y., Pt. 62; see also Fight to Return Plundered Persian Limestone Relief, Amineddoleh & Associates LLC (June 3, 2018), https://​www​.artandiplawfirm​.com/​right​-for​-plundered​-persian​-relief/​ [https://​perma​.cc/​3CJP​ -P79Y]. 128 McKinley Jr., supra note 126. 129 U.S. Dist. Att’y S.D.N.Y., Art Dealer Pleads Guilty in U.S. Court to Customs Violation in Iranian Antiquity Case, U.S. Dep’t. of Justice 1, 2 (2004), https://​www​.cemml​.colostate​.edu/​cultural/​09476/​ pdf/​doj​-aboutaam​-06​-2004​-pr​.pdf [https://​perma​.cc/​F77Z​-SJ8Z] [hereinafter Press Release]. 130 Id. 131 Id. at 2. 132 Press Release, supra note 129. See also, US returns silver griffin rhyton to Iran, The History Blog, http://​www​.thehistoryblog​.com/​archives/​27259 [https://​perma​.cc/​2X3U​-BY45]. 133 Id. 134 Barry Meier & Martin Gottlieb, LOOT: Along the Antiquities Trail; An Illicit Journey Out of Egypt, Only a Few Questions Asked, N.Y. Times (Feb. 23, 2004) https://​www​.nytimes​.com/​2004/​02/​23/​ world/​loot​-along​-antiquities​-trail​-illicit​-journey​-egypt​-only​-few​-questions​-asked​.html [https://​perma​.cc/​ VZ8U​-MUUG]. 135 Press Release, supra note 129; Benoit Faucon & Gregori Kantchev, Prominent Art Family Entangled in ISIS Antiquities-Looting Investigations, Wall St. J. (May 31, 2017), https://​www​.wsj​.com/​ articles/​prominent​-art​-family​-entangled​-in​-investigations​-of​-looted​-antiquities​-1496246740 [https://​ perma​.cc/​69MW​-U4FN].

474  Research handbook on intellectual property and cultural heritage was confiscated by U.S. Immigration and Customs Enforcement (‘ICE’), and sent to a warehouse in Queens, N.Y., that stores over 2,500 objects.136 The important artifact remained in storage for over a decade, until its diplomatic value destined it for return. In what the press referred to as ‘archaeo-diplomacy,’137 the rhyton was presented to Iran during negotiations concerning Iran’s nuclear program. U.S. officials long asserted they could not return the rhyton due to the lack of diplomatic relations between Washington and Tehran. However, former U.S. President Obama presented Iran’s President Rouhani with the valuable item within a few weeks of the U.S. and Iranian presidents speaking directly about reaching a pact on Tehran’s nuclear program. At the time, the State Department stated, “The return of the artifact reflects the strong respect the United States has for cultural heritage property—in this case, cultural heritage property that was likely looted from Iran and is important to the patrimony of the Iranian people….” 138 The diplomatic value of the rhyton carried weight; only two days after its return, the Iranian president accepted a phone call from President Obama. This was the first high-level contact made between the two countries since 1979.139 Although the gift was well received, the relationship between the U.S. and Iran is still at odds due to other world events and political changes since the end of Obama’s presidency.140 Diplomacy and colonial takings Nations today are actively engaging diplomatic channels in discussions about repatriating objects taken during colonial periods. For example, the Netherlands has agreed to return works it had acquired under dubious circumstances while ruling Dutch colonies, and the nation has set a multi-million-euro budget to adopt the recommendations made by an advisory commission, to unconditionally return objects in the national collections found to have been stolen from former colonies. In January 2020, the Netherlands returned 1,500 historical artifacts to Indonesia.141 According to Hilmar Farid, the Director General of the Ministry of Education and Culture of Indonesia, “This is the first time in the history of Indonesia that Indonesian cultural objects or artifacts that were taken [to the Netherlands] are returned … Hopefully this

136 Melissa Klein, Rogue’s Gallery — the Queens Warehouse that Holds a Fortune in Stolen Art, N.Y. Post (June 6, 2010), https://​nypost​.com/​2010/​06/​06/​rogues​-gallery​-the​-queens​-warehouse​-that​-holds​-a​ -fortune​-in​-stolen​-art/​ [https://​perma​.cc/​73XJ​-UBJA]. 137 Alan Boyle, Archaeo-Diplomacy: US Gives Million-Dollar Cup Back to Iran, NBC News (Sept. 27, 2013), https://​www​.nbcnews​.com/​sciencemain/​archaeo​-diplomacy​-us​-gives​-million​-dollar​-cup​ -back​-iran​-8C11281668 [https://​perma​.cc/​DSC9​-L6GS]. 138 Id. 139 Christy Parsons, The Chalice that Helped Make Possible the Iran Nuclear Deal, L.A. Times (Nov. 30, 2013), https://​www​.latimes​.com/​world/​la​-fg​-iran​-griffin​-20131130​-story​.html [https://​perma​ .cc/​N2PY​-LD4Q]. 140 Aaron David Miller, Why are we headed for a blowup with Iran? It began when Trump scrapped the nuclear deal, USA Today (June 17, 2019), https://​www​.usatoday​.com/​story/​opinion/​2019/​06/​17/​ iran​-us​-blowup​-possible​-since​-trump​-quit​-nuclear​-deal​-column/​1471389001/​ [https://​perma​.cc/​LJ4N​ -CPPF]; Phil Stewart & Michelle Nichols, Why U.S.–Iran tensions could quickly escalate into a crisis, Reuters (May 24, 2019), https://​www​.reuters​.com/​article/​us​-usa​-iran​-communication​-insight/​why​-u​-s​ -iran​-tensions​-could​-quickly​-escalate​-into​-a​-crisis​-idUSKCN1SU11V [https://​perma​.cc/​4P5A​-6755]. 141 News Desk, Netherlands returns 1,500 historical artifacts to Indonesia, The Jakarta Post (Jan. 7, 2020), https://​www​.thejakartapost​.com/​news/​2020/​01/​07/​netherlands​-returns​-1500​-historical​ -artifacts​-to​-indonesia​.html.

Cultural heritage, galleries and auction houses  475 paves the way for the return of objects in other European museums.”142 The Dutch nation also committed to returning objects to another former colony, Sri Lanka. However, the matter of repatriation is complicated due to a general lack of information about the rightful owners of the repatriated goods. The returns are difficult not only due to the complexity of the historic record or lack thereof, but also in determining to whom to restitute the property. The Netherlands is struggling with whether to return objects to the nation of Sri Lanka or to the descendants of the original owners.143 Recently, the call to return looted artifacts has intensified. One group of works that has been heavily scrutinized during the past few decades are the Benin Bronzes.144 They are one of the best-known groups of artworks hailing from West Africa. Created between the thirteenth and eighteenth centuries, the objects decorated the royal palace of the Kingdom of Benin (today part of modern-day Nigeria). However, most of the works were plundered by British forces during a punitive expedition145 during the ‘Scramble for Africa’ (a 29-year period when European colonizers partitioned the African continent for economic exploitation). During this period, 200 of the Benin Bronzes were transferred to the British Museum, while the rest were purchased by European, U.S., and German institutions and private buyers. Since gaining independence in 1960, Nigeria has called for the return of the Benin Bronzes.146 This fight has gained momentum during the past couple of decades as museums have returned other culturally significant artifacts to origin nations. Activists have increased their efforts demanding return of the objects because the Benin Bronzes are considered symbols of colonial conquest.147 Nigerian officials believe repatriations are imminent as international protests raise awareness of the historic cultural thefts from Africa.148 In anticipation of the momentous return, the nation is readying a museum to display the valuable objects once they are repatriated. In a decision favorable to repatriation advocates, German officials recently announced it would return a share of the looted Benin Bronzes currently in Germany. Officials seek to return the first set of their Benin Bronzes in 2022, and German authorities have expressed their willingness to return other looted objects.149 Germany’s culture minister, Monika Grütters, stated:

Id. Toby Sterling, Dutch ready to give back seized colonial art – but to whom?, Reuters (Oct. 13, 2020), https://​www​.reuters​.com/​article/​us​-netherlands​-colonial​-artwork/​dutch​-ready​-to​-give​-back​ -seized​-colonial​-art​-but​-to​-whom​-idUSKBN26Y1A8. 144 The name is a misnomer as the pieces are mostly made of brass, while some are made of a mixture of other materials, including bronze, wood, and ceramic. 145 The expedition was in retaliation for the massacre of British officials who entered Benin City, against warning, during a ritual. 146 Kieron Monks, British Museum to return Benin bronzes to Nigeria, CNN (Dec. 14, 2018), https://​ www​.cnn​.com/​2018/​11/​26/​africa/​africa​-uk​-benin​-bronze​-return​-intl/​index​.html. 147 https://​www​.npr​.org/​2021/​04/​30/​992496264/​germany​-will​-repatriate​-benin​-bronzes​-plundered​ -from​-africa​-in​-the​-19th​-century 148 Alexis Akwagyiram, Nigeria expects more Benin Bronze returns as soon as next year, Reuters (Nov. 12, 2020), https://​www​.reuters​.com/​article/​us​-global​-race​-nigeria​-bronzes/​nigeria​-expects​-more​ -benin​-bronze​-returns​-as​-soon​-as​-next​-year​-idUSKBN27S25V. 149 https://​www​.npr​.org/​2021/​04/​30/​992496264/​germany​-will​-repatriate​-benin​-bronzes​-plundered​ -from​-africa​-in​-the​-19th​-century 142 143

476  Research handbook on intellectual property and cultural heritage “We are facing the historical and moral responsibility to bring Germany’s colonial past to light and to come to terms with it.”150 Clearly some of the arguments in favor of returning the Benin Bronzes are similar to demands for the repatriation of the Parthenon Marbles, perhaps the best-known dispute involving cultural heritage. The marbles were violently removed from the Parthenon over two centuries ago,151 and ultimately sold to the British government by the ambassador who removed them from Athens. Since gaining its independence from the Ottoman Empire, the Hellenic Republic has worked to protect its heritage and demand the return of the Parthenon Marbles.152 The priceless objects remain in the British Museum and the Hellenic Republic continues making demands to this day.

CLAIMS AGAINST FOREIGN GOVERNMENTS Although cultural heritage disputes have historically involved the original owner asserting claims for repatriation, a number of recent cases have been filed by auction houses and dealers against foreign governments, demanding that the nation requesting repatriation prove ownership. In a surprising turn of events, the Greek government was sued for sending a letter to an auction house about a questionable antiquity. The controversy began when the Greek Ministry of Culture sent a letter to Sotheby’s about an eighth-century B.C. Corinthian bronze consigned for auction in April 2018 by the Barnet family. scheduled for auction. Upon recognizing a number of factors that raised concerns about the artifact’s legality, the Ministry wrote to the auction house asserting its ownership interest under Greece’s patrimony law. In response to the letter, the auction house and its consignor withdrew the bronze and sued Greece.153 It was the first litigation in history in which a government was sued for inquiring about a suspicious object.154 The case was worrisome because sovereign governments, through ministries or cultural representatives, monitor the market for potentially stolen antiquities. As noted previously, governments often privately and discreetly communicate about questionable objects before sales. This is done to avoid problems with subsequent purchasers or to prevent a looted object from disappearing into a private collection where its location becomes unknown and thus cannot be recovered. It also avoids the costly and time-consuming litigation process. Greece filed a motion to dismiss due to lack of subject matter jurisdiction. Foreign governments can be sued in the U.S., but only under very specific circumstances. The analysis of immunity is a complex question under the Foreign Sovereign Immunities Act (FSIA). Essentially, though, foreign governments cannot be sued in U.S. courts, unless an exception https://​www​.nytimes​.com/​2021/​04/​30/​arts/​design/​benin​-bronzes​-germany​.html Mel Evans, Stephen Fry asks UK to ‘stand on right side of history’ and return Elgin Marbles from British Museum, Metro (Nov. 4, 2020), https://​metro​.co​.uk/​2020/​11/​04/​stephen​-fry​-asks​-uk​-return​ -elgin​-marbles​-from​-british​-museum​-13534742/​; Kate Brown, As Lockdowns Ease in Europe, Greece’s Culture Minister Again Puts the Squeeze on London to Return the Parthenon Marbles, Artnet News (May 26, 2020), https://​news​.artnet​.com/​art​-world/​greece​-parthenon​-marbles​-1870500. 152 http://​odysseus​.culture​.gr/​a/​1/​12/​ea125​.html 153 Barnet as Tr. of 2012 Saretta Barnet Revocable Tr. v. Ministry of Culture & Sports of the Hellenic Republic, 961 F.3d 193 (2d Cir. 2020). 154 The author of this chapter and her law firm represented the Hellenic Republic in the litigation. 150 151

Cultural heritage, galleries and auction houses  477 under the FSIA applies. The exceptions have been litigated since the FSIA’s passage in 1976. Here, Sotheby’s and the consignor asserted that the commercial activity exception applied because Greece’s letter to the auction house ultimately intervened in commerce and led the auction house to halt the commercial sale. The court agreed with that argument and ruled that Greece could be sued in the U.S. Greece appealed the decision. In a landmark decision, a panel of judges on the Second Circuit Court of Appeals unanimously agreed with Greece’s counsel that Sotheby’s and its consignor could not sue Greece in the U.S. It held that the FSIA does not provide jurisdiction in cases involving the enforcement of a sovereign government’s patrimony laws because that is inherently sovereign, not commercial, activity.155 The Court found that Greece’s act of sending the letter was not in connection with a commercial activity outside of the United States. Greece was acting in its sovereign capacity by enforcing laws that regulate ownership and export of nationalized artifacts, which deemed it immune from suit. This outcome supports foreign governments’ role in the art market regarding issues of patrimony. Greece’s victory was a major win for foreign nations because it allows sovereigns to continue monitoring the market for loot without the specter of a lawsuit impeding discussions. In this way, it was also a win for the art market. By allowing nations to communicate about suspicious works on the market, collectors can be more confident that they are not purchasing loot or ill-gotten items. However, the Barnet case emboldened others to sue foreign sovereigns prior to the Second Circuit Court of Appeals’ dismissal of the case against Greece. In late 2018, a dealer and an art collecting couple sued Switzerland. The couple, the Beierwaltes, became known in the 1990s for curating what the press described as “one of, if not, the finest private collections of antiquities in the United States.”156 In August 2018, the Beierwaltes sued the Swiss government in Federal District Court of the District of Colorado.157 Two months later, antiquities dealer Hicham Aboutaam sued the Swiss government in New York, in a matter stemming from the same set of facts. The cases were consolidated in the Federal District Court in New York. In February 2017, Swiss authorities seized approximately 1,200 of Aboutaam’s antiquities, including 18 owned by the Beierwaltes, part of a larger seizure of 12,000 objects in a Geneva warehouse. The seizures were taken pursuant to search and seizure orders. Swiss authorities had been investigating unusual movements of antiquities with suspicious provenances, being imported and exported, potentially in violation of Swiss law. The Beierwaltes and Aboutaam attempted to secure the release of the property, but they failed. The plaintiffs alleged that Switzerland’s seizure was an expropriation because it was a taking in violation of international law. The District Court found there was no taking, reasoning that seizing property during a criminal investigation, and pursuant to a valid warrant, is not an unlawful taking of property that would strip a sovereign of its immunity. The case was dismissed. The Beierwaltes and Aboutaam appealed the decision. The Second Circuit Court

Barnet, 961 F.3d at 196. In 2017, the couple was involved in a forfeiture proceeding in New York concerning a 2,300-year-old marble bull’s head from Lebanon. Georgi Kantchev, How an Ancient Statue Sparked a Global Legal Battle, Wall Street Journal, Sept. 27, 2017, https://​www​.wsj​.com/​articles/​how​-an​ -ancient​-statue​-sparked​-a​-global​-legal​-battle​-1506532132 157 Beierwaltes v. L’Office Federale De La Culture De La Confederation Suisse, No. 19-3457 (2d Cir. Jun. 8, 2021). 155 156

478  Research handbook on intellectual property and cultural heritage of Appeals affirmed the District Court’s opinion, finding that seizures “as part of an ongoing law enforcement investigation” “ordinarily do not constitute a taking at all, much less a taking in violation of international law.”158 The court addressed the public purpose of criminal investigations and acknowledging the public interest in curtailing illicit activities related to cultural heritage.159 Finally, the third litigation in the series of antiquities disputes arising from private parties suing sovereign governments involved Italy.160 Prior to the Second Circuit’s reversal in the Barnet matter, the Safani Gallery in Manhattan sued the Italian government for communicating with the Manhattan District Attorney’s Office about a marble bust long missing from an Italian museum.161 According to the Republic of Italy, the marble bust was excavated from the Roman Forum, and then transferred to an Italian museum. It eventually was sold at Sotheby’s in 1974 and then again in 2011 as ‘the Head of Alexander.’ The Safani Gallery eventually purchased it, intending to sell it at TEFAF in Maastricht in 2018.162 To promote the sale, the gallery posted a photo of it online. An employee from the Italian museum recognized the artifact as the long-lost missing piece, and she contacted the Art Crime Squad of the Italian military police, who in turn provided the Manhattan D.A.’s Office with the tip in February 2018. The D.A. investigated the claim, determined there was a basis for seizure, and then seized the valuable artifact before it left from within New York’s borders. Criminal proceedings took place in the New York Supreme Court between February 2018 and November 2019. After over a year and a half in state court, the Safani Gallery sued the Republic of Italy, and requested that the state court stay its criminal proceedings while jurisdictional determinations were made by SDNY. The first complaint lodged against Italy was essentially that its phone call to law enforcement authorities made the sovereign subject to suit in the United States. The gallery alleged that the phone call was commercial. After the Second Circuit reversed the District Court’s decision in Barnet, the Safani Gallery amended its complaint to allege that Italy lost its immunity because Italy’s communication with the Manhattan D.A. was tantamount to (1) a tort, (2) a waiver of immunity, and (3) an expropriation. In August 2021, the Southern District Court of New York dismissed the case against Italy, found that there was no tort, waiver, or expropriation.163 The court found that Italy’s communication with the Manhattan District Attorney’s office was analogous to someone who reports a crime.164 The line of cases filed against foreign sovereigns was troubling because, if the private parties were successful in their lawsuits, it could have prevented government entities, like ministries of culture, from communicating with art market participants and fulfilling its sovereign responsibility to protect heritage. It would silence those nations and allow the art market to go unchecked.

Beierwaltes, 2021 WL 2324544 at *1. Id. at *8–11. 160 The author of this chapter and her law firm represented Italy in the litigation. 161 Safani Gallery, Inc. v. The Italian Republic, No. 19-CV-10507 (VSB), 2021 WL 3292262, at *1 (S.D.N.Y. Aug. 2, 2021). 162 Id. 163 Id. at *3. 164 Id. at *4. 158 159

Cultural heritage, galleries and auction houses  479

THE IMPORTANCE OF PROTECTING AND REPATRIATING CULTURAL HERITAGE The return of stolen objects to their rightful owners (often nations protecting cultural heritage on behalf of its population and for mankind at large) is something commendable; victims of theft should be made whole. Although repatriations are not always publicly celebrated, cultural heritage can be used as a diplomatic tool. Just as objects from centuries, or even millennia, ago form part of our shared heritage, cultural artifacts can be used today to mend fences, collaboratively preserve our shared history, and build bridges for the future. Repatriations are an opportunity to educate the public about the art market. But more than that, repatriations are an opportunity to honor the past. In addition, these returns allow for the recognition and honor of ethnic groups and other communities around the globe. As we grapple with looting from the past, we have the opportunity to treat objects with respect and return them to their rightful homes. Art is powerful. We may not all share the same language, but art transcends words. Art expresses something deeper in all of us – it expresses emotions, it presents beauty and wonder, it communicates a shared history, and it represents our humanity. It is our responsibility to protect heritage, respect it, and share our greatest human achievements with future generations.

25. IP issues relating to cultural heritage platforms and new business models Julia Wildgans

Article 27(1) of the Universal Declaration of Human Rights states that “everyone has the right freely to participate in the cultural life of the community, to enjoy the arts and to share in scientific advancement and its benefits.” Therefore, the right to access, enjoy and participate in cultural achievements of the community is a human right. It is thus an “inalienable political right of free development of the personality in a state.” Everyone has this right by nature of being human. Cultural heritage platforms are able to make a significant contribution to the realization of this right – in particular by providing access to cultural heritage resources. In the past, however, their activities have often been hampered by highly restrictive IP legislation. At the same time, the cultural heritage platforms themselves have been criticized for unduly restricting access to public cultural heritage – for both non-commercial and commercial purposes – through restrictive IP rights management. This chapter now examines the legal framework of cultural heritage platforms in terms of the opportunities that the current EU IP law offers to stakeholders, as well as any risks that the current legal framework entails. For the analysis, a common understanding of the term ‘cultural heritage’ is needed before the role of cultural heritage platforms is differentiated from other stakeholders in the IP conflict on cultural heritage. Subsequently, selected IP issues are addressed which might be raised in connection with digitization and making available content. In the end, some possibilities about the future of cultural heritage platforms are presented.

WHAT IS CULTURAL HERITAGE? For an official legal definition of cultural heritage, Art. 1 and 4 of the UNESCO Convention on the Means of Prohibiting and Preventing the Illicit Import, Export and Transfer of Ownership of Cultural Property (No. 1103/1970) in 1970 shall be consulted:1 In Art. 1 ‘cultural property’ is defined as property which, on religious or secular grounds, is specifically designated by each State as being of importance for archaeology, prehistory, history, literature, art or science and is limited to the categories stated in Art. 1(a)–(k). Art. 4 sets out that this cultural property belongs to cultural heritage if it (a) was created by the individual or collective genius of nationals of the State concerned or is of importance to the State concerned created within the territory of that State by foreign nationals or stateless persons resident within such territory; (b) was found within the national territory; (c) was 1 Some authors lament that a generally agreed definition of ‘cultural heritage’ doesn’t exist, see Janet Blake, ‘On Defining the Cultural Heritage’ (2000) 49 The International and Comparative Law Quarterly 61, 62f.

480

IP issues relating to CH platforms and new business models  481 acquired by archaeological, ethnological or natural science missions, with the consent of the competent authorities of the country of origin of such property; (d) has been the subject of a freely agreed exchange; (e) was received as a gift or purchased legally with the consent of the competent authorities of the country of origin of such property. The restriction to tangible cultural goods was thus abolished with the UNESCO Convention for the Safeguarding of the Intangible Cultural Heritage (No. 3028/2002) in 2003, whereby cultural heritage now encompasses “practices, representations, expressions, knowledge, skills – as well as the instruments, objects, artefacts and cultural spaces associated therewith” (Art. 2).2 Cultural heritage may be as diverse as culture is itself: music (sheet and songs), paintings, films, photographs, buildings as well as myths, customs, language, dances and techniques.3 It usually starts with the creation of an artist which somehow gets adopted by a part or the entire human community and may represent civilization, identity and values.4 Notwithstanding, the European Union declared the year 2018 the ‘European Year of Cultural Heritage’ to strengthen and highlight the multifaceted significance of this legacy for Europe and its citizens.5 According to its nature and its topic, the following contribution is limited to the part of cultural heritage which may be content of cultural heritage platforms and subject to copyright protection,6 accepting a restriction of the object of investigation, since ‘cultural heritage’ is nearly ‘everything in society.’7

IP AND CULTURE: CONFLICT BETWEEN STAKEHOLDERS When talking about IP issues, it is very important to become aware of the differences in interests of stakeholders. Therefore, in 2020, the European Commission invited everyone who was interested to provide feedback on the digital preservation of Europe’s cultural heritage.8 The results of the public consultation will help to revise the 2011 Recommendation on the digitization of cultural heritage to propose more modern rules on its online accessibility. Until now, the results to this survey have not yet been published. Nevertheless, conjectures about the conflict may be possible based on former publications. There are several stakeholder groups involved in IP issues at cultural heritage platforms: the user of the platform, the operator of the platform, the institution that provides content for Criticizing the previous restriction to ‘cultural property’ as too narrow: Blake (n 1) 66f. Commission of the European Communities, ‘Communication from the Commission to the European Parliament, the Council, the European Economic and Social Committee and the Committee of the Regions on a European Agenda for Culture in a Globalizing World’ para 2. accessed 13 May 2021. 4 Fraunhofer Center for International Management and Knowledge Economy (IMW), ‘Cultural Heritage in Crisis: Cultural Heritage Research at European Level – Challenges in Times of Climate Change and Digitalization’ 6 accessed 13 May 2021. 5 Fraunhofer Center for International Management and Knowledge Economy (IMW) (n 4) 72. 6 See below for more details. 7 Blake (n 1) 68. 8 Claudia Guske, ‘Kommission befragt Öffentlichkeit zu Digitalisierung des europäischen Kulturerbes’ (Europäische Kommission – Vertretung in Deutschland, 22 June 2020) accessed 13 May 2021. 2 3

482  Research handbook on intellectual property and cultural heritage the platform, the author of this content, the rights holder of this content, the State… Even the members of these groups may be diverse: there are private galleries, public libraries, private archives, public museums who may upload content on cultural heritage platforms. But as we will see, there are also private persons who upload content. The mesh is getting even more complex when it is considered that private persons may not only upload content, but also download content from a platform, thus are regarded as users. In the users group they foregather with huge companies with commercial interest, small start-ups as well as teachers, researchers, and students. Every stakeholder group has its own interest in cultural heritage which needs to be considered when legislating IP. This chapter may not give an exhaustive description of these interests; it may only attempt an overview as a basis for the legal questions discussed below. First of all, it is the aim of copyright to protect the author’s rights, especially their interest to receive personal recognition as well as to ensure their economic certainty since this is also a human right: Art. 27(2) of the Universal Declaration of Human Rights provides the right to protection of the moral and material interests resulting from any scientific, literary or artistic production of which they are the author. In modern society, the author transfers their rights to a third person who undertakes publication and dissemination of the work. Unlike the author, these rights holders are not interested in a dissemination of the work as widely as possible, but in a remuneration as high as possible.9 At the same time, copyright needs to ensure that cultural heritage is made available for the general public in order to satisfy their strong need of access to and dissemination of information.10 In the EU, this is also set out in the preamble of the Treaty on the functioning of the European Union.11 In the past, members of the general public were primarily interested in enjoying cultural goods; but with digital transformation, the general public (and more and more private users) become interested in transformative (re-)use of works as well. After all, this is also the foundation to create new works and foster innovation.12 Cultural heritage platforms may support authors as well as users: with their services of digitization and making available, they provide wide access and a lot of opportunities to enjoy, learn and study cultural goods. Digitization of works in galleries, libraries, archives and museums add value and ensure documentation, preservation and (even interdisciplinary and international) research on cultural heritage.13 In the past, it has been necessary to travel to other countries to explore their culture. Nowadays, you may discover the hidden treasure of foreign countries regardless of your location and financial means, and even without moving away from your desk, just using your internet browser.14 9 Nadine Klass, Hajo Rupp and Julia Wildgans, ‘Bringing Europe’s Cultural Heritage Online: Initiatives and Challenges’ in Irini Stamatoudi and Paul Torremans (eds), EU Copyright Law: A Commentary (Edward Elgar Publishing 2021) s 22.98. 10 Paul Torremans, ‘Copyright Infringement, Exceptions and Limitations, and Access to Shared Cultural Heritage Across Borders’ in Andrea Wallace and Ronan Deazley (eds), Display at your own risk: An experimental exhibition of digital cultural heritage 299. 11 Jörg Philipp Terhechte, ‘AEUV Präambel’ in Eberhard Grabitz, Meinhard Hilf and Martin Nettesheim (eds), Das Recht der Europäischen Union (71st edn, 2020) s Präambel marg 19. 12 Klass, Rupp and Wildgans (n 9) s 22.100 and 22.102. 13 Fraunhofer Center for International Management and Knowledge Economy (IMW) (n 4) 34. 14 Interreg Europe, ‘Digital Solutions in the Field of Cultural Heritage: A Policy Brief from the Policy Learning Platform on Environment and Resource Efficiency’ 3 accessed 13 May 2021.

IP issues relating to CH platforms and new business models  483 New 3D technologies may even enable citizens from all over the world to walk through Notre Dame in Paris before the fire in 2019 and through Forum Romanum in Rome.15 In doing so, cultural heritage platforms pursue very different goals: if they are funded by the government (such as Europeana or corresponding national projects, such as the German ‘Deutsche Digitale Bibliothek’ or the Czech ‘eSBÍRKY’), the economic interests usually take a back seat due to the strong public interest in the dissemination of cultural heritage. Thereby, it should not be forgotten that there is a political interest behind every State subsidy – in the case of cultural heritage, these are always based on an upstream decision made by State authorities on national level or intergovernmental organizations on which assets to preserve for future generations.16 However, the statement about the minor importance of commercial interests does not apply to all operators of cultural heritage platforms. In recent years, there have been some digitization projects of – also State-funded – cultural institutions that were driven by economic interests as well.17 These are – by their very nature – even more evident when platforms are not operated by the State: their interest lies in profit maximization as a result of the economic exploitation of the processed services. Therefore, it is necessary to take a closer look on the different operating platforms who deal with cultural heritage:

TYPES OF CULTURAL HERITAGE PLATFORMS As stated above, every stakeholder group involved in the conflict on IP and cultural heritage is diverse – so are the cultural heritage platforms. Again, it is not the aim of this chapter to give an exhaustive overview. The platforms below may serve as a model for not-mentioned, similar platforms. Europeana and Its National Aggregators Europeana is a digital library network which was launched by the European Commission in 2008.18 It may serve as a single access point to collections of close to 4,000 institutions with more than 53 million digital items (image, text, sound, video and 3D material) available.19 Europeana was not designed as a content provider, but as a facilitator for the search of cultural goods.20 Thus, Europeana has not stored items itself21 in the first period but soon started 15 Krupali Krusche, ‘3D Documentation and Visualization of the Forum Romanum: The DHARMA Forum Project’ in Marinos Ioannides and others (eds), Digital Heritage. Progress in Cultural Heritage: Documentation, Preservation, and Protection, vol 11196 (Springer International Publishing 2018) 281 accessed 13 May 2021. 16 Blake (n 1) 69. 17 Museumsfotos [2018] BGH I ZR 104/17, 2019 Gewerblicher Rechtschutz und Urheberrecht (GRUR) 284 and more below. 18 Klass, Rupp and Wildgans (n 9) s 22.98. 19 Europeana, ‘About Us’ accessed 13 May 2021; Klass, Rupp and Wildgans (n 9) s 22.30 and 22.32; Zois Koukopoulos and Dimitrios Koukopoulos, ‘Evaluating the Usability and the Personal and Social Acceptance of a Participatory Digital Platform for Cultural Heritage’ (2019) 2 Heritage 1. 20 Klass, Rupp and Wildgans (n 9) s 22.41. 21 Klass, Rupp and Wildgans (n 9) s 22.41.

484  Research handbook on intellectual property and cultural heritage hosting projects: ‘Europeana 1914–1918’ asks individuals to upload letters, pictures and other things about World War I.22 But still, such projects are the minority of the content provided by Europeana.23 Europeana is supported by national aggregators in the EU Member States: for example, the platform ‘Deutsche Digitale Bibliothek’24 brings together digital offerings from cultural and scientific institutions in Germany and from German cultural and scientific institutions abroad.25 Therefore – like Europeana – it doesn’t store the content itself, but the responsibility remains with the cultural and scientific institutions cooperating with the German Digital Library.26 These institutions decide whether and to what extent they grant licenses.27 In the German Digital Library, the content is either labeled with a license or a notice about the legal status of the work, which also applies to the reduced representation of the content in the German Digital Library itself.28 The same applies to the Czech web portal eSBÍRKY, which views digitalized collection items (photographs, audio-video recordings or 3D models, etc.) from Czech museums and galleries,29 and the Lithuanian portal Paveldas,30 which aggregates digitized objects of Lithuanian libraries, museums and archives.31 The latter, however, has very restrictive terms of use, unlike the other platforms, which favor and promote open access.32 National, Regional, and Local GLAMs Most of the digitization projects (including the making available process) take place at a lower level: galleries, libraries, archives and museums (GLAMs) digitize their collections and make them available through their own online platforms. The famous French Louvre, for example, holds a collection with more than 480,000 entries which may be browsed by everyone around the world on the internet.33 But users have to be careful: only a small part of the works presented can actually be used as freely as it appears at first glance due to their presentation.

22 Europeana, ‘1914–1918’

accessed 13 May 2021; Klass, Rupp and Wildgans (n 9) s 22.42. 23 Thus, they are not subject of this study. 24 = German Digital Library. 25 Deutsche Digitale Bibliothek, ‘Nutzungsbedingungen’ accessed 13 May 2021. 26 Deutsche Digitale Bibliothek (n 25). 27 Deutsche Digitale Bibliothek (n 25). 28 Deutsche Digitale Bibliothek (n 25). 29 Národní Muzeum, ‘ESbirky.Cz – ESbírky.Cz Yesterday and Today’ accessed 13 May 2021. 30 Martynas Mažvydas National Library of Lithuania, ‘Search – Epaveldas.Lt’ accessed 13 May 2021. 31 Martynas Mažvydas National Library of Lithuania, ‘Copyright Policy – Epaveldas.Lt’ accessed 13 May 2021. 32 Martynas Mažvydas National Library of Lithuania (n 31). 33 Musée du Louvre, ‘Louvre Site Des Collections’ accessed 13 May 2021; Nora McGreevy, ‘You Can Now Explore the Louvre’s Entire Collection Online | Smart News | Smithsonian Magazine’ (30 March 2021) accessed 13 May 2021.

IP issues relating to CH platforms and new business models  485 Generally, strict terms of use apply to every work, even those in public domain.34 The same applies for the famous ‘Anna Amalia Bibliothek’35 in Weimar (Germany), which provides a lot of texts, images, graphics, sound, video and animation files in digital collections – they may not be copied for commercial purposes or for dissemination, nor may they be modified and used on other websites except for the text and image material expressly offered under the headings ‘Press’ for further dissemination.36 Furthermore, there are more galleries, archives and museums making their collections available online (e.g., the Deutsches Museum37 in Munich plans to digitize and scientifically index the collections, the archives and the library of one of the largest and most important museums of natural science and technology in the world, to safeguard the valuable treasures of the collections for future generations).38 Some of them, especially archaeologists and museum curators, make use of the application ‘KORA’,39 which is an open-source application built by MATRIX, a humanities computing research center at Michigan State University, which can be used to preserve digital objects of all media types and display them online to enhance their educational and research value.40 Platforms Using Only Public Domain Works Apart from the platforms above mentioned, there are projects which aim to digitize only public domain works. Fine examples are ‘Project Gutenberg’41 and the German national alternative ‘Projekt Gutenberg-DE.’42 Both projects offer an online library with books already in public domain. They buy books, digitize them themselves and make the texts available online for the public. Within the US-American project, it is possible to download every document in different formats and distribute it as long as no changes are made.43 The German version allows only restricted download of items as the rights holder claims rights to the public domain texts in the event of commercial use. Unlike the Google Books platform, where commercial purposes

34 Musée du Louvre, ‘Louvre Terms of Use’ accessed 13 May 2021. 35 = Anna Amalia library. 36 Klassik Stiftung Weimar, ‘Impressum – 100 Schätze der Klassik Stiftung Weimar’ accessed 13 May 2021. 37 = German Museum. 38 Deutsches Museum Digital München, ‘Ziele Und Aufgaben Des Deutschen Museums Digital’ (Portal Deutsches Museum Digital) accessed 13 May 2021. 39 MATRIX, ‘KORA’ accessed 13 May 2021; ‘KORA: A Digital Repository and Publishing Platform Journal of Digital Humanities’ accessed 2 May 2021. 40 Koukopoulos and Koukopoulos (n 19). 41 https://​www​.gutenberg​.org/​. 42 https://​www​.projekt​-gutenberg​.org/​index​.html. 43 Aka et al, ‘Project Gutenberg’, Wikipedia (2021) accessed 21 May 2021.

486  Research handbook on intellectual property and cultural heritage cannot be entirely rejected, the mission of the Gutenberg Project is to create a non-profit reading hub on the internet.44 Several more of these platforms exist.45 Participatory Platforms As digital transformation increases, users may become producers of content as well. As a result, the platform mechanisms are also changing. There are not only GLAMs which provide content for cultural heritage platforms, but also individuals. The cultural heritage platform which is best known for hosting cultural goods uploaded by individuals is ‘Wikimedia Commons,’46 which describes itself as a collection of more than 73,400,000 freely usable media files to which anyone can contribute.47 It not only contains works in public domain but also freely licensed content where only the terms specified by the respective author must be met in case of reuse.48 Media which are subject to copyright restrictions are not allowed on Wikimedia Commons.49 But there are several more: with PLUGGY, there’s also a cultural social networking platform, funded by the European Union. Users may not only upload assets to safeguard European cultural heritage,50 but also create exhibitions, tours, soundscapes, games, etc., to make their country’s cultural heritage better available.51 There is also a like button and a comment function for others. ‘Culture gate’52 promises to create an “online trustworthy participatory platform for cultural heritage that manages cultural heritage digital content in various ways […]. The platform invites its users (scientists, artists, the public, etc.) to contribute small portions of cultural information in digital form. User-generated cultural content is stored, organized and then presented to platform visitors in user-friendly ways.”53 A similar approach is taken by the digital application ‘Know Your Place,’54 which engages local communities in shaping the stories of their neighborhoods by allowing contributors to add media and metadata, thus producing archaeologically relevant information.55 The portal ‘Heritage Together’56 even takes 44 Nikola Richter, ‘Netzkultur – Das digitale Kulturgut’ (Deutschlandfunk) accessed 21 May 2021. 45 See ‘andere Projekte’ on https://​de​.wikipedia​.org/​wiki/​Google​_Books. 46 https://​commons​.wikimedia​.org/​ 47 ‘Wikimedia Commons’ accessed 21 May 2021. 48 ‘Commons: Welcome – Wikimedia Commons’ accessed 21 May 2021. 49 ‘Commons: Licensing – Wikimedia Commons’ accessed 21 May 2021. 50 ‘PLUGGY for Cultural Heritage’ accessed 21 May 2021. 51 ‘PLUGGY EU Project’ accessed 21 May 2021. 52 ‘Participatory Platform for Cultural Heritage’ accessed 21 May 2021. 53 Koukopoulos and Koukopoulos (n 19) 3. 54 ‘Know Your Place – Bristol.Gov.Uk’ accessed 21 May 2021. 55 Peter Insole and Angela Piccini, ‘Your Place or Mine? Crowdsourced Planning, Moving Image Archives and Community Archaeology’ accessed 2 May 2021. 56 ‘HeritageTogether | Creating 3D Models from Photographs’ accessed 21 May 2021.

IP issues relating to CH platforms and new business models  487 it one step further and processes the photographs of heritage assets which were uploaded by their users into 3D models using an automated photogrammetry workflow.57 Nowadays, more and more specialist platforms occur where individuals may upload their content: for example, there is the Megalithic Portal,58 which allows users to contribute photos of megalithic monuments in Europe to the portal. There is the Ancient Lives project,59 which asks volunteers to transcribe ancient Greek text on fragments from the Oxyrhynchus Papyri collection.60 Participatory Platforms with Commercial Interest Furthermore, there are participatory platforms with commercial interest. As we may take a look on YouTube,61 Instagram,62 TikTok63 and others, one might argue that they are becoming part of today’s cultural heritage. But currently, these platforms may not yet be regarded as cultural heritage platforms: they are not intended to preserve cultural heritage and their content is not limited to existing cultural heritage, and are therefore not part of this chapter. Other Platforms with Commercial Interest In a broader sense, the term ‘cultural heritage platforms’ may also include commercial projects. The ‘Google Books’ platform might probably be the most famous one – and at the same time the most controversial: launched as ‘Google Print’ in 2004, millions of books have been digitized in cooperation with publishers and libraries and – depending on copyright regulations – made available to the general public in excerpts or in their entirety. Besides several digitization efforts, there are a lot of small and medium-sized cultural entrepreneurs who would like to re-use digital cultural heritage content for commercial purposes. For them, ‘Europeana Space’ (2014–2017) was developed: it shall be an “open environment for the development of applications and services based on digital cultural content.”64 They have carried out several pilot projects, for example, in one of their hackathons there was created an ‘Educational game demonstrator’: users were presented with a portrait from Europeana and were challenged to recreate it either by taking a selfie or taking a photograph of friends.65 57 Helen C Miles and others, ‘Crowd-Sourced Digitisation of Cultural Heritage Assets’, 2014 International Conference on Cyberworlds (2014). 58 ‘The Megalithic Portal and Megalith Map’ accessed 21 May 2021. 59 ‘Ancient Lives’ accessed 21 May 2021. 60 Alex C Williams and others, ‘A Computational Pipeline for Crowdsourced Transcriptions of Ancient Greek Papyrus Fragments’, 2014 IEEE International Conference on Big Data (Big Data) (2014). 61 ‘YouTube’ accessed 21 May 2021. 62 ‘Instagram’ (Instagram) accessed 21 May 2021. 63 ‘TikTok – Make Your Day’ (TikTok) accessed 21 May 2021. 64 ‘Europeana Space, Best Practice Network’ accessed 21 May 2021. 65 Europeana Space, ‘IP and Europeana Space Pilots: Case Studies – The Games Pilot and Hackathon’ (December 2016) 6 accessed 21 May 2021.

488  Research handbook on intellectual property and cultural heritage Beyond this project, there are companies, especially start-ups, all over Europe, mainly in the fields of entertainment, online games, e-books, news services, user-generated content, education, and 3D printing, whose business models provide for the integration of content.66 Initial Conclusion The compilation above shows how diverse cultural heritage platforms and tools might be – and there are many more which were not mentioned.67 For an IP analysis, it is therefore necessary to sort them, as an analysis on all of them would go beyond the scope of this chapter. The main difference between the platforms lies in the type of copyright-relevant uses that are undertaken and the material that is used. Europeana and its national aggregators, for example, basically do not host content: in most cases, they either link to content which is hosted by a partner institution (A) and sometimes provide a lower-resolution picture of the content (B). In a small number of cases, they serve as content providers and store the content on their own servers (C). The same applies for most of the participatory platforms who encourage their users to upload user-generated content. GLAMs who engage in digital cultural heritage usually digitize material (D) and make these digital copies available as part as their own digital repository (E). A special case are those platforms which only make use of content in the public domain (F).

IP ISSUES RELATING TO CULTURAL HERITAGE PLATFORMS As diverse as the platforms are, so are the related IP issues. The main ones are connected to copyright law, which therefore will be the main subject of the following section. The content provided by archives may also be subject to archival law which contains special permissions for the access and the use of the material, but this is not an issue that is dealt with in this chapter.68 Copyright law usually applies to literary and artistic works, e.g., books and other literary material, paintings, music, audiovisual items, photographs, sculptures, architecture, films,

66 See for example for Germany a study of 40 start-ups: Dietmar Harhoff and others, ‘Urheberrecht und Innovation in digitalen Märkten’ 1; for a legal analysis see Henrike Maier, ‘Games as Cultural Heritage: Copyright Challenges for Preserving (Orphan) Video Games in the EU’ (2015) 6 Journal of Intellectual Property, Information Technology and Electronic Commerce Law 120, 120; Susan Corbett, ‘Digital Heritage: Legal Barriers to Conserving New Zealand’s Early Video Games’ (Social Science Research Network 2006) SSRN Scholarly Paper ID 1809344 48 accessed 9 May 2021. 67 Akrivi Katifori and others, ‘CHESS: Personalized Storytelling Experiences in Museums’ in Alex Mitchell, Clara Fernández-Vara and David Thue (eds), Interactive Storytelling, vol 8832 (Springer International Publishing 2014) accessed 2 May 2021; Irene Rubino and others, ‘Integrating a Location-Based Mobile Game in the Museum Visit: Evaluating Visitors’ Behaviour and Learning’ (2015) 8 Journal on Computing and Cultural Heritage 1; Tommy Nilsson and others, ‘Applying Seamful Design in Location-Based Mobile Museum Applications’ (2016) 12 ACM Transactions on Multimedia Computing, Communications, and Applications 1. 68 E.g. § 6 of the Law on the Care and Use of Archival Records of Baden-Wuerttemberg in Germany (Landesarchivgesetz Baden-Württemberg).

IP issues relating to CH platforms and new business models  489 maps, technical drawings but also computer programs and databases.69 All of them may be content of cultural heritage platforms and thus may be protected by copyright. In terms of cultural heritage platforms, the question about the copyright protection of metadata arises: usually structured data which describe the content and serve the purpose of clear identification of an item might not be protected by copyright as they do not contain sufficient authorship. As soon as metadata is enriched with more information, e.g., a lengthy text summary of a book or a detailed textual description of an exhibit, this metadata might be subject to copyright protection itself. In many countries, copyright protection does apply to expression which does not need to be fixed in a tangible way. Consequently, even intangible culture may be protected by copyright. Thus, care must be taken as copyright protection does not extend to ideas. If a work is copyright-protected, most copyright legislations grant the rights holders the economic right70 to authorize or prevent certain uses in relation to a work.71 These rights include, for example, the decision about reproduction and often of making available – this saying, part of the IP conflict around cultural heritage platforms is already disclosed: if material is copyright-protected, it may not be digitized by cultural heritage institutions (especially GLAMs) without the rights holders’ permission – neither for preservation purposes (D) nor to make it available on cultural heritage platforms afterwards (E) as long as there is not a legal exception (see next sections especially on ‘out-of-commerce works’ and ‘orphan works’).72 The only exception applies to material in the public domain (F), which may be generally used freely on cultural heritage platforms. After expiration of the term of protection, a work that was protected by copyright law before, may be used by everyone without the rights holders’ permission as it is not protected anymore. Copyright protection usually lasts at least until the expiration of the 50th year after the author’s death – according to the minimum standard of Art. 7(1) Berne Convention.73 For anonymous and pseudonymous works, audiovisual works as well as works of applied art and photographic works, there are exceptions to this rule (Art. 7(2)–(4) Berne Convention). In the European Union the minimum standard was even raised to 70 years after the author’s death, irrespective of the date when the work is lawfully made available to the public (Art. 1(1) of the Directive on the term of protection of copyright and certain related rights photographs (Copyright Term Directive74)). But even after expiration of the term of protection, restrictions might apply (see for more the sections on ‘works in public domain’). Europeana and its national aggregators predominantly do not host any content (A), thus they primarily don’t reproduce or make available. However, copyright law becomes relevant in a delimited area, particularly by Europeana and its national aggregators hosting 69 World Intellectual Property Organization, ‘Copyright’ accessed 21 May 2021; Emily Hudson and Andrew T Kenyon, ‘Digital Access: The Impact of Copyright on Digitisation Practices in Australian Museums, Galleries, Libraries and Archives’ (Social Science Research Network 2020) SSRN Scholarly Paper ID 1065622 36ff. accessed 5 May 2021. 70 In addition, moral rights are usually granted to the author, but these are not the subject of this chapter. 71 World Intellectual Property Organization (n 69). 72 Ann Marie Sullivan, ‘Cultural Heritage & New Media: A Future for the Past’ (2015) 15 John Marshall Review of Intellectual Property Law 604, 619. 73 For exceptions in US-American legislation see: Chapter 3 of U.S. Copyright Act of 1976, 17. U.S.C. §§ 301ff. 74 Directive 2006/116/EC of the European Parliament and of the Council of 12 December 2006 on the term of protection of copyright and certain related rights.

490  Research handbook on intellectual property and cultural heritage lower-resolution pictures (B) or serving as content providers (C).75 Doing the latter, they do not differ from other content providers who encourage their users to upload user-generated content.76 Obtaining permission from the rights holder becomes a big issue if rights holders are not available or not known (‘orphan works’); a 20th-century blackhole is sometimes invoked. But even if the rights holders are known, obtaining approval of rights holders may be difficult: there are rights holders who lock down their works, which makes it impossible for cultural heritage platforms to disseminate them and satisfy the public interest in access and circulation of cultural goods.77 Furthermore, there are works permanently in the collections of cultural heritage institutions which were never intended for commercial use or have never been exploited commercially (‘out-of-commerce works’);78 if these are to be used within mass digitization projects, obtaining permission is difficult as well. In these situations, copyright law may be a means to balance the interests of stakeholders by introducing special exceptions and a collective rights management. Another IP issue arises by analyzing the dissemination mission of cultural heritage institutions: cultural heritage platforms can make a decisive contribution here – but their efforts are often challenged by copyright legislation.79 There was a ray of hope when the European Court of Justice decided that generally linking to resources – as Europeana and its national aggregators tend to do (A) – is not a use in terms of copyright law.80 But as soon as they make

75 Insofar as the Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the Digital Single Market and amending Directives 96/9/ EC and 2001/29/EC assigns Member States to provide that an ‘online content-sharing service provider’ performs an act of communication to the public or an act of making available to the public when it gives the public access to copyright-protected works or other protected subject matter uploaded by its users and shall therefore obtain an authorization from the rightholders (see Art. 17(1) of the Directive) and – in the case that no authorization is granted – shall be liable for unauthorized acts of communications to the public under certain circumstances (Art. 17(4) of the Directive), it needs to be noted that Europeana and its national aggregators may possibly be regarded as ‘not-for-profit educational and scientific repositories’ and thus not as ‘online content-sharing service providers’ within the meaning of Art. 2(6) of the Directive. 76 The legal issues raised by UGC (especially liability) are not part of this chapter. See for more details Christian Alexander Bauer, User Generated Content: urheberrechtliche Zulässigkeit nutzergenerierter Medieninhalte (Berlin Heidelberg ua: Springer 2011) accessed 22 May 2021; Garry A Gabison and Miriam C Buiten, ‘Platform Liability in Copyright Enforcement’ (2019) 21 Columbia Science and Technology Law Review 237; Marisa N Sanchez, ‘EU Directive on Copyright in the Digital Single Market: An Outlier in Intermediary Liability and the Death of Safe Harbor Protections Comments’ (2020) 55 University of San Francisco Law Review 251. 77 ‘Recommendations on Copyright and Its Role in the Digital Transformation of the Cultural Heritage Sector’ 4 accessed 21 May 2021; Sullivan (n 72) 619. 78 Recital 30 of the Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the Digital Single Market and amending Directives 96/9/ EC and 2001/29/EC (in the following “CDSM Directive”). 79 ‘Recommendations on Copyright and Its Role in the Digital Transformation of the Cultural Heritage Sector’ (n 77) 4; Klass, Rupp and Wildgans (n 9) 22.99. 80 Svensson [2014] European Court of Justice C-466/12, ECLI:​EU:​C:​2014:​76 32; see for a detailed analysis of the ‘Svensson’ case: Irini Stamatoudi, ‘“Linking” and “Browsing” in the Light of the EU

IP issues relating to CH platforms and new business models  491 available hosted content – regardless if in high or low resolution (B, C) – they usually must ask the rights holders for permission. However, there is one important exception to this principle: when copyright law itself allows the use of a work for preservational, educational or other reasons, a permission of the rights holders may not be necessary. Many countries provide specific copyright exceptions for libraries, museums, and archives to enable activities on cultural heritage platforms to deliver on their public interest mission.81 The European Union strives to enable common legislation in this field, so its approaches, especially the provisions of the Directive on copyright and related rights in the Digital Single Market (CDSM Directive82), will mainly be presented in the following. However, it must be taken into account that the means of a Directive according to Art. 288 TFEU is binding as to the result to be achieved but shall leave the choice of form and methods to the national authorities. Member States therefore have a certain scope for implementation in many cases. Regarding dissemination of cultural heritage platforms, another legal issue arises: cultural heritage platforms often perform digitally – and therefore, copyright may be exploited globally.83 But still, the copyright follows a country-by-country approach.84 Further investigation therefore needs to be taken in the international private law issues arising.85 Another IP issue is raised if a platform hosts user-generated content: questions about liability for content might be an issue, but as their legal assessment does not differ from other platforms with user-generated content, they shall not be the subject of this chapter.86 The IP issues mentioned above are amplified by a lack of knowledge in copyright law at cultural heritage institutions and platforms: “Without this knowledge, it is difficult for CHIs to make informed decisions on the copyright implications of their activities, to measure and bear some inevitable risks, and to properly communicate rights information to their users.”87 First and foremost, Europeana contributes to fill this lack of knowledge with its copyright work.88 In all the IP issues mentioned above, cultural heritage platforms were portrayed as disadvantaged. A different light is shed on them as soon as cultural heritage institutions see themselves as rights holders, due to digitization of content. This may raise IP issues as well, which are discussed in a later section – together with the European approach to solve the problems (public domain). A little light shall also be shed to the different licensing schemes cultural heritage platforms offer for their users. Court of Justice’s Case Law’ in Tana Pistorius (ed), Intellectual Property Perspectives on the Regulation of New Technologies (Edward Elgar Publishing 2018) 195. 81 Torremans (n 10) 302. 82 Directive (EU) 2019/790 of the European Parliament and of the Council of 17 April 2019 on copyright and related rights in the Digital Single Market and amending Directives 96/9/EC and 2001/29/ EC. 83 Torremans (n 10) 300 with further information. 84 Torremans (n 10) 301. 85 ‘Recommendations on Copyright and Its Role in the Digital Transformation of the Cultural Heritage Sector’ (n 77) 4; Torremans (n 10) 301. 86 See for more information on the impact of EU Directive on Copyright in the Digital Single Market: Sanchez (n 76) 251ff. 87 ‘Recommendations on Copyright and Its Role in the Digital Transformation of the Cultural Heritage Sector’ (n 77). 88 Ariadna Matas and Brigitte Vézina, ‘Europeana Copyright 2020–2025: Guiding Principles for Europeana’s Copyright Work’ 1.

492  Research handbook on intellectual property and cultural heritage Out-of-Commerce Works Some Member States (including France and Germany) already had regulations in place before the introduction of the CDSM Directive that gave an approved collecting society the right to authorize the reproduction and communication to the public in digital form of ‘out-of-print’ books, while allowing the authors of those books, or their successors in title, to oppose or put an end to that practice. On 16 November 2016, the European Court of Justice ruled that these provisions do not comply with the provisions of the Directive on the harmonization of certain aspects of copyright and related rights in the information society (InfoSoc Directive89), especially if the respective author is not informed of the future use of their work by a third party and the means at their disposal to prohibit it if they so wish90 – therefore, the European legislature was challenged and responded with Art. 8–11 CDSM Directive, which provides the Member States with new guidelines for dealing with out-of-commerce works. The aim of these regulations is to improve licensing practices and ensure wider access to content.91 In order to achieve this, Art. 8(1) CDSM Directive obliges the Member States to provide a collective management organization for out-of-commerce works or other subject matter. Under certain circumstances, it shall provide a non-exclusive license for non-commercial purposes for cultural heritage institutions for the reproduction, distribution, communication to the public or making available to the public of out-of-commerce works or other subject matter that are permanently in the collection of the institution, irrespective of whether all rights holders covered by the license have mandated the collective management organization (Art. 8(1) CDSM Directive). Moreover, Member States shall provide for an exception or limitation to the rights of reproduction and communication to the public, in order to allow cultural heritage institutions to make available out-of-commerce works or other subject matter that are permanently in their collections for non-commercial purposes (Art. 8(2) CDSM Directive). This exception or limitation is only provided under the condition that such works or other subject matter are made available on non-commercial websites.92 Unfortunately, the European legislator doesn’t explain this restriction – we’ll see how literally Member States will implement this provision. By these two regulations, the European Union complies with Nr. 6(b) of the Commission Recommendation on the digitization and online accessibility of cultural material and digital preservation.93 Before we may analyze the opportunity given under the CDSM Directive, it should first be noted that both for collective licensing and for the barrier, only the work itself must be in the collection, but the reproducing institutions do not necessarily have to use their work for acts of

89 Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society. 90 Soulier u Doke / Premier ministre ua [2016] EuGH C-301/15, 2017 Gewerblicher Rechtschutz und Urheberrecht (GRUR) 62, 38. 91 See the Header of Title III of the CDSM Directive and Katharina de la Durantaye, ‘Weit Und Kollektiv – Vergriffene Werke Und Kollektive Lizenzvergabe Mit Erweiterter Wirkung Nach Der DSM-RL’ [2020] Gewerblicher Rechtsschutz und Urheberrecht 7, 7. 92 Durantaye (n 91) 11. 93 ‘Commission Recommendation of 27 October 2011 on the digitisation and online accessibility of cultural material and digital preservation’, vol 283 (2011) 32011H0711 accessed 21 May 2021.

IP issues relating to CH platforms and new business models  493 exploitation: this allows for a better quality of the publicly available works.94 First, it is necessary to get a common understanding of out-of-commerce works: according to Art. 8(5) CDSM Directive, a work shall be deemed to be out of commerce when it can be presumed in good faith that the whole work or other subject matter is not available to the public through customary channels of commerce, after a reasonable effort has been made to determine whether it is available to the public. That means: if a work either has never been in commerce or the work as a whole is no longer commercially available, it is considered out of commerce.95 Unfortunately, identifying an out-of-commerce work in reality isn’t as easy as this legal definition might simulate: Art. 8(5) CDSM Directive contains some undefined legal terms (‘good faith’, ‘reasonable effort’).96 The national legislator should therefore make use of the existing scope for implementation to concretize the rules; the success of the regulations for out-of-commerce works will depend to a large extent on the Member States,97 as a lack of clear provisions may impede their effectiveness.98 This was already shown by the developments following the Directive on certain permitted uses of orphan works (Orphan Works Directive99) in 2014. Member States are therefore well advised to develop precise criteria for all types of objects of protection (even those not mentioned in Recital 37), which enables even laypersons with no legal education who are active in GLAM and prepare content for platforms to decide on its legal classification.100 Recital 37 contains first indications of this: when a work or other subject matter is available in any of its different versions, such as subsequent editions of literary works and alternate cuts of cinematographic works, or in any of its different manifestations, such as digital and printed formats of the same work, that work or other subject matter should not be considered out of commerce. Conversely, the commercial availability of adaptations, including other language versions or audiovisual adaptations of a literary work, should not preclude a work or other subject matter from being deemed to be out of commerce in a given language. Therefore, it is more than fortunate that the European Union has anchored a stakeholder dialogue (Art. 11 CDSM Directive) in the Directive itself: “Member States shall consult rightholders, collective management organizations and cultural heritage institutions in each sector before establishing specific requirements pursuant to Article 8(5), (…).” It is desired that these dialogues keep the grey areas of these provisions to an absolute minimum.101 These dialogues should also be used to define and continuously adapt the requirements for searching: for example, in many countries there are already established search and licensing mechanisms for written works that can be maintained (e.g., in Germany by means of the Durantaye (n 91) 11. ‘Recommendations on Copyright and Its Role in the Digital Transformation of the Cultural Heritage Sector’ (n 77) 7; Durantaye (n 91) 7, 10. 96 Katharina de la Durantaye and Linda Kuschel, ‘Vergriffene Werke Größer Gedacht: Art. 8–11 DSM-Richtlinie’ [2019] ZUM 694, 696; Durantaye (n 91) 9. 97 Durantaye (n 91) 9. 98 ‘Recommendations on Copyright and Its Role in the Digital Transformation of the Cultural Heritage Sector’ (n 77) 7. 99 Directive 2012/28/EU of the European Parliament and of the Council of 25 October 2012 on certain permitted uses of orphan works. See for more details below. 100 Durantaye (n 91) 10; ‘Recommendations on Copyright and Its Role in the Digital Transformation of the Cultural Heritage Sector’ (n 77) 7. 101 ‘Recommendations on Copyright and Its Role in the Digital Transformation of the Cultural Heritage Sector’ (n 77) 7. 94 95

494  Research handbook on intellectual property and cultural heritage ‘Verzeichnis lieferbarer Bücher’); for other types of works, e.g., film works, it is essential that feasible criteria are developed in consultation with the stakeholders to lend effectiveness to the provisions.102 Recital 38 CDSM Directive already contains initial indications of this: for example, the limited availability of a work, such as its availability in second-hand shops, should not be considered as availability to the public in the customary channels of commerce. The register established and managed by the European Union Intellectual Property Office that provides information for rights holders for the purposes of the identification of the out-of-commerce works or other subject matter covered by a license or used under the exception or limitation that enables cultural heritage institutions to identify if a certain work has already been classified as ‘out of commerce’ may also help with the classification (Art. 10(1) and (2) CDSM Directive).103 Who carries out the search – whether the users or the collecting societies – can be determined by the Member States independently.104 In the light of IP issues of the platforms, which – depending on their focus – usually make their content available not only to a limited audience, but deliberately to the general public in all Member States, a Union-wide coordinated dialogue seems desirable in determining the search requirements: otherwise – applying the country-of-origin principle – entities located in the Member State with the lowest requirements could make more works publicly available than those in Member States with stricter requirements.105 A further – and in our view much more decisive – disadvantage would be that cross-border projects of different platforms and cultural institutions would be unnecessarily hampered by such divergent regulations.106 A significant advantage of the new regulations for platforms is that the use of works is in principle possible even without the consent of the respective rights holder. Nevertheless, it will be the task of the above-mentioned register established and managed by the European Union Intellectual Property Office to protect the rights of the rights holders.107 If the work is not out of print, the possibility of extended licensing by means of Art. 12 CDSM Directive may in principle be used (although at present it is questionable to what extent this will be implemented by the respective Member States). According to this – in contrast to what is currently controversially discussed in the literature – only the possibility of extending licensing terms to outsiders which are already negotiated is possible; genuine negotiations between rights holders or collecting societies and platform operators, which Art. 17 CDSM Directive also requires, cannot be replaced by this.108 Nevertheless, there may be an interest Durantaye and Kuschel (n 96) 696; Durantaye (n 91) 10. Durantaye (n 91) 12. 104 Durantaye (n 91) 12. 105 Durantaye and Kuschel (n 96) 697; Durantaye (n 91) 11. 106 Durantaye and Kuschel (n 96) 697. 107 Art. 10 (1) and (2) CDSM Directive and Recital 41 of the CDSM Directive and Durantaye (n 91) 11. 108 Durantaye (n 91) 13; Thomas Dreier, ‘Die Schlacht Ist Geschlagen – Ein Überblick: Zum Ergebnis Des Copyright Package Der EU-Kommission’ [2019] Gewerblicher Rechtsschutz und Urheberrecht 771, 776f.; Nico Gielen and Marten Tiessen, ‘Die Neue Plattformhaftung Nach Der Richtlinie Über Das Urheberrecht Im Digitalen Binnenmarkt’ [2019] Europäische Zeitschrift für Wirtschaftsrecht 639, 642f.; Robert Staats, ‘Kollektive Lizenzvergabe Mit Erweiterter Wirkung Nach Art. 12 Der DSM-Richtlinie – Eine Sinnvolle Lösung Für Deutschland?’ [2019] Zeitschrift für Urheber- und Medienrecht 703, 708; Malte Stieper, ‘Die Richtlinie Über Das Urheberrecht Im Digitalen Binnenmarkt Keynote Auf Der Konferenz ‘Perspektiven Des Urheberrechts Im Informationszeitalter’ [2019] Zeitschrift für Urheberund Medienrecht 211, 217; Malte Stieper, ‘Ein Angemessener Interessenausgleich Im Verhältnis von 102 103

IP issues relating to CH platforms and new business models  495 among platforms in such agreements with collecting societies if the agreed price is lower than the costs of the necessary filtering of the content.109 However, all mechanisms in Art. 8–12 CDSM Directive must respect the fact that rights holders always have the possibility to opt out (Art. 8(4) and Art. 12(2) CDSM Directive). It remains to be seen whether full legal certainty to users is provided in these cases. Orphan Works Sometime before the CDSM Directive, in 2014, the Orphan Works Directive was adopted: According to Art. 2, a work or a phonogram shall be considered an orphan work if none of the rights holders in that work or phonogram is identified or, even if one or more of them is identified, none is located despite a diligent search for the rights holders having been carried out and recorded. Art. 6 of the Orphan Works Directive provided the Member States the right to introduce an exception or limitation to the right of reproduction and the right of making available to the public for cultural heritage institutions110 in regard to orphan works. What seemed a convincing solution for thousands of orphan works which are in the collection of cultural heritage institutions111 turned out to be a law without effect: the requirements that were set for a diligent search in Art. 3 of the Orphan Works Directive were vague; this meant that privileged institutions did not make use of the particularly privileged uses of orphan works.112 Another reason was the high costs of such a search that cultural heritage institutions could not bear.113 Hence, cultural heritage institutions made use of the provisions for out-of-commerce works where they existed114 – and probably they will do so in the remaining countries where they haven’t after implementing the provisions of the CDSM Directive. Works in Public Domain Works of cultural significance often reside in public domain nowadays115 and should not be protected by copyright law anymore. So, one might wonder: how may digitalization and dissemination of public domain works on cultural heritage platforms give rise to an IP issue? The reason lies in the operating principle of digital transformation: cultural heritage platforms often do not deal with the work itself, but with a digital sibling of the work.116 Let’s Kreativen Zu Rechteinhabern Und Verwertungsgesellschaften? Vortrag Auf Dem III. ZUM-Symposio n “EU-Urheberrechtsreform – Ergebnisse Und Analysen” des Instituts Für Urheber- Und Medienrecht Am 1.2.2019 in München’ [2019] Zeitschrift für Urheber- und Medienrecht 393, 400. 109 Durantaye (n 91) 13. 110 For an exact definition of the privileged see Art. 1(1) of the Orphan Works Directive. 111 Merisa Martinez and Melissa Terras, ‘“Not Adopted”: The UK Orphan Works Licensing Scheme and How the Crisis of Copyright in the Cultural Heritage Sector Restricts Access to Digital Content’ (2019) 5 Open Library of Humanities 1. 112 Durantaye (n 91) 10; V Stobo and others, ‘Current Best Practices among Cultural Heritage Institutions When Dealing with Copyright Orphan Works and Analysis of Crowdsourcing Options’ (Diligentsearch.eu 2018) Monograph accessed 9 May 2021. 113 Durantaye (n 91) 10. 114 Durantaye (n 91) 10. 115 Torremans (n 10) 299. 116 Torremans (n 10) 299.

496  Research handbook on intellectual property and cultural heritage take the famous ‘Mona Lisa’ as an example: the painting itself (‘La Joconde’) was created by Leonardo da Vinci, who died in 1519, and is located at the Louvre in Paris today. Regardless on the exact duration of copyright, it should be obvious to everyone that the term of protection for the painting has now expired. The work as such is therefore in the public domain. Nevertheless, if you enter ‘La Joconde’ in the largest European cultural heritage platform ‘Europeana’, you will find the note ‘In Copyright’ under the picture.117 The metadata also indicate that the rights are held by the Musée du Louvre, the Direction des Musées de France and the rights on the photograph by Réunion des musées nationaux – utilisation soumise à autorisation, Hervé Lewandowski and Thierry Le Mage. How does this come about? Cultural heritage institutions try to ensure that works in public domain are available for reuse to facilitate the generation of knowledge and to foster innovation.118 These efforts entail costs: digitizing works, maintaining repositories and acquiring new expertise is expensive.119 Coincidently, government funding declines steadily.120 Therefore, cultural heritage institutions have to find a way to recoup their investments somehow. Claiming (copy)rights for the reproduction media (e.g., photographs of paintings, digital reproductions of sculptures, etc.) and licensing it for several purposes thereby is an effective way to ensure revenues.121 The additional revenue could be used to preserve the work onsite, its educational context online and manage the digital assets and access.122 Some cultural heritage institutions also claim that the copyright may be used to prevent subjective misuse, e.g., on ‘unsuitable merchandising articles’123 – but to everyone who’s a bit familiar with copyright, this shall not be the objective of copyright.124 From an institutional point of view, this approach seems obvious. Cultural heritage institutions just make use of the opportunities that the law offers: if a person uses their camera to make a photographic work which shows a work in public domain, they will be granted copyright protection on the photograph from the moment it is taken. From a historical perspective, at a time when the production of photographs was still costly, this protection seems reasonable. In times when digital scans, photography, and 3D scans have already become ordinary for everyone, this protection needs to be questioned.125 Is this still in keeping with the times? Courts around the world have judged quite differently in this regard.126

117 ‘tableau ; PORTRAIT DE MONA LISA (1479–1528) ; DITE LA JOCONDE’ accessed 21 May 2021. 118 Andrea Wallace and Ellen Euler, ‘Revisiting Access to Cultural Heritage in the Public Domain: EU and International Developments’ (2020) 51 IIC - International Review of Intellectual Property and Competition Law 823, 824. 119 Wallace and Euler (n 118) 824. 120 Wallace and Euler (n 118) 824. 121 rem gGmbH, ‘REM Press Release: BGH Entscheidet in Sachen Reiss-Engelhorn-Museen Gegen Wikimedia’ (2018) accessed 21 May 2021; Wallace and Euler (n 118) 824; Klaus Graf, ‘Kulturgut muss frei sein!’ (Archivalia) accessed 21 May 2021. 122 Wallace and Euler (n 118) 824. 123 rem gGmbH (n 121). 124 Wallace and Euler (n 118) 835. 125 Wallace and Euler (n 118) 826. 126 Graves’ Case [1869]; Bridgeman Art Library, Ltd v Corel Corp [1998] US District Court for the Southern District of New York 25 F. Supp. 2d 421 (S.D.N.Y. 1998); Bridgeman Art Library, Ltd v Corel

IP issues relating to CH platforms and new business models  497 In the EU, the discussion was fired by a CJEU decision in 2011:127 it was considered whether the originality standard of the EU is met by portrait photography. Because according to Art. 6 of the Copyright Term Directive, works shall only be protected which are original in the sense that they are the author’s own intellectual creation. Despite other pleas, the CJEU ruled that even in the case of portrait photography, ‘free and creative choices’ can be made:128 In the preparation phase, the photographer can choose the background, the subject’s pose and the lighting. When taking a portrait photograph, he can choose the framing, the angle of view and the atmosphere created. Finally, when selecting the snapshot, the photographer may choose from a variety of developing techniques the one he wishes to adopt or, where appropriate, use computer software. By making those various choices, the author of a portrait photograph can stamp the work created with his ‘personal touch’.129

Therefore, in view of the foregoing, a portrait photograph can be protected by copyright under Article 6 Copyright Term Directive. The latest judgment ‘Museumsfotos’, which was passed by the German Federal Court of Justice in 2018, directly involved the question about photographic reproductions of public domain works:130 the Reiss-Engelhorn-Museum (REM) in Mannheim found out that photographic reproductions of public domain works, which were in their collection, were made available on Wikimedia Commons. A Wikipedia user had scanned some images printed in an exhibition catalogue, uploaded them on Wikimedia Commons and marked them as public domain.131 Subsequently, they were downloaded by other users and used on other websites. Thus, the REM (represented by the city of Mannheim) filed a suit against the Wikimedia Foundation and Wikimedia Deutschland for hosting 37 of these reproductions, one suit against the Wikipedia user who uploaded the images, and several against the Wikipedia users who reused the images.132 The majority of the suits were successful; just one denied protection based on a teleological interpretation133 but was invalidated by the decision of the Federal Court of Justice. Two of the suits went as far as to the German Federal Court of Justice – one was not allowed for appeal,134 the other one, REM, won as well:135 although the German Federal Court of Justice held that the reproductions do not meet the originality standard of the Art. 6 Copyright Term Directive, they are – according to the Court – protected as ‘other photographs’. This legal instrument in German Copyright Law is not a copyright protection but a related right that Corp [1999] US District Court for the Southern District of New York 36 F. Supp. 2d 191 (S.D.N.Y. 1999); Museumsfotos (n 17). 127 Eva-Maria Painer/Standard VerlagsGmbH [2011] EuGH C-145/10, 2012 GRUR 166. 128 Wallace and Euler (n 118) 827. 129 EuGH (n 127) l 91f. 130 Museumsfotos (n 17). 131 Wallace and Euler (n 118) 829. 132 Reproduktionsfotografie [2016] LG Berlin 15 O 428/15, 2016 Gewerblicher Rechtsschutz und Urheberrecht Rechtsprechungs-Report (GRUR-RR) 318; Herzog Karl-Theodor [2017] KG 24 U 125/16, 2017 BeckRS 142191; Wallace and Euler (n 118) 829f. 133 Fotografie von gemeinfreien Kunstwerken [2015] AG Nürnberg 32 C 4607/15, 2016 Zeitschrift für Urheber- und Medienrecht – Rechtsprechungsdienst (ZUM-RD) 615; Wallace and Euler (n 118) 829. 134 Grundsatzbedeutung für Nichtzulassungsbeschwerde [2019] BGH I ZR 189/17, 2019 Gewerblicher Rechtsschutz und Urheberrecht Rechtsprechung (GRUR-RS) 2702. 135 Museumsfotos (n 17).

498  Research handbook on intellectual property and cultural heritage guarantees the same rights as copyright protection, just for 50 years after the photograph was released (§ 72 German Copyright Code (UrhG)). Under the new CDSM Directive, it seems unlikely whether such a ruling would be made again in the future as Art. 14 CDSM Directive provides that Member States shall provide that, when the term of protection of a work of visual art has expired, any material resulting from an act of reproduction of that work is not subject to copyright or related rights, unless the material resulting from that act of reproduction is original in the sense that it is the author’s own intellectual creation.136 Thus, the European Union is implementing No. 5 of the Commission Recommendation on the digitization and online accessibility of cultural material and digital preservation.137 By some, Art. 14 CDSM Directive is seen as the culmination of the EU’s efforts to open up culture and make cultural property accessible, following openGLAM and the Europeana Public Domain Charter in 2010.138 Indeed, due to its broad scope (‘any material from an act of reproduction’), Art. 14 CDSM Directive can have an impact on photographic reproductions, but also 3D scans and similar components.139 But according to some authors, it seems doubtful whether this provision can actually put an end to unjustified claims to public domain works.140 It refers only to ‘works of visual art’.141 First, this appears questionable as there is no definition of this type of work. Second, other types of works, such as written works or scientific drawings, are completely excluded from the provisions.142 It is noted that Art. 14 CDSM Directive does not contain any regulations on publication obligations of digital reproductions.143 This means that cultural heritage institutions are effectively given power over what happens to the reproductions they produce, as no one can use them if the institution does not make them available.144 Another problem arises as a result of the widespread prohibitions on photography in cultural heritage institutions: these also de facto prevent the reuse of photographs of public domain works as onsite photography is not allowed for the individual user.145 And once again, it is only a Directive provision, i.e., the Member States have a wide scope for implementation.146 This will lead to diverse legislation, especially in the implementation of ‘work of visual art’, as there is no direct equivalent in many national legislatures.147 In the context of the new Directive on open data and the re-use of public sector information (PSI Directive148), further problems arise: Art. 1(2)(c) stipulates that the provisions shall not Wallace and Euler (n 118) 828. ‘Commission Recommendation of 27 October 2011 on the digitisation and online accessibility of cultural material and digital preservation’ (n 93). 138 Wallace and Euler (n 118) 836 with further references. 139 Wallace and Euler (n 118) 938. 140 Wallace and Euler (n 118) 829. 141 Wallace and Euler (n 118) 938. 142 Wallace and Euler (n 118) 938. 143 Wallace and Euler (n 118) 835. 144 Wallace and Euler (n 118) 835. 145 Daryl Green, ‘Learning to Let Go: Ownership, Rights, Fees, and Permissions of Readers’ Photographs’ (2021) 139 Anglia 59; Wallace and Euler (n 118) 835. 146 Wallace and Euler (n 118) 837, 839. 147 Wallace and Euler (n 118) 839. 148 Directive (EU) 2019/1024 of the European Parliament and of the Council of 20 June 2019 on open data and the re-use of public sector information. 136 137

IP issues relating to CH platforms and new business models  499 apply to “documents for which third parties hold intellectual property rights”. Of course, Art. 14 CDSM Directive shall have the effect to remove protection from reproduction media; but there are still uncertainties, especially regarding 3D technologies and post-producing editing.149 Thus, copyright may be claimed by 3D scan producers or museum photographers as third parties150 and the PSI Directive doesn’t apply anymore. In relation to Art. 17 CDSM Directive – the most discussed paragraph of European legislation in the last few years – there appears another issue: the filtering systems working with artificial intelligence are yet ill-equipped to decide whether a reproduction of a work is a work that due to its quality as ‘author’s own intellectual creation’ needs to be protected due to Art. 6 of the Copyright Term Directive or not. Of course, one may argue that AI technologies are becoming more precise every day and metadata will help,151 but still, concerns remain. Individual Licensing When content is made available by cultural heritage platforms, different licensing schemes are applied. There is content which is marked as ‘Public Domain CC0’: users may use it as freely as they like – even for commercial purposes. This should be the aim for every publicly funded digitization project. It is therefore commendable when platforms like Europeana promote licensing content as freely as possible using well-known licenses such as Creative Commons.152 Furthermore, there are individual licensing approaches: many museums demand individual rights acquisition for each individual piece of cultural heritage which is part of their collection.153 Other museums provide a kind of ‘flat rate’ for special purposes: the Deutsches Museum in Munich, for example, allows the reuse of content for non-commercial, scientific and educational purposes without the permission of the rights holders, unless rights of third parties are infringed and the content is published elsewhere online or offline. With these provisions, the risk of using content is passed on to the user. Fortunately, some platforms may use the licensing scheme of Creative Commons, which offers a variety of suitable licenses for reuse.154 Regarding new business models, a restriction must be made: as we have seen, cultural heritage is also used by many small and medium-sized companies in the cultural sector. These kinds of uses are prohibited when licenses are only given for non-commercial purposes. Bearing in mind that also these companies foster cultural development, future projects of making available cultural heritage shall target using CC-BY licenses only.155 This may have the effect that material that was originally freely available is again subject to restrictions.156 However, in our view, the advantages of developing cultural

For details see Wallace and Euler (n 118) 839. Wallace and Euler (n 118) 841. 151 Wallace and Euler (n 118) 845. 152 ‘Recommendations on Copyright and Its Role in the Digital Transformation of the Cultural Heritage Sector’ (n 77) 6. 153 See, for example, LWL-Museum für Kunst und Kultur in Westfalen-Lippe. 154 For more details see Esther Hoorn, ‘Contributing to Conversational Copyright: Creative Commons Licences and Cultural Heritage Institutions’ in Lucie Guibault and Christina Angelopoulos (eds), Open Content Licensing: From Theory to Practice 203ff. . 155 Hoorn (n 154) 240. 156 E.g. as it is already the case with https://​artsandculture​.google​.com/​. 149 150

500  Research handbook on intellectual property and cultural heritage heritage outweigh the disadvantages of such re-commercialization (like, for example, the project ‘Google Books’ proves).

THE FUTURE So far, the chapter has shown that the legal framework created by the CDSM Directive has brought some significant improvements to the digitization and making available of cultural heritage platforms as well as for authors and rights holders. Depending on the national implementation of the provisions of CDSM Directive, the vast majority of digital technologies may be used for preservation of cultural heritage as well as their dissemination by cultural heritage institutions.157 To enable future and further use of digital cultural heritage, the opportunities which may be opened up by digital technologies should be embraced: if we continue working with digital data, use it for research and educational purposes, we may thus create a completely new access to culture.158 But this also means that IP legislation should not close itself off to new paths and – also commercial – projects: thus, ‘The Next Rembrandt’, a project creating new content (in particular: a new Rembrandt painting) through machine learning, would never have come into existence without recourse to already existing, digitized paintings of Rembrandt himself.159 Also other practices for using artificial intelligence on cultural heritage are increasing.160 Furthermore, the integration of cultural goods into other digital solutions is increasing (e.g., the artshop of ‘The Frame’ by Samsung or augmented reality161 and virtual reality162 projects). Digital technologies bear a lot of opportunities for both cultural heritage and new business models, which shall be promoted and not hindered by IP legislation.163 Therefore, in future legislative procedures – at international level as well as in national implementation – the underlying conflict should always be considered holistically. As a guiding principle, it must

157 Katharina Hauck, ‘Digitalisierung von Kulturgut – Chancen, Möglichkeiten & Herausforderungen – LWL | Startseite’ accessed 22 May 2021. 158 Hauck (n 157). 159 ‘The Next Rembrandt’ (The Next Rembrandt) accessed 22 May 2021; Stefanie Karg, “The Next Rembrandt” – Kunstwerke aus dem 3D Drucker?!’ (Kultur hoch N, 8 April 2016) accessed 22 May 2021. 160 Brigitte Vézina and Sarah Pearson, ‘Artificial Intelligence and Copyright in the Cultural Heritage Sector: Views from Creative Commons’ (Europeana Pro, 18 March 2021) accessed 22 May 2021. 161 Andrea F Abate and others, ‘An Augmented Reality Mobile App for Museums: Virtual Restoration of a Plate of Glass’ in Marinos Ioannides and others (eds), Digital Heritage. Progress in Cultural Heritage: Documentation, Preservation, and Protection, vol 11196 (Springer International Publishing 2018) accessed 22 May 2021. 162 Emiliano Pérez and others, ‘Touring the Forum Adiectum of Augusta Emerita in a Virtual Reality Experience’ in Marinos Ioannides and others (eds), Digital Heritage. Progress in Cultural Heritage: Documentation, Preservation, and Protection, vol 11196 (Springer International Publishing 2018) accessed 22 May 2021. 163 Wallace and Euler (n 118) 825.

IP issues relating to CH platforms and new business models  501 not be forgotten that culture is a human right and not primarily an asset.164 The knowledge of the world found in books and other cultural goods belongs to all people.

164 Neil Forbes and Antonella Fresa, ‘Copyright and Cultural Heritage: Developing a Vision for the Future’ accessed 22 May 2021.

26. Born digital: Law, policy, and the preservation of videogames as digital cultural heritage Benjamin Farrand

INTRODUCTION When discussing cultural heritage, people may often think of manmade wonders such as pyramids, historical epics, or the paintings of the Renaissance masters. Yet cultural heritage is not solely the record of the long-since past, but a living, changing thing, that is constantly added to, shaped and reshaped, interpreted, and reinterpreted. Furthermore, many works being created today could be the historically important cultural artefacts of tomorrow; in this period of time, when many of these works are not physically existent but are instead ‘born digital’, with no physical analogue, how they can be preserved and made available for future generations to engage with becomes a highly pertinent question. For copyright scholars, a further question must be asked, which is, ‘How can we effectively preserve born-digital works that are protected by copyright?’ After all, when we consider ‘born-digital’ cultural heritage, we are considering works created in past 50 or so years, which are highly likely if not guaranteed to fall within the terms of the duration of copyright mandated under EU law. The acts of reproduction and making available necessary for preservation and providing access to these works would normally fall foul of copyright law. Yet this is a conundrum that the EU is well aware of, and which it has sought to address through the development of cultural heritage policies and recent reforms to its body of intellectual property legislation. This chapter explores the challenges and opportunities for the preservation of and access to born-digital content in the EU, using videogames as a case study to demonstrate the complexities in providing these forms of protection to born-digital work, particularly in instances where engagement with cultural heritage go beyond the passive to the active, and communities engage in forms of adaptation and reinterpretation as part of a living intangible cultural heritage. This chapter is divided into three substantive parts: the first provides an overview of the concept of born-digital cultural heritage, its position under UNESCO frameworks, and the link to the concept of intangible cultural heritage. It expands upon the role of videogames as a form of cultural heritage, as well as the risks of technological obsolescence and data loss that act as drivers for preservation and access efforts. The second section details the EU’s laws and policies in the field of copyright pertinent to the preservation of works of cultural heritage, tracing the origins from a more ‘copyright-maximalist’ position under early 21st-century directives through to a more nuanced and ostensibly cultural heritage-friendly position under the most recent copyright legislation. However, positive steps do not result in perfect outcomes, and there are still significant challenges ahead for preservation and access to born-digital works. This is explored in more detail in the third substantive section of this chapter, which uses videogames as a case study demonstrating where the current copyright framework still limits endeavours to preserve this content to a comparatively small number of institutions, as well as providing copyright exceptions to a small number of acts. Where a body does not fall under 502

Born digital  503 the definition of a traditional cultural heritage institution, the ability to legally preserve works through digital reproduction is questionable; the ability to make those works available to the public, as well as to adapt, translate, or build upon them to create new transformative works more questionable still. The chapter concludes that while the relationship between access to culture and the protection of its creators under copyright are becoming more positive through the policies and actions of the EU, tensions straining that relationship yet continue.

BORN DIGITAL: NEW TECHNOLOGIES, NEW MEDIA, AND NEW CULTURAL HERITAGE In considering the legal and political hurdles facing the preservation of digital forms of works that could be considered as cultural heritage, it is necessary to define the relevant subject matter. Indeed, the term ‘digital’ cultural heritage can apply in different situations. The first is the creation of digitised renditions of ‘already existing’ physical objects with cultural relevance.1 Examples of this may include digital reproductions of artworks by renowned painters such as Leonardo Da Vinci,2 or scans of historically relevant texts such as a Draft treatise against papal supremacy authored by Edward VI, digitally preserved by the British Library.3 This type of digital cultural heritage can be defined as “the digitization of tangible cultural heritage … [through the] conversion into digital format of the cultural artifacts”,4 often by museums, galleries or other public institutions. ‘Born digital’ cultural heritage, in comparison, comprises those works that have no physical presence, but exist only in an intangible state. UNESCO recognises the importance of digital cultural heritage as distinct from the physical, adopting a Charter in 2003 that calls for its protection.5 Article 1 of the Charter states: Where resources are ‘born digital’, there is no other format but the digital object […these] materials include texts, databases, still and moving images, audio, graphics, software and webpages, among a wide and growing range of formats. They are frequently ephemeral, and require purposeful production, maintenance and management to be retained.

Authors such as Koščík and Myška6 highlight the interrelation between the protection of digital cultural heritage and the preservation of intangible cultural heritage, as discussed in Kurin’s

1 In other words, the digitisation of material cultural heritage. The term ‘born-again’ cultural heritage is unlikely to catch on. 2 A full online gallery of Da Vinci’s works can be found at https://​www​.leonardodavinci​.net/​. 3 British Library, ‘Digitised Manuscripts: Draft Treatise against Papal Supremacy by Edward VI, 1548-1549’ (The British Library, 9 March 2015) accessed 19 May 2021. 4 Luciana Lazzeretti and Andrea Sartori, ‘Digitisation of Cultural Heritage and Business Model Innovation: The Case of the Uffizi Gallery in Florence’ (2016) 14 IL CAPITALE CULTURALE.: Studies on the Value of Cultural Heritage 945, 946. 5 UNESCO Charter on the Preservation of the Digital Heritage (2003). 6 Michal Koščík and Matěj Myška, ‘Copyright Law Challenges of Preservation of “Born-Digital” Digital Content as Cultural Heritage’ (2019) 10 European Journal of Law and Technology 1.

504  Research handbook on intellectual property and cultural heritage commentary7 on the adoption of a UNESCO Convention on Intangible Cultural Heritage.8 This Convention defines intangible cultural heritage as “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”.9 The Convention explicitly acknowledges that this cultural heritage is continuously changing through processes of creation and recreation, through the engagement with it by communities and groups. This can be seen in forms such as the recording or performance of forms of intangible cultural heritage such as traditional dance and song on social media platforms such as Facebook,10 the singing of sea shanties on TikTok,11 or the uploading of various forms of community-based works on YouTube.12 Yet, engagement with these works of intangible cultural heritage through social media, and indeed, engagement with others through social media can constitute forms of intangible cultural heritage in themselves,13 despite only existing in a ‘purely’ digital form. The transience of born-digital cultural heritage seems somewhat counterintuitive given the adage that once something is on the Internet, it is there forever. Indeed, this rationale is a significant driver in the academic literature concerning ‘the right to be forgotten’,14 enshrined to an extent in the General Data Protection Regulation’s right to data erasure.15 However, this permanence is overstated; as the UNESCO Charter states at Article 3, “the world’s digital heritage is at risk of being lost to posterity. Contributing factors include the rapid obsolescence of hardware and software which brings it to life, uncertainties about resources […] and the lack of supportive legislation.” The final point, on the lack of supportive legislation, will be returned to throughout this chapter. The first, on rapid obsolescence, is a particular problem when dealing with digital data. Forms of storage have developed rapidly since the inception of the first punch-card systems to floppy disks, zip drives, mini-disk drives, through to the

7 Richard Kurin, ‘UNESCO Votes New Intangible Cultural Heritage Convention’ (2003) 44 Anthropology News 21. 8 UNESCO Convention for the Safeguarding of the Intangible Cultural Heritage (2003). 9 Ibid, Article 2(1). 10 Md Saifuddin Khalid and Md Saiful Alam Chowdhury, ‘Representation of Intangible Cultural Heritage of Bangladesh through Social Media’ (2018) 29 Anatolia 194. 11 Maddy Shaw Roberts, ‘Why TikTok Is Singing Sea Shanties to Its Heart’s Content’ (Classic FM, 14 January 2021) accessed 24 May 2021. 12 Sheenagh Pietrobruno, ‘YouTube and the Social Archiving of Intangible Heritage’ (2013) 15 New Media & Society 1259. 13 C Ailie Fraser and others, ‘How Live Streaming Does (and Doesn’t) Change Creative Practices’ (2019) 27 Interactions 46; Ellen Simpson and Bryan Semaan, ‘For You, or For “You”? Everyday LGBTQ+ Encounters with TikTok’ (2021) 4 Proceedings of the ACM on Human-Computer Interaction 252:1. 14 See for example Jeffrey Rosen, ‘The Right to Be Forgotten Symposium Issue: The Privacy Paradox: Privacy and Its Conflicting Values’ (2011) 64 Stanford Law Review Online 88; Chelsea E Carbone, ‘To Be or Not to Be Forgotten: Balancing the Right to Know with the Right to Privacy in the Digital Age’ (2015) 22 Virginia Journal of Social Policy & the Law 525; Miquel Peguera, ‘In the Aftermath of Google Spain : How the “Right to Be Forgotten” Is Being Shaped in Spain by Courts and the Data Protection Authority’ (2015) 23 International Journal of Law and Information Technology 325. 15 Regulation 2016/679 on the protection of natural persons with regard to the processing of personal data and on the free movement of such data, and repealing Directive 95/46/EC (General Data Protection Regulation), Article 17.

Born digital  505 modern external solid-state drives (or SSDs). With each new storage medium has come increased file storage size, and ostensibly, security and integrity for the data stored within. However, many of these physical data stores are now obsolete, and rarely used outside of highly specialised institutions or sectors.16 Similarly, while web portals such as Angelfire and Geocities were once where individuals may have created their own personal webpages, these platforms no longer exist and nor do the websites that they once hosted. As another example, URL shorteners are used to translate longer web addresses into shorter ‘bite-size’ links, such as the service provided by bit.ly. However, one form of link shortener was Google’s goo.gl link redirects, which were decommissioned in April 2018, resulting in millions of hyperlinks to webpages being rendered unusable.17 These issues of data impermanence and obsolescence have been the focus of significant research and identification of best practices amongst archivists,18 and underscore the need for some means of cataloguing and collating the wealth of born-digital works produced that could constitute forms of cultural heritage. This was recognised by UNESCO, which published a Recommendation on the preservation of documentary heritage, including in digital form.19 The Recommendations urged both a development of standard-setting in the form of International Organization for Standards (ISO) ISOs, which should be adhered to by member nations, both in terms of the preservation of documentary heritage,20 as well as in ensuring public access to that preserved digital heritage.21 Before considering the current EU legal framework and its implications for the preservation of born-digital cultural heritage, it is useful to expand upon the medium of expression of videogames, which acts as the case study for this chapter. Videogames are increasingly complex multimedia works that range from small ‘indie’ productions that may only involve one or two individuals working on all aspects of the game design (from code to art assets to sound effects) or may constitute ‘AAA’ multi-studio efforts involving hundreds of individuals working in multiple countries with a budget in the hundreds of millions.22 As well as being a source for the digital reproduction of forms of tangible cultural heritage such as representations of past

16 Some examples are provided in Tom Warren, ‘Boeing 747s Still Get Critical Updates via Floppy Disks’ (The Verge, 11 August 2020) accessed 24 May 2021. However, it must be stated that it was incredibly difficult to find any examples of sectors still using zip drives or mini-disks. 17 Kyle Schutter, ‘Data Impermanence’ (Medium, 12 April 2020) accessed 24 May 2021. 18 Wright R Adams, ‘Archiving Digital Materials: An Overview of the Issues’ (2009) 19 Journal of Interlibrary Loan, Document Delivery & Electronic Reserve 325; Ben Goldman and Timothy D Pyatt, ‘Security Without Obscurity: Managing Personally Identifiable Information in Born-Digital Archives’ (2013) 26 Library & Archival Security 37; Lise Jaillant, ‘After the Digital Revolution: Working with Emails and Born-Digital Records in Literary and Publishers’ Archives’ (2019) 47 Archives and Manuscripts 285. 19 UNESCO Recommendation Concerning the Preservation of, and Access to, Documentary Heritage Including in Digital Form, adopted by the General Conference at its 38th Session, Paris, 17 November 2015. 20 Ibid, s.2. 21 Ibid, s.3. 22 Grand Theft Auto V, for example, is reputed to have had a development budget of $265 million, according to Adriano Valente, ‘The 15 Most Expensive Games Ever Made, Ranked’ (TheGamer, 2 July 2019) accessed 24 May 2021.

506  Research handbook on intellectual property and cultural heritage historical events or accurate renditions of important historical buildings and monuments,23 videogames can increasingly be seen as being an important form of cultural heritage in their own right,24 as well as reflecting the intangible cultural heritage of a particular time in history, acting as a snapshot concerning the thoughts, perceptions and values of a given community.25 This is not to say that every videogame contains nuanced reflections on a given subject matter; the original Donkey Kong, after all, is merely a skill-based game in which the player character must jump over thrown barrels in order to reach a set goal. But the culture and community that was generated around this game, and its historical legacy, can lead to it gaining cultural significance.26 Yet a videogame may be culturally relevant due to the fictional story it tells, both explicitly and in its meta-narrative, such as Toby Fox’s Undertale, which acts both as an adventure game and a compelling rumination on the notion of player agency, acts of violence committed in the context of ‘playing a game’, and the malleability of both code and player expectations. As potentially important forms of digital cultural heritage, videogames share the same risks of loss through obsolescence, particularly in the context of videogames stored on physical media for computer systems that are no longer produced or supported, such as the Commodore 64, Sega Mega Drive or Sony PlayStation. Similarly, the disks, cartridges, and CDs that these games are stored on may degrade over time, through processes of oxidisation or the loss of charge of internal batteries in the case of cartridges. Methods of preserving the digital data stored on those physical media, through processes known as ‘ripping’ the data into ROM or ISO files, that store a copy of that code that can be run by an emulation program,27 are therefore essential in ensuring the protection of these works with cultural relevance, in much the same way as other forms of cultural heritage. However, these forms of born-digital heritage face certain legal obstacles to their preservation, particularly in the context of the intellectual property system.

LAW, POLICY AND POLITICS: HOW OPEN IS THE CURRENT EU LEGAL FRAMEWORK TO PRESERVATION OF AND ACCESS TO BORN-DIGITAL CULTURAL HERITAGE? The EU sets as one of its fundamental goals that it ensures “Europe’s cultural heritage is safeguarded and enhanced”.28 A common yet rich and diverse culture is perceived as being at

23 Xenia Zeiler and Suzie Thomas, ‘The Relevance of Researching Video Games and Cultural Heritage’ (2021) 27 International Journal of Heritage Studies 265. 24 Joanna Barwick, James Dearnley and Adrienne Muir, ‘Playing Games With Cultural Heritage: A Comparative Case Study Analysis of the Current Status of Digital Game Preservation’ (2011) 6 Games and Culture 373; Lina Eklund, Björn Sjöblom and Patrick Prax, ‘Lost in Translation: Video Games Becoming Cultural Heritage?’ (2019) 13 Cultural Sociology 444. 25 See Julian Kucklich, ‘Literary Theory and Videogames’ in Jason Rutter and Jo Bryce (eds), Understanding Digital Games (SAGE Publications 2006). 26 One example is the 2007 documentary The King of Kong, about the competitive culture that developed around arcade gaming and the beating of high scores. 27 For more on this process see Benjamin Farrand, ‘Emulation Is the Most Sincere Form of Flattery: Retro Videogames, Rom Distribution and Copyright’ [2012] Journal of Internet, Law and Politics 5. 28 Consolidated version of the Treaty on European Union, Article 3(3).

Born digital  507 the centre of the EU, indeed, lying “at the very heart of the European project”.29 For the EU, this is not just a matter of cultural preservation, however, but is based on an understanding of the financial value that cultural heritage possesses; this can be seen not only in the safeguarding and enhancement of Europe’s cultural heritage in Article 3(3) TEU, which concerns the harmonisation of the internal market (itself an ultimately economic goal30), but in the Commission’s explicit recognition that “culture is an indispensable feature to achieve the EU’s strategic objectives of prosperity, solidarity and security”.31 Not only is cultural heritage seen as a means of exercising a form of ‘soft power’ at the international level,32 but as an economic lever; as one of the objectives of the 2007 Communication on a European agenda for culture, “culture [acts] as a catalyst for creativity in the framework of the Lisbon Strategy for growth and jobs”.33 In 2008, the Commission stated its awareness of the challenge of preserving digital cultural heritage: “electronic resources, regardless of whether they are created initially through digitisation or are born digital, are threatened by deterioration of the medium carrying them or obsolescence of the technology on which they depend.”34 The need to better secure both the digitisation of cultural heritage works in physical form and those that were born digital has facilitated a prioritisation of EU efforts to promote the preservation of and access to cultural heritage in digital form.35 Despite this intent on the part of the Commission, the fact remains that born-digital works are highly likely (if not guaranteed) to be well within the term of copyright protection,36 risking that should these works not be preserved, there will be a “20th century black-hole”37 in which a significant number of works may fall. Whether a user-generated video of individuals ‘spon29 European Commission, Communication on a European agenda for culture in a globalizing world, COM(2007) 242 final, 2. 30 See for example Mark Thatcher and Cornelia Woll, ‘Evolutionary Dynamics in Internal Market Regulation in the European Union’, The Oxford Handbook of Historical Institutionalism (Oxford University Press 2016). 31 European Commission (n 29), 3. 32 On culture as a form of soft power, see Steven B Rothman, ‘Revising the Soft Power Concept: What Are the Means and Mechanisms of Soft Power?’ (2011) 4 Journal of Political Power 49; Mariano Martín Zamorano, ‘Reframing Cultural Diplomacy: The Instrumentalization of Culture under the Soft Power Theory’ (2016) 8 Culture Unbound 165; Hanna Schreiber, ‘Intangible Cultural Heritage and Soft Power – Exploring the Relationship’ (2017) 12 International Journal of Intangible Heritage 44; on culture as an instrument of EU external relations, see Yudhishthir Raj Isar, ‘“Culture in EU External Relations”: An Idea Whose Time Has Come?’ (2015) 21 International Journal of Cultural Policy 494. 33 European Commission (n 29), 9. 34 European Commission, Europe’s cultural heritage at the click of a mouse: Progress on the digitisation and online accessibility of cultural material and digital preservation across the EU, COM(2008) 513 final, 17. 35 Nadine Klass, Hajo Rupp and Julia Wildgans, ‘Bringing Europe’s Cultural Heritage Online: Initiatives and Challenges’ in Paul Torremans and Irini Stamatoudi (eds), EU Copyright Law: A Commentary (2nd edn, Edward Elgar 2021) 939. 36 Namely the life of the author plus 70 years for literary and artistic works under Directive 2006/116/ EC on the term of protection of copyright and certain related rights Article 1, with cinematographic and audiovisual works being protected for 70 years after the death of the last person specified as a co-author under Article 2. Similarly, related rights protection for film affixations and film broadcasts is 50 years after first fixation or communication, depending on which is earliest, under Article 3. The protection for sound recordings is now 70 years from recording or communication in the case of sound recordings, under Directive 2011/77/EU on the term of protection of copyright and certain related rights. 37 Klass, Rupp and Wildgans (n 35) 962.

508  Research handbook on intellectual property and cultural heritage taneously’ dancing to music uploaded to TikTok, a movie review posted on a social media platform such as Medium or Facebook, or a single-author developed videogame uploaded to the creative content website Newgrounds,38 born-digital works are protected by copyright insofar as they are original, defined as constituting the author’s own intellectual creation39 and the creator was able to make free and creative choices.40 For this reason, making reproductions of a born-digital work would normally be considered an infringement under the Information Society Directive of the author’s exclusive economic right of reproduction of that work,41 as well as the right of communication to the public in the event that those reproductions were made publicly available.42 This equally applies in the case of software,43 which has specific relevance to the videogame case study that will be expanded upon in the next section of this chapter. While Article 5 of the Information Society Directive provided for some exceptions and limitations to copyright, including for acts of reproduction by libraries, museums and archives, the optional nature of these limitations,44 as well as their narrow interpretation by the courts,45 the utility of these exceptions for the purposes of digital cultural heritage preservation and access appears comparatively small. Indeed, libraries and museums were critical in their judgement of the Directive,46 noting that their role in making works available to the public had been made harder rather than easier due to its implementation. The inflexibility of copyright rules, as well as perceptions of dramatic overreach in terms of the breadth of coverage, has been an issue of political sensitivity for the EU.47 Indeed, in its responses to economic and legitimacy crises in the EU, in which intellectual property policies were often at the forefront of initiatives to improve growth and stability, as well as provide additional legitimacy to its decision-making in an arena characterised by protest and scepticism,48 moves were made by the Commission to pursue copyright initiatives that were 38 It is important to note that it is not necessarily the case that all uploaded content would be considered as works of historic import sufficient for being treated as cultural heritage, only that they could have the potential to be viewed as such. After all, the cultural relevance and importance of an expression is something that can only be feasibly determined with hindsight and reflection, rather than in the immediacy of its creation and communication to an audience. 39 Case C-5/08 Infopaq International A/S v Danske Dagblades Forening EU:​C:​2009:​465. 40 Case C-145/10 Eva-Maria Painer v Standard VerlagsGmbH and Others EU:​C:​2011:​798. 41 Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information society, Article 2. 42 Ibid, Article 3 43 Directive 2009/24/EC on the legal protection of computer programs, Article 4. 44 For more on this, see Lucie Guibault, ‘Why Cherry-Picking Never Leads to Harmonisation: The Case of the Limitations on Copyright under Directive 2001/29/EC’ (2010) 1 Journal of Intellectual Property, Information Technology and E-Commerce Law 55; Alison Firth and Beverley Pereira, ‘Exceptions for Libraries and Archives’ in Irini A Stamatoudi (ed), New Developments in EU and International Copyright Law (Kluwer Law International 2016); Koščík and Myška (n 6). 45 See Stijn van Deursen and Thom Snijders, ‘The Court of Justice at the Crossroads: Clarifying the Role for Fundamental Rights in the EU Copyright Framework’ (2018) 49 IIC – International Review of Intellectual Property and Competition Law 1080. 46 Robert Burrell and Allison Coleman, Copyright Exceptions in Europe: The Digital Impact (Cambridge University Press 2005). 47 Benjamin Farrand, ‘Lobbying and Lawmaking in the European Union: The Development of Copyright Law and the Rejection of the Anti-Counterfeiting Trade Agreement’ (2015) 35 Oxford Journal of Legal Studies 487. 48 For more on this topic, see Benjamin Farrand, ‘From a “Digital Agenda for Europe”, to a “Digital Single Market”, to a “Europe Fit for the Digital Age”: A Decade of European Union Copyright Policy in

Born digital  509 both more flexible as well as responsive (rather than reactive) to uses of works resulting from the uptake of new technologies. The first initiative in this new approach was the treatment of ‘orphan works’. Orphan works are those works that may still be protected by copyright, but where the rightholder cannot be identified, or even if identified, cannot be located.49 The issue of orphan works is of considerable importance to libraries, museums and other institutions involved in cultural heritage preservation. The onerous nature of searching for a rightholder, and the risk of being sued for damages or significant licensing fees being imposed if the institution risks engaging in the digitisation and reproduction of the work and a rightholder then appears, means that many works may not be preserved and made available to the public due to that risk.50 Originally, a soft approach was taken with the introduction of a 2006 Recommendation,51 which urged Member States to consider introducing systems and best practices for the digitisation of cultural heritage, including national mechanisms for facilitating the use of orphan works (while stating that this should happen in full compliance with copyright law).52 However, as with many such Recommendations, the results of the initiative were both patchy and limited; some Member States engaged with the approach while others did not,53 and the territorial nature of the applicability meant that content licensed for use in one Member State would not guarantee an exclusion of liability should a rightholder be identified and bring action in another Member State, meaning that risks would remain.54 For this reason, the Commission proposed a Directive that would require the establishment of a specific exception to copyright in these circumstances,55 considered explicitly within the context of the EU’s financial recovery plan outlined in the Digital Agenda for Europe.56 The resulting Directive allows for the use of orphan works of particular types57 by “publicly accessible libraries, educational establishments and museums, as well as by archives, film or audio heritage institutions and public-service broadcasting organisations”.58 This use, subsequent to a diligent search under Article 3, allows for the reproduction and making available of the work to the public, in essence providing for an exception to the exclusive rights under Articles 2 and 3 of the Information Society Directive.59 This was intended to provide protection for these cultural institutions to progress their public interest function in preserving and ensuring the Shadow of Crises’ in Paul Torremans and Irini Stamatoudi (eds), EU Copyright Law: A Commentary (2nd edn, Edward Elgar 2021). 49 As defined by Directive 2012/28/EU on certain permitted uses of orphan works, Article 2. 50 Uma Suthersanen and Maria Mercedes Frabboni, ‘The Orphan Works Directive’ in Paul Torremans and Irini Stamatoudi (eds), EU Copyright Law: A Commentary (2nd edn, Edward Elgar 2021) 481. 51 Commission Recommendation 2006 on the digitisation and online accessibility of cultural material and digital preservation. 52 Ibid, paragraphs 1, 4 and 7 of the Recommendation. 53 Euan Lawson, ‘Orphan Works and Transformative Works in the Knowledge Economy’ (2009) 20 Entertainment Law Review 61, 62. 54 Susan Corbett, ‘Regulation for Cultural Heritage Orphans: Time Does Matter’ (2010) 1 WIPO Journal 180, 185. 55 Proposal for a Directive on certain permitted uses of orphan works, COM(2011) 289 final, 1. 56 European Commission, A Digital Agenda for Europe, COM(2010) 245 final/2, 8. 57 Namely literary works in the form of books, journals, magazine and newspaper articles in written form, cinematographic and audiovisual works, under Article 1(2) of Directive 2012/28/EU – the issues as this pertains to videogames will be considered in more detail in the next section of this chapter. 58 Directive 2012/28/EU, Article 1(1). 59 Ibid, Article 6.

510  Research handbook on intellectual property and cultural heritage access to these works. However, academic assessments of the success of the Directive have been mixed; Schroff, Favale and Bertoli note that the search requirements for these institutions remain hugely burdensome despite the implementation of the Directive, requiring the searching of several hundred sources and limited development of national and European databases (now managed by the EUIPO).60 Montagnani and Zoboli state that the limitations in the Directive make the mass digitisation of works for the purposes of preservation and ensuring access infeasible,61 while Suthersanen and Frabboni comment that the exclusion of certain forms of work such as stand-alone photographs and images severely limit the Directive,62 a point that will be returned to in the next section. Furthermore, while there is nothing in the Directive that explicitly placed born-digital content from its scope, the requirement that the works are contained within the collections of the cultural institutions seeking to reproduce and make available the works means that unless the definitions contained in the Directive for museums, archives and libraries are dramatically expanded, works available on platforms such as YouTube or Medium would not appear eligible for an exception to the exclusive reproduction and communication rights.63 Therefore, the Directive is a step towards making the digitisation of cultural heritage possible, yet appears to do little to guarantee the preservation of born-digital works. The second initiative, and the one with the potential for greater benefits, began with the Commission’s Digital Single Market Strategy, which in order to remove barriers to digital trade between Member States and further support economic recovery, proposed a ‘more modern’ copyright approach that would facilitate better access to digital content, which would “create and invest while allowing transmission and consumption of content across borders, building on our rich cultural diversity”.64 The resulting Communication65 highlighted that a new approach to copyright was required in order for copyright to adapt to new technological realities, rather than vice versa.66 Relevant to cultural heritage protection, the Communication stated that a ‘clear space’ was required to allow for the preservation of Europe’s cultural heritage, referring explicitly to both digitised and born-digital works.67 A Directive was therefore proposed as a means of adapting copyright to new technological realities, as well as dealing with issues such as addressing the ‘value gap’ identified by the Commission and the creative industries between what value their works possess, what income platforms such as YouTube and Facebook generate, compared with the share received by the content producers. This highly controversial Copyright in the Digital Single Market (CDSM) Directive68 that was

60 See generally Simone Schroff, Marcella Favale and Aura Bertoni, ‘The Impossible Quest – Problems with Diligent Search for Orphan Works’ (2017) 48 IIC – International Review of Intellectual Property and Competition Law 286. 61 Maria Lillà Montagnani and Laura Zoboli, ‘The Making of an “Orphan”: Cultural Heritage Digitization in the EU’ (2017) 25 International Journal of Law and Information Technology 196. 62 Suthersanen and Frabboni (n 50) 487. 63 This, however, is an idea worth considering, and one pursued in scholarship on archiving and cultural heritage, as expanded upon in Pietrobruno (n 12). 64 European Commission, A Digital Single Market Strategy for Europe, COM(2015) 192 final, 7. 65 European Commission, Towards a modern, more European copyright framework, COM(2015) 626 final. 66 Which was somewhat the case with the implementation of the Information Society Directive. 67 European Commission, (n 64), 8. 68 Directive 2019/790 on copyright and related rights in the Digital Single Market.

Born digital  511 the outcome of this initiative has been subject to a significant degree of academic criticism,69 although as discussed by Dusollier,70 the Directive should not be considered irredeemable. In particular, the efforts made to make the preservation of and access to cultural heritage in the online environment are largely positive. Under Article 6 of the CDSM Directive, cultural heritage institutions (defined as “a publicly accessible library or museum, an archive or a film or audio heritage institution” under Article 2(3)) are provided with a mandatory exception that allows them “to make copies of any works or other subject matter that are permanently in their collections, in any format or medium, for purposes of preservation of such works or other subject matter and to the extent necessary for such preservation”. Furthermore, these institutions will be able to seek non-exclusive non-commercial licences for the use of works protected by copyright but out of commerce, insofar as they are not available to the public through customary channels of commerce under Article 8. This amounts to some modest progress, although as Panezi discusses, while these changes do permit preservation of works within an institution’s collections, the Directive says little on access.71 Furthermore, while the Directive does refer to reproduction ‘whatever the form’ of the content, therefore suggesting it will equally apply to born-digital content, the extent to which these institutions will have born-digital materials as part of their collections is open to debate. Koscik argues that by indicating in recital 28 to the Directive that the ability of cultural heritage institutions to rely upon third parties for the digitisation of content and its reproduction, the position of these institutions is made more secure.72 However, there is ambiguity over the statement in recital 29 regarding the requirement that the content be owned or permanently held by the institution, “for example as a result of a transfer of ownership or a licence agreement, legal deposit obligations or permanent custody arrangements”. In the final substantive section of this chapter, these ambiguities will be explored further through the consideration of the ways in which the current legal framework provides support and challenges to the preservation of and access to videogames as a form of born-digital cultural heritage.

69 Controversial due to the adoption of a press-publishers right under Article 15, and the obligations imposed upon online platforms under Article 17 – see Christophe Geiger, Oleksandr Bulayenko and Giancarlo Frosio, ‘The Introduction of a Neighbouring Right for Press Publisher at EU Level: The Unneeded (and Unwanted) Reform’ (2017) 39 European Intellectual Property Review 202; Giulia Priora, ‘Catching Sight of a Glimmer of Light: Fair Remuneration and the Emerging Distributive Rationale in the Reform of EU Copyright Law’ (2020) 10 JIPITEC 330; Joao Pedro Quintais, ‘The New Copyright in the Digital Single Market Directive: A Critical Look’ (2020) 42 European Intellectual Property Review 28. However, these issues are outwith the scope of this chapter and shall not be focused on. 70 Severine Dusollier, ‘The 2019 Directive on Copyright in the Digital Single Market: Some Progress, a Few Bad Choices, and an Overall Failed Ambition’ (2020) 57 Common Market Law Review 979. 71 Argyri Panezi, ‘Europe’s New Renaissance: New Policies and Rules for Digital Preservation and Access to European Cultural Heritage’ (2017) 24 Columbia Journal of European Law 596, 607–608. 72 Michal Koščík, ‘Exceptions for Cultural Heritage Institutions Under the Copyright Directive in the Digital Single Market’, 12th Conference on Grey Literature and Repositories (2019) 5.

512  Research handbook on intellectual property and cultural heritage

LOST IN PRESERVATION/TRANSLATION/ADAPTATION? OPPORTUNITIES AND CHALLENGES FOR EU TREATMENT OF VIDEOGAMES AS BORN-DIGITAL CULTURAL HERITAGE As the previous section of this chapter has demonstrated, through the general policies of the EU relating to cultural heritage and the specific copyright reforms pursued to support those policies, the position on the digitisation of works for the purposes of preservation has improved in the EU. While not explicitly providing for the application of mandatory exceptions to copyright in the context of born-digital cultural works, there is nothing explicitly precluding cultural heritage institutions from relying on these exceptions under the CDSM Directive. Legally and logistically, however, preserving and making available born-digital works is somewhat complex, particularly where there may be a user-generated dimension. Videogames as a form of cultural heritage constitute a compelling case study for considering these complexities, as well as for reflecting upon the EU approach to cultural heritage protection. As discussed in the first substantive section of this chapter, videogames are both cultural heritage through existing as specific artefacts reflecting cultural mores at a particular time and location, as well as giving rise to intangible cultural heritage in the communities that arise from engagement with those forms of popular culture. In this respect, they can be considered as being ‘in/as/of/through culture’; videogames exist in a particular cultural context, as a form of culture, of a set of cultural norms, and expressed through reference to cultural touchstones that both have meaning and create meaning within a particular community.73 For this reason, their loss has the same impact as the loss of other forms of cultural heritage, regardless of individual perceptions concerning the worth of those forms of expression.74 Videogames as a form of culture are intimately tied to technology, and as such, exist in a space where they are both potential cultural reference points and quickly obsolete and replaceable. 2021 marks the beginning of what is considered the ninth generation of videogame consoles with the introduction of the Sony PlayStation 5 and Microsoft Xbox Series X, with the previous eight generations beginning with very simple pixel-based games such as Pong in 1972, and advancing through to impressively complex games with simulated lighting and physics effects, such as Returnal in 2021.75 As each generation begins, support for previous generations begins to be scaled down; for example, with the release of the PlayStation 4 in 2014, support for the PlayStation 3 continued until 201776 (which was released in 2006, with PlayStation 2 manufacturing

73 For more on this conceptualisation, see Casey O’Donnell, ‘On Balinese Cockfights: Deeply Extending Play’ (2014) 9 Games and Culture 406. 74 Videogames as a form of culture have been subject to criticisms, ranging from promoting violence to facilitating addiction, as discussed in Eklund, Sjöblom and Prax (n 24). In this respect, however, as forms of cultural expression, many musical, audiovisual and even literary works have been subject to the same criticisms. 75 For an overview of the first eight generations of consoles, see BBC, ‘The 8 Generations of Video Game Consoles’ (BBC Archive, 2016) accessed 20 May 2021. 76 Dan Ackerman, ‘Sony PlayStation 3 Ends Shipments, Fulfilling 10-Year Promise’ (CNET, 30 May 2017) accessed 20 May 2021.

Born digital  513 continuing until 201277). Once a console is no longer supported it, and the games developed for it, ultimately becomes available through second-hand sales only. If second-hand sales are excluded from the definition of ‘customary channels of commerce’ used in the CDSM Directive Article 8, the works themselves could be considered as ‘out of commerce’.78 Unless those games are re-released by the copyright owners (whether in the form of compilations of ‘greatest hits’ as Sega does with some of its games, or as digital versions accessible for smaller fees on services such as the PlayStation Network, or PSN), it is not possible to buy copies of those works through first-hand sales. By way of example, the Sega Mega Drive was released in 1988, and discontinued in 1997. Some of the console’s most popular games can be purchased legally to play on a variety of systems, through processes of software emulation. The online digital videogame distribution service Steam, for example, has 58 Mega Drive games available for purchase. However, this constitutes just over 6.7% of the console’s known library of approximately 878 officially licensed games. Furthermore, continued access on these services is not always guaranteed. At the beginning of 2021, Sony announced it would no longer be offering its back catalogue of PlayStation One ‘Classics’ on PSN for purchase, as well as ending its PSN support for the PlayStation 3 and handheld Vita consoles, it was only due to a significant Internet campaign protesting the closure that Sony decided to continue with the service.79 When considering even older systems than the PlayStation One and Mega Drive, such as the Atari, there is very little likelihood that these games are being offered through customary commerce channels. This presents both a challenge and an opportunity: a challenge, insofar as the mass digitisation of these old games would be central to their preservation as cultural works, but an opportunity insofar as they appear to be textbook examples of the type of works that could be proposed under the reforms facilitated through the CDSM Directive. So long as the digitisation (ergo, reproduction) is being performed by a cultural heritage institution for the purposes of preservation, those institutions can benefit from the exception to copyright created under Articles 6 and 8. There are now some museums that have been established for the purposes of showcasing videogame history, such as New York’s Museum of Play,80 Berlin’s Computerspielemuseum81 and Sheffield’s National Videogame Museum.82 In principle, EU-based organisations will be able to avail of the exceptions to copyright provided under the CDSM Directive to preserve the

77 BBC Technology News, ‘Sony Stops Production of PlayStation 2’ (BBC News, 31 December 2012) accessed 20 May 2021. 78 However, there is a question regarding whether this is the case; see Christophe Geiger, Giancarlo Frosio and Oleksandr Bulayenko, ‘Facilitating Access to Out-of-Commerce Works in the Digital Single Market – How to Make Pico Della Mirandola’s Dream a Reality in the European Union’ (2019) 9 JIPITEC 240. While the CDSM Directive is silent on the issue, a previous Commission Memorandum of Understanding on access to out-of-commerce did consider second-hand sales to not constitute part of the customary commerce channels for works. 79 Jim Ryan, ‘PlayStation Store on PS3 and PS Vita Will Continue Operations’ (PlayStation.Blog, 19 April 2021) accessed 20 May 2021. 80 Museum of Play, ‘About’ (National Museum of Play, 29 January 2019) accessed 20 May 2021. 81 Computerspielemuseum, ‘Welcome to the Computerspielemuseum’ (Computerspielemuseum, 2019) accessed 31 May 2021. 82 National Videogame Museum, ‘FAQs’ (National Videogame Museum, 2020) accessed 31 May 2021.

514  Research handbook on intellectual property and cultural heritage physical works that they own, as well as when securing licences for out-of-commerce works, which will help to secure this form of digital cultural heritage. However, issues remain. As was discussed in the preceding section, while the CDSM is clear on the topic of preservation, whether this preservation extends to access is another question. This poses both a challenge for clear and obvious cultural heritage institutions making their collections available online to the public, something that is increasingly being done with the digitised collections of museums and galleries throughout the world. This type of access is becoming much more relevant and important in the context of the COVID-19 pandemic and the limitations upon travel, social and cultural life that have resulted from initiatives to control the spread of the disease.83 Should these endeavours not apply to facilitating access to the born-digital works hosted by these institutions due to their copyright status, it begs the question: what is the purpose of preserving works that cannot be displayed? Similarly, the narrow definition of a cultural heritage institution also limits the utility of the CDSM for preserving and ensuring access to videogames as digital cultural heritage. Would efforts by individuals collectively seeking to preserve videogames through creating digital repositories of videogame ROMs constitute preservation by an ‘archive’ under Article 2(3)? A videogame café, which allows its customers to play the games it has available, would presumably not be able to benefit from the protections provided, due to their commercial nature. Would a website that classifies itself as a museum for demonstrating and making available these videogames be successful in arguing that they are a museum for the purposes of making use of the exceptions to copyright provided for under Articles 6 and 8? Presumably a case could be made for this claim being successful where the website was designed to place these games in context, providing information about their development, having ‘exhibitions’ designed around a particular studio, genre, designer or composer, and also shows related items such as concept art or instruction manuals. If such a website became affiliated with the web portal Europeana,84 a European Union initiative designed to provide a central access point for Europe’s digital museum collections, this argument could become even stronger. This would also serve to distinguish these websites from those more traditionally associated with piracy, where the only ‘context’ to the work is the list of videogame names as hyperlinks, which would not be likely to rely upon the exceptions provided for under the CDSM and would constitute infringing acts of public communication.85 A final point worth considering is the dimension relating to intangible cultural heritage, the community-formation dimension of videogames, and their use in transformative works. Online videogame communities do engage in the replaying of old videogames through software emulation, in which the functionality of consoles is reproduced on a modern computer system, allowing for near-authentic experiences of that game. Beyond this perhaps nostalgic experience, however, these communities also engage in activities such as the translation 83 See Jim McGrath, ‘Museums and Social Media During COVID-19’ (2020) 42 The Public Historian 164; Elizabeth Pennisi, ‘Shuttered Natural History Museums Fight for Survival’ (2020) 368 Science 1042; Priya Seetharaman, ‘Business Models Shifts: Impact of Covid-19’ (2020) 54 International Journal of Information Management 102173. 84 Accessible at www​.europeana​.eu. 85 For more on the contours of the European Court of Justice’s approach to communication in the context of copyright infringement and hyperlinking, see Eleonora Rosati, ‘When Does a Communication to the Public under EU Copyright Law Need to Be to a “New Public”?’ (2020) 45 European Law Journal 802.

Born digital  515 of works that were not originally released in a particular language (or produce a ‘better’ or more accurate translation of the work).86 They also build upon existing works to create new interpretations of that work, such as the community that uses existing ROMs and artefacts to add new levels or characters to popular franchises such as Sonic the Hedgehog.87 Finally, they may engage in the creation of ‘remakes’ of older games, often adding their own narratives or deepening gameplay in order to create a work that is both reminiscent of the old, while also something new.88 These communities, and uses, are unlikely to benefit from CDSM protection; these uses go beyond preservation under Article 6 to transformations resulting in derivative works, which require permission from the rightholders. While there have been arguments made for the establishment of a general exception to copyright for transformative works under EU copyright law,89 these have not yet manifested, meaning that the community activities discussed have the potential to breach rights under both the Information Society Directive and Software Directive.90 Furthermore, while the CDSM Directive allows for the bypassing of technological prevention measures (TPMs) for the purposes of digital preservation under Article 7(2), this applies only to those acts of preservation by cultural heritage institutions. Bypassing TPMs for the creation of derivative works, including by reverse-engineering code, will continue to breach Article 6 of the Information Society Directive, as well as potentially falling foul of Article 6 of the Software Directive. While some companies have been tolerant or even supportive of fan efforts to maintain a community around their games, such as Sega’s support for Sonic fan projects so long as they are not being made for profit,91 Nintendo is very

86 Minako O’Hagan, ‘Evolution of User-Generated Translation: Fansubs, Translation Hacking and Crowdsourcing’ (2009) 1 The Journal of Internationalization and Localization 94; Mia Consalvo, ‘Unintended Travel: ROM Hackers and Fan Translations of Japanese Video Games’ in Nina B Huntemann and Ben Aslinger (eds), Gaming Globally: Production, Play, and Place (Palgrave Macmillan US 2013) accessed 31 May 2021. 87 Alex Donaldson, ‘The Sonic Community Just Released a Slew of Amazing Fangame Demos’ (VG247, 28 August 2018) accessed 31 May 2021. A vibrant community for this game exists at https://​ sonicfangameshq​.com/​. 88 AGDInteractive is a game development group that have remade several old Sierra games from the 1980s; one of their most impressive remakes is that of King’s Quest II. Originally an incredibly simple pixel game with little narrative development, AGDInteractive completely rewrote the story, redrew all the art assets, composed new music and wrote new code – the result was a game that was immediately identifiable, and yet so different as to constitute an entirely new game. It is accessible at www​ .agdinteractive​.com/​games/​kq2 accessed 31 May 2021. 89 Rita Matulionyte, ‘10 Years for Google Books and Europeana: Copyright Law Lessons That the EU Could Learn from the USA’ (2016) 24 International Journal of Law and Information Technology 44; Christophe Geiger, ‘Statutory Licenses as Enabler of Creative Uses’ in Kung-Chung Liu and Reto M Hilty (eds), Remuneration of Copyright Owners: Regulatory Challenges of New Business Models (Springer 2017) accessed 31 May 2021; Stavroula Karapapa, ‘The Quotation Exception under EU Copyright Law: Paving the Way for User Rights’, The Routledge Handbook of EU Copyright Law (Routledge 2021). 90 Farrand, ‘Emulation Is the Most Sincere Form of Flattery’ (n 27); Henrike Maier, ‘Games as Cultural Heritage: Copyright Challenges for Preserving (Orphan) Video Games in the EU’ (2015) 6 JIPITEC 120. 91 Mary Osborne, ‘Sega Has A Surprising Opinion On Fan Games’ (SVG.com, 12 May 2021) accessed 31 May 2021.

516  Research handbook on intellectual property and cultural heritage active in issuing cease-and-desist notices in protection of its IP.92 In January 2021, Nintendo issued a Digital Millennium Copyright Act (DMCA) notice against GameJolt, a community site for game development, requesting the removal of 379 fan games based on Nintendo properties.93 While the position on the legal preservation of and access to games as digital cultural heritage is tenuous, that of game-creation communities as forms of intangible cultural heritage is even more so.

CONCLUSIONS Culture is not static, and nor are the forms of technology that will interact with culture to create new mediums and forms of expression. As more and more of our expressions are born in digital form, the implications for the preservation of these items of culture, as well as guaranteeing public access, become intimately tied to copyright and its exceptions. While a considerable amount of progress has been made in the EU to make the digitisation of content easier and more legally certain for cultural heritage institutions, there is still work to be done to facilitate the effective preservation of born-digital cultural heritage. Cultural heritage institutions that fall within the new protections afforded under the CDSM are in a better position than previously, although questions over the dimension of ‘access’ to culture rather than its ‘preservation’ remain. However, whether individuals or groups not falling within the narrow definition of cultural heritage institutions are able to rely upon the new exceptions to copyright is open to debate. Where they are found to not be such an institution under Article 2(3), the acts engaged in to preserve and make available digital cultural heritage have the potential to be viewed as acts of copyright infringement rather than cultural heritage promotion. Using the case study of videogames as a form of born-digital cultural heritage, this chapter has demonstrated that there are still pitfalls for the treatment of certain forms of content as cultural heritage, a problem that is magnified when considering interactive forms of engagement with that culture such as adaptation, translation and transformation. Even in the context of established cultural heritage institutions, these activities that form a type of living and constantly changing intangible cultural heritage are not yet considered as being an exception to the rightholder’s ability to enforce their intellectual property rights.

92 Case C-352/12 Nintendo Co. Ltd and Others v PC Box Srl and 9Net Srl EU:​C:​2014:​25 concerned videogame emulation, and Nintendo’s efforts to ensure that TPMs were not bypassed in order to emulate Nintendo games on systems not authorised by the company. 93 Zackerie Fairfax, ‘Nintendo Removes Hundreds Of Fan Games In Worst DMCA Takedown Yet’ (ScreenRant, 7 January 2021) accessed 31 May 2021.

27. Private international law and cultural property and art disputes Marc Weber

1. PROBLEMS Some States completely exclude cultural property from legal transactions by excluding even bona fide acquisition (France and Italy), while others make private trade in cultural property more difficult by imposing restrictions on ownership under public law. Even bona fide acquisition cannot overcome such dedication to the public domain; however, these cultural goods are only ‘partially’ res extra commercium. The property characteristic of extra commercium is judged according to the lex rei sitae. Thus, if, for example, an object that is inalienable under French law is stolen in France and brought to Switzerland, the Swiss private international law determines whether ownership can be acquired in this object. Since the courts treat foreign cultural property differently from their own and do not enforce export regulations on cultural property as foreign public law domestically, it is difficult for the State of origin to sue out its cultural property abroad. Although it is easier for the State of origin if it can claim ownership of the cultural property, even then it may lose its ownership by virtue of bona fide acquisition under the foreign lex rei sitae. In these cases, actions for return are only possible with the help of State treaties such as the Unesco Convention of 19701 or the Unidroit Convention of 1995.2 Since 1993, within the European Union, Norway, Iceland and Liechtenstein, EU law also provides a remedy, so that cultural property is treated as res extra commercium at least within the EU and the EEA.3 If the cultural property has not been stolen, but ‘only’ illegally removed, the return requires the help of bilateral agreements. The countries of origin are happy to avail themselves of international legal assistance in criminal matters. The fact that even this approach is not always successful is shown by the Swiss case of a painting allegedly and partly attributed to Leonardo Da Vinci, which was transported from Switzerland to Italy and then illegally re-exported to Switzerland.4

1 Multilateral convention on the Means of Prohibiting and Preventing the Illicit Import, Export and Transfer of Ownership of Cultural Property, Adopted by the General Conference of the United Nations Educational, Scientific and Cultural Organization at its Sixteenth Session, Paris, 14 November 1970, 823 U.N.T.S. 231, 10 I.L.M. 289 (1971). Currently, there are 141 Contracting States. 2 Convention [of June 24, 1995] on Stolen or Illegally Exported Cultural Objects, I.L.M. 34 (1995) 1330; 5 Int’l.J. Cultural Prop. 155–165 (1996). Currently, there are 52 Member States. 3 Council Directive 93/7/EEC of 15 March 1993 on the return of cultural objects unlawfully removed from the territory of a Member State OJ L 74, 27.3.1993, 74. The Directive of 1993 has been substantially amended and was recast in the Directive 2014/60/EU of the European Parliament and of the Council of 15 May 2014 on the return of cultural objects unlawfully removed from the territory of a Member State and amending Regulation [EU] No.1024/2012 [Recast], OJ L 159, 28.5.2014, 1. 4 Cf. Weber, Isabella d’Este, 89 et seq.

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518  Research handbook on intellectual property and cultural heritage When it comes to title, the question must be raised whether, for example, an Italian art object being part of the public domain (demanio pubblico) and therefore exempt from private business is also protected from alienation in normal trade relations abroad? The answer is no, according to the lex rei sitae, which is the basic rule recognized almost universally.5 According to the situs rule, the law of the State applies where the movable property is situated at the time of the potential transaction in rem. Since the application of the situs rule might be a place too fortuitous, doctrine came to the conclusion that the law of the country of origin (where the work of art was stolen) should be applied or at least the quality of a movable as being stolen should be subject to the law of the place of origin (lex originis).

2.

PRINCIPLES ON CONFLICT OF LAWS REGARDING MOVABLES

2.1

Stolen Works of Art

2.1.1 Bona fide purchase 2.1.1.1 National differences It is not irrelevant in which country stolen objects are sold because national laws on bona fide purchase differ considerably. There are three different systems of bona fide purchase. In Germany, for example, there is no bona fide purchase on stolen objects (§ 935 para. 1 BGB), unless the sale has been performed at public auctions (§ 935 para 2 BGB).6 In the US and in English law, there is no good faith purchase on stolen objects either. Italian law is extremely liberal when it comes to the bona fide purchase on stolen goods (article 1153 Italian Civil Code). This was important in the English case Winkworth v Christie, Manson & Woods Ltd.7 Works of art were stolen in England, taken to Italy and sold there. The buyer sent the works of art back to England to be sold on his behalf by the auctioneers Christie, Manson & Woods. One of the questions raised in the proceedings was whether in Italy a bona fide purchase had taken place, and if yes, it is also valid in England, whose laws do not know a good faith purchase of stolen goods.8 2.1.1.2 Compromise between owner and purchaser In Swiss and French law, the purchaser of goods sold at public auction or by merchants dealing in these kinds of goods is protected against claims based on ownership of stolen goods. The purchaser is not obliged to return the goods they bought under the two special circumstances mentioned above unless they are refunded for the price paid for the disputed goods (article 934 Swiss Civil Code). After a certain lapse of time (in Switzerland: five years, and 30 years for cultural property; in France: three years), the owner no longer has a right of recovery. The situs rule is applied in almost every country; see Venturini, 1 et seq. The Federal Supreme Court held that this exception is not only true for auction by publicly authorized auctioneers but also for private auctions open for the public; see Bundesgerichtshof 5 October 1989, Neue Juristische Wochenschrift, 1990, 899. 7 Winkworth v Christie, Manson & Woods Ltd., [1980] 1 All E.R. 1121 (Ch. D.) = [1980] 2 W.L.R. 937. 8 A valid purchase of stolen goods performed on the market (‘market overt’), sect. 22[1] Sale of Goods Act 1979, was abolished on 3 August 1995 (sect. 1, 3[2] Sale of Goods [Amendment] Act 1994). 5 6

Private international law and cultural property and art disputes  519 2.1.2 Jurisdiction Plaintiff wants to recover the stolen property as efficiently as possible. That is why plaintiff wants to secure their claim by protective measures and does not want to waste time by suing in another State and enforcing a foreign judgment in the State of the locus rei sitae.9 Usually suits against the person seized of the stolen work of art is granted because of the defendant’s domicile or residence in the forum State and not because of situs of the chattel. It is a jurisdiction in personam and not in rem. Between EU Member States, such a jurisdiction is governed by the Regulation (EU) No 1215/2012.10 Between Switzerland and any of the EU Member States and Norway and Iceland, jurisdiction is governed by the Lugano Convention.11 2.1.3 Applicable law 2.1.3.1 Standing to sue In many European systems the law of procedure refers to private law for the determination whether the plaintiff is recognized as a person or juristic entity with own rights and ability to sue or be sued.12 In the English case Bumper Development Corporation v Commissioner of Police of the Metropolis,13 the court had to decide whether a ruined Hindu temple in India, recognized under Indian law as a juristic entity, could sue in English courts to recover religious stolen artefacts stolen from its site. The Court of Appeal gave an affirmative answer applying the comity of nations and refusing to have the English lex fori as a fetter for good legal cause. 2.1.3.2 Basic rule: lex rei sitae The almost universally recognized rule of the lex rei sitae has been applied, among others, in Winkworth v Christie, Manson & Woods Ltd.,14 in the Italian Danusso case15 and in Koerfer v Goldschmidt.16 According to the rule of lex rei sitae, in questions relating to movable property,



Cf. Siehr, International Art Trade, 73, at No. 73. Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, OJ L 351, 20.12.2012, 1. Before this Regulation entered into force, jurisdiction was governed by the Brussels Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters 1968, OJ L 299 of 31.12.1972, 3, and the Council Regulation (EC) No. 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, OJ L 12, of 16.01.2001, 1, respectively. The Brussels Convention 1968 still is in force for Denmark. 11 [Lugano] Convention on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters, OJ L 339 of 21.12.2007, 3. It is in force between the Swiss Confederation, the Member States of the European Union, the Kingdom of Norway and the Republic of Iceland. Liechtenstein has not ratified either the Brussels Convention (supra, footnote 10) or the Lugano Convention. On 4 May 2021, the European Commission rejected the UK’s application to join the Lugano Convention. 12 Siehr, International Art Trade, 74 at No. 74. 13 Bumper Development Corporation v Commissioner of Police of the Metropolis, [1991] 1 WLR 1362 (CA); cf. also United States v One Tintoretto Painting, 527 F.Supp. 1071 (SDNY 1981), where an action seeking forfeiture of the ‘defendant’, a fraudulently imported painting, was brought by the United States of America; Siehr, International Art Trade, 74 at No. 74. 14 Supra, footnote 7. 15 Trib. di Torino 25.3.1982 (Repubblica dell’Ecuador, Casa della cultura ecuadoriana c. Danusso, Matta e altri), Riv.dir.int.priv.proc. 18 (1982) 625. 16 Bundesgericht 13.12.1968 (Koerfer v Goldschmidt), 94 II Entscheidungen des Schweizerischen Bundesgerichts, 291 at 303. 9

10

520  Research handbook on intellectual property and cultural heritage the law of that State applies where the movable property is situated at the time of the potential transaction in rem. It has been suggested that the locus rei sitae might be a place too fortuitous as to apply the lex rei sitae for transactions in rem.17 Therefore, the law of the country of origin (where the work of art was stolen) should be applied18 or at least the quality of a movable as being stolen should be subject to the law at the place of origin.19 The latter proposal can be seriously discussed because the fact of theft can be almost qualified as a local datum.20 Whether the lex originis, also suggested by the Institut de Droit international,21 is indeed the better law, must be doubted twofold: the locus originis (place where the object was stolen) can hardly be known to people trading the object bona fide. The other objection is that the lex originis is for those people even more fortuitous (they cannot even fix it very often) than the lex rei sitae, i.e., the law at the place where they are transferring the object.22 2.1.3.3 Vested rights In Winkworth v Christie, Manson & Woods Ltd.23 the main problem was not the rule of lex rei sitae. The barristers and the court mainly dealt with the question whether the title of the Italian bona fide purchaser acquired in Italy under the Italian lex rei sitae would be upheld in England, the State of the situs at the time of trial in England. The defendant argued that the art objects stolen in England and brought back to England should be returned to the original owner and the title of the Italian bona fide purchaser should not be recognized because of a bona fide purchase could not have taken place in England unless contracted in market overt. The defendant referred to the American scholar Joseph Beale, who had proposed a similar rule for the United States.24 The Chancery Division of the English High Court of Judicature did not accept this argument. Instead, it emphasized that the well-settled rule of vested rights should not be devalued by exceptions which cannot be defined and described properly. Therefore, the well-established rule should prevail: once a right has been acquired under the applicable lex rei sitae, this right should not be questioned once the object has changed its situs. In other jurisdictions the same rule of vested right prevails either because of statutory provisions or of judicial precedents.25 2.1.3.4 Right of refund As mentioned above, some jurisdictions try to strike a fair balance between a bona fide purchaser and the original owner by allowing the original owner to claim back his/her prop-

Siehr, International Art Trade, 75 at no. 75. Mansel, 270 et seq. 19 Cf. Hanisch, 215. 20 As to local data cf. Ehrenzweig, 83 et seq. 21 Resolution [of the Institut de Droit international] of 3 September 1991 on the International Sale of Works of Art from the Angle of the Protection of the Cultural Heritage, 64-II Annuaire de l’Institut de droit international 402 (1992); Rev. crit. 1992, 203; RabelsZ 56 (1992) 566. Art. 2 reads: “The transfer of ownership of works of art belonging to the cultural heritage of the country of origin shall be governed by the law of that country.” 22 Siehr, International Art Trade, 75 at No. 75. 23 Supra, footnote 7. 24 See Siehr, International Art Trade, 77, at No. 77 with reference in footnote 186. 25 Venturini, 23, at No. 27. 17 18

Private international law and cultural property and art disputes  521 erty and the bona fide purchaser to have their payment refunded (Lösungsrecht, droit de remboursement). If a bona fide purchaser bought the art object under a jurisdiction providing such a right of refund, it has to be decided whether such a right becomes vested and can be exercised in another jurisdiction. Such a situation arose in the case of stolen coins of the Schleswig-Holsteinisches Landesmuseum.26,27 Coins were stolen in Germany, sold and transferred in Switzerland by public auction to a German dealer in numismatics. Under the Swiss lex rei sitae, the dealer would have a right of refund if the original owner had brought an action in replevin in Swiss courts (article 934 para. 2 Swiss Civil Code). The German dealer sold the coins to the German Bundesbank and this institution finally discovered the provenance of the coins. Could the Bundesbank ask for a refund of the purchase price when returning the coins to the museum? The coin dealer could have done so because he had a vested right acquired in Switzerland under Swiss law and such a right survived the taking of the coins from Zurich to Frankfurt. What, however, about the second buyer of the coins, the Bundesbank? Under the new German lex rei sitae there is no right of refund for the bona fide purchaser. The only way to obtain such a right would be by transfer of the seller’s right to be refunded to his successor. The German Federal Supreme Court (Bundesgerichtshof) denied such a transfer.28 2.1.3.5 Res in transitu Art objects seem to be hardly res in transitu and, yet, they were once qualified as being such. In Autocephalous Greek Orthodox Church of Cyprus v Goldberg & Feldman Fine Arts Inc.29 the Cypriot mosaics were sold to Mrs Goldberg in Geneva, where the mosaics were stored in the duty-free area in the Geneva airport. In the American court an expert witness was asked whether Switzerland had any interest in having its law applied. The expert witness gave a negative answer because he thought the mosaics were goods in transit and the transfer of title, under Swiss private international law, had to be decided according to the law of destination of the goods, i.e., the law of Indiana.30 The correct answer should have been given according to Swiss substantive law.31 The mosaics had a Swiss locus rei sitae and transfer of title was governed by Swiss substantive law. As, however, the goods were not sold by a merchant at their business premises but rather clandestinely in the airport, there could not have been a bona fide purchase of stolen goods under article 934 of the Swiss Civil Code. There was a false conflict between Swiss and American law as both refused to acknowledge a bona fide purchase.

26 Bundesgerichtshof 8 April 1987, 100 Entscheidungen des Bundesgerichtshofs in Zivilsachen, 321, and Die deutsche Rechtsprechung auf dem Gebiete des internationalen Privatrechts im Jahre 1987, No. 40, annotated by H. Stoll, 357 et seq. 27 Siehr, International Art Trade, 78, at No. 79. 28 According to Siehr, International Art Trade, 78, at No. 79, it is doubtful that this decision is correct; after all, the original right to be refunded is transferable. If a title in stolen property acquired bona fide abroad, e.g., in Italy, can even be transferred to subsequent buyers who are aware of the dubious provenance of the goods, it seems to be inconsistent and hardly fair not to protect a subsequent bona fide purchaser of goods encumbered with a right of the buyer to get a refund; cf. Siehr, Das Lösungsrecht,100 et seq. 29 Autocephalous Greek-Orthodox Church of Cyprus and the Republic of Cyprus v Goldberg & Feldman Fine Arts, 717 F. Supp. 1374 [S. D. Ind. 1989] 1395, aff’d 917 F. 2d 278 [7th Cir. 1990]. As to this decision cf. Merryman, 89 et seq. 30 717 F. Supp. 1374 at 1394. 31 Siehr, International Art Trade, 79, at No. 80.

522  Research handbook on intellectual property and cultural heritage 2.1.3.6 Local and moral data In Kunstsammlungen zu Weimar v Elicofon,32 the American court had to make up its mind whether Mr Elicofon had purchased in the United States stolen goods or goods diverted by a person responsible as an agent, bailee or custodian of two Dürer paintings.33 Applying American law, which was the law governing the potential transfer of title to Mr Elicofon, the court felt obliged to investigate German law and to find out whether or not there has been a theft under German law. This American leading case has been held a precedent for the proposition that the classification as stolen property has to be determined by the law governing in the State of theft (lex loci furti).34 It did not establish a general theory that the classification of goods as stolen property should be determined by the law at the place of theft. The courts simply disposed of the defendant’s defence that the Dürer paintings were not stolen but converted by people in charge of taking care of these canvasses. The classification as stolen property is no local datum to be determined by the law governing the transfer of title provided this law furnishes special rules for the protection of owner deprived of the goods by theft. There have been discussions whether terms like ‘good faith’ or ‘bona fide’ should be qualified and interpreted as ‘moral data’ according to the lex fori and not according to the law governing the legal transaction, i.e., the bona fide purchase.35 2.1.3.7 Inalienable movables There are a few jurisdictions in which certain goods are res extra commercium, i.e., goods which cannot be transferred by transaction of private law. Two groups of goods must be distinguished: goods in State property and inalienable goods of public domain.36 Inalienable goods are generally held by the State. The protection of State property in international law creates no problems as long as the State claims the goods as its private property and sues for return.37 This has been demonstrated in the German–Greek coins case.38 A Greek citizen found a hoard of ancient Greek coins on his premises in Greece and took the coins to his place of domicile in Germany. Subsequently the Greek Government learned of the excavation and the treasure, applied for German international legal assistance in criminal matters against the Greek citizen because the coins are State property of Greece, according to the Greek statute on antiquities and art treasures, and the Greek citizen has misappropriated this State property. Without any problem the Greek Government succeeded in obtaining rec32 Kunstsammlungen zu Weimar v Elicofon, 536 F. Supp. 829 (E.D.N.Y. 1981), aff’ 678 F. 2d 1150 (2d Cir. 1982). 33 536 F. Supp. 829 (E.D.N.Y. 1981), at 840. 34 Hanisch, 215; cf. the critics by Siehr, International Art Trade, 80, at No. 84: Apart from the factual difficulty of tracing the past of a movable and ascertaining whether it had once been stolen somewhere, there are also legal problems when the law at the place of theft does not distinguish in sales between stolen and not stolen goods. In the reverse situation, the new lex rei sitae or law governing is not concerned whether the goods have been stolen or not and therefore has no reason to inquire into the past of the goods sold under the new law. 35 As to moral data in general, cf. Ehrenzweig, 77 et seq. 36 As to an overview in European national legislations, see Weber, Unveräußerliches Kulturgut, 1 et seq. 37 Siehr, International Art Trade, 82, at No.87. 38 Oberlandesgericht Schleswig, 10 February 1989, Neue Juristische Wochenschrift, 1989, 3105, and in Die deutsche Rechtsprechung auf dem Gebiete des Internationalen Privatrechts im Jahre 1989, No. 75.

Private international law and cultural property and art disputes  523 ognition as owner against a person illegally in possession of it and German legal assistance was granted. The situation was different in the Italian De Contessini case.39 The French State was the owner of smuggled cultural property but lost its ownership due to a sale in Italy, to which transaction the Italian lex rei sitae was applied. The Italian Danusso40 case was more complicated. In Ecuador, Giuseppe Danusso purchased archaeological objects of Ecuadorian origin from citizens of Ecuador and took the collection to Italy. According to the law of Ecuador, archaeological objects form part of the ‘patrimonio cultural de la nación’. This does not mean that these objects are public property. They may be private property charged with the limitations of ‘dominio fiscal o eminente’ (article 623 of the Code Civil of Ecuador).41 The Italian court ruled that Mr Danusso did not acquire legal title from his sellers in Ecuador and the foreign Ecuadorian State succeeded in having the objects returned. The result would have been obviously different if the purchase of the artefacts did not occur in Ecuador but in Italy. This happened in the old French case Duc de Frias v Baron Pichon.42 The art-loving Baron Pichon had purchased a silver vase from a Spanish seller in Paris in October 1883. He had previously bought it from an abbess. A little later, the vase turned out to be a ciborium belonging to the cathedral in Burgos (Castile). Juan Fernández de Velasco, Duke of Frias and Connétable of Castile, had donated this ciborium to the Monastery of Santa Clara, Medina del Polmar, in 1610. The ecclesiastical cultural property was inalienable according to the will of the donor. The court left open whether the object was dedicated to a cultic purpose or not. The cathedral and the Duc de Frias, a descendant of the founder, sued the buyer, Baron Pichon, in Paris for the return of the vase. The court rejected the claim, essentially on the grounds that French law alone was applicable to the purchase in Paris and referred to article 2279 Civil Code as a provision of ‘l’intérêt d’ordre social’ and declined to recognize the inalienability of a movable according to Spanish law when the movable is sold in France. A similar problem had to be solved in the Dutch criminal case Madonna of Batz-sur-Mer.43 The highest court in the Netherlands, the Hoge Raad, ruled that only Dutch law governs the question whether the antique dealer acquired the object in good faith. According to the Dutch lex rei sitae, he legally became the owner of the object, although it was considered res extra commercium based on French law and the lower court decision of the Rechtbank was overruled.44

39 Trib. di Roma 27.6.1987 (Stato francese c. Ministero per i beni culturali e ambientali e De Contessini), Riv.dir.int. 71 (1988) 920, Dir.com.int. 2 (1988) 611, note Frigo; Riv.dir.int.priv.proc. 25 (1989) 652: The French State was the owner of smuggled cultural property but lost its ownership due to a sale in Italy, to which transaction the Italian lex rei sitae was applied; see infra, 2.2.2. 40 Trib. di Torino 25.3.1982 (Repubblica dell’Ecuador, Casa della cultura ecuadoriana c. Danusso, Matta e altri), Riv.dir.int.priv.proc. 18 (1982) 625. 41 Although private parties may own pieces of ‘patrimonio cultural de la nación’, they cannot make a transfer without permission of the Instituto de cultura di Ecuador. This notion of ‘dominio eminente del Estado’ can be compared with the German term ‘öffentliche Sache, die öffentlichen Zwecken gewidmet ist’. 42 Trib. civ. de la Seine 17.4.1885 (Duc de Frias c. Baron Pichon), Clunet 13 (1886) 593; cf. De Visscher, 50; Hanisch, 211, footnote 62; O’Keefe, 89 et seq.; Prott/O’Keefe, 639, No. 1239; Siehr, International Art Trade, 83–84. 43 Hoge Raad (criminal chamber) 18 January 1983, De Raad v OvJ, Ned.Jur. 1983, 1404, N 445; Prott/O’Keefe, 634–635, No. 1231; Siehr, International Art Trade, 84 et seq. 44 See infra, C.4.

524  Research handbook on intellectual property and cultural heritage 2.1.3.8 Time limitations The statute of limitations has to be qualified as being a matter of substantive law or as a matter of procedure.45 In continental European law causes of action in rem (rei vindicatio; action de revendication; acción reivindicatoria; azione di rivendicazione; Vindikationsklage; revindicatie) are subject to the statute of limitations of the law governing the cause of action itself. Normally, these causes of action vanish when the limitation period of the statute of limitations has run out. For tort actions the statute of limitations is governed by the law applicable to the tort claim (lex delicti). Besides the general problem as to the governing law, two questions arise which, in their international context, may be difficult to be answered: the impossibility to bring suit in foreign countries and the taking together of time periods passed by under different laws governing the time limitation. Whether any limitation period is prevented from running during a certain time has been decided in many American cases which applied the request and refusal rule, as in Solomon R. Guggenheim Foundation v Lubell.46 If any claim accrues before that refusal, the courts may exempt certain periods of time from the normal limitation period if the plaintiff was not able to commence court action. This has been held in the Swiss case Koerfer v Goldschmidt. As Mr Goldschmidt could not pursue his claim for the return of paintings during the Nazi period, the Swiss Federal court postponed the moment at which the time period for adverse possession commenced to run. This ‘local datum’ is more or less an evaluation of a certain fact situation established abroad, but the evaluation, although fair, is not beyond reasonable doubt. This is due to the fact that in Swiss law and in other civil law countries, limitation periods start to run irrespectively whether the plaintiff or owner knew the whereabouts of the debtor’s or possessor’s sake. After the lapse of a certain time, their reliance should be protected rather than the inactivity of the creditor be sanctioned.47 The mobility of movable property creates problems already mentioned above (see 2.1.3.3) in connection with the principle of vested rights. Rights already vested under a former lex rei sitae or any other law otherwise designated by the conflicts rules of the forum will be upheld by the lex fori being the current governing law. What, however, if a limitation period provided by the present lex rei sitae or different lex causae has started when the movable was still abroad? According to case law, statutory law and legal writings, the time period passed abroad will be added to the subsequent time period passed under the present law. This rule is correctly stated by article 102 para. 1 of the Swiss Statute on Private International Law.48 If no right has already been acquired abroad by adverse possession, the time passed by abroad will be deemed as having passed by under the present law governing the acquisition by adverse possession following the change of situs from abroad to the Swiss forum state.49

Siehr, International Art Trade, 88, at No. 96. Solomon R. Guggenheim Foundation v Lubell, 567 NYS 2d 623 (CA 1991). 47 Siehr, International Art Trade, 89, at No. 98. 48 Article 102 para. 1 PILA reads: “When movable property arrives in Switzerland and the acquisition or loss of a right in rem has not yet taken place abroad, the events that have occurred abroad are deemed to have occurred in Switzerland.” 49 Siehr, International Art Trade, 89, at No. 97. 45 46

Private international law and cultural property and art disputes  525 2.1.3.9 Public policy of the forum state: Iran v Berend The case was ruled by the High Court of Justice (Queen’s Bench Division), London, on 1 February 2007.50 The Republic of Iran claims ownership of an archaeological cultural property51 which left Iran sometime after 1932 and was auctioned in New York in 1974. The chattel was transferred to the actual possessor in Paris in the same year, where it remained for the next 30 years before consigning to Christie’s for auction in London. The legal issue before Justice Eady was whether the title of ownership should be governed either by the law of the State of origin of the fragment (lex originis), i.e., Iranian law, or by French law, i.e., the law of the State where the chattel was located at the time of its transfer to Mme Denyse Berend, the defendant, a French citizen domiciled in France. In other words: would a French judge apply an exception, for policy reasons, to the general rule of French law that the question of title to movables is determined according to the situs (lex rei sitae or situs rule)? The claim was dismissed. The Islamic Republic of Iran seeks to recover the fragment as part of a national monument to which it claims entitlement in accordance with certain legal provisions dating from the first half of the twentieth century.52 The defendant resists the claim primarily on the basis that she had acquired title in the fragment after it was sold to her through an agent at a New York auction in October 1974. It is submitted that, in accordance with French domestic law, the defendant acquired title in good faith when it was delivered to her in Paris on 10 November 1974. Alternatively, it is submitted that she would have acquired title by prescription after 30 years’ possession in November 2004. After an export licence was obtained from the French Government, it was due to be sold by Christie’s in London on 20 April 200553 but, on the day before, an injunction was granted in favour of the Republic of Iran. As a matter of the English conflict of laws rules, in determining the question of title to the fragment as movable property situated in France, will the English court (as the defendant contends) apply only the relevant provisions of French domestic law, or (as the claimant contends) apply the relevant French conflict of laws rules as well as any relevant substantive provisions of French domestic law (thereby giving effect to a renvoi)? English courts have never applied renvoi when it comes to movables but has held for many years, in order partly to achieve consistency and certainty, that where movable property is concerned, title should be determined by the lex situs of the property at the time when the disputed title is said to have been acquired. The judge held that he sees no room either as a matter for policy for its introduction in the context of a tangible object such as that in contention in the case at hand. However, renvoi has not been applied in the fields of contractual relations or tort, but in the context of the law of succession.54

Iran v Berend, (2007) E.W.H.C. 132 (Q.B.); Weber, Iran v Berend, 103 et seq.; Harris, 5. The subject matter of the trial is a fragment of an Achaemenid limestone relief, believed to originate from the first half of the fifth century B.C. The Limestone is approximately 23.7cm high and 31.5cm wide, consisting of the head and shoulders of a Persian guardsman with a spear. It would appear to come from the northern façade of the eastern staircase of the Apadana (audience hall), which lay buried from the time the city was sacked by Alexander the Great in 331 B.C. until excavations in the early 1930s. It is thought by some scholars that these processional reliefs inspired those incorporated shortly afterwards in the Parthenon. 52 The judge’s opinions, however, do not mention the relevant Iranian laws at all. 53 Cf. Christie’s, Faces from the Ancient World – A European Private Collection, auction of April 20, 2005 [Sale No. 7135], London. 54 Cf. Weber, Iran v Berend, 104, with references in footnotes 5 and 6. 50 51

526  Research handbook on intellectual property and cultural heritage The second issue is whether the French court would determine the question of title to the fragment by reference to French domestic law alone as the lex rei sitae (the law of the place in which the fragment as a movable was situated at the relevant time) or by reference exclusively to the law of Iran, in that the question of title to the fragment is to be determined by reference to the law of its State of origin. The claimant’s suggestion is that a French court would give effects to the policy underlying the Unesco Convention 197055 and the Unidroit Convention 199556 to the effect that title to national treasures and works of art should be determined in accordance with the law of the place of origin. According to the claimant, it is said, if a French judge were called upon to determine the matter, they would indeed introduce such an exception for reasons of policy which are to be found embodied in the relevant international instruments57 and French statute: in France, neither the Unesco nor the Unidroit Convention is part of the law. For the sake of completeness, it must be mentioned that both Conventions are not respective, and, therefore, even if implemented, would not adversely affect the defendant’s title in this case. In addition, the claimant contends the application of Article 2 of the Resolution IV of the Institut de Droit international in Basel in 1991,58 to the effect that the transfer of ownership of works of art belonging to the cultural heritage of the country of origin shall be governed by the law of that country. This rule, however, has never been applied by any court so far, but is endorsed by some part of the doctrine.59 Finally, the claimant mentions articles L112-11 et seq. of the Code du Patrimoine of 3 April 1995 which implements the Directive 93/7/EEC.60 Those provisions provide for the return of cultural property from France to other members of the European Union where such property has been illicitly removed from the territory of another member of the European Union or vice versa. The court gives only one authority with regard to a possible application of a renvoi to movable property, namely the English case Winkworth v Christie, Manson & Woods Ltd,61 where the judge observes that it is ‘theoretically possible’, depending on the evidence, that the plaintiff could argue that renvoi should be applied. Although Judge Eady has sympathy for the lex originis, he declines the application of the renvoi doctrine in the case at hand and 55 Supra, footnote 1. France ratified the UNESCO Convention 1970 in 1997, i.e., implemented the regulations into national law. Iran accepted the Convention already in 1975 but has not ratified it yet. 56 Supra, footnote 2. Since 24 June 1995, the Unidroit Convention 1995 has been in force in France, and since 1 December 2005 also in Iran. 57 Article 3 Unesco Convention 1970 reads: “The import, export or transfer of ownership of cultural property effected contrary to the provisions adopted under this convention by the States Parties thereto, shall be illicit.” Article 5(i) Unidroit Convention 1995 provides: “A Contracting State may request the court or other competent authority of another Contracting State to order the return of a cultural object illegally exported from the territory of the requesting state.” 58 See supra, footnote 21. 59 E.g., see de Arruda Ferrer Correia, 174; Jayme, 347–348; Symeonides, 751–752. However, in 2004, Belgium amended its Code of Private International Law and abolished the situs rule for cultural property and for stolen property in general; cf. Loi du 16 juillet portent le Code de droit international privé, Moniteur belge 27.7.2004, at 57344. Article 92 reads: “1 La revendication d’un bien volé est régie, au choix du propriétaire originaire, soit par le droit de l’Etat sur le territoire duquel le bien était situé au moment de sa disparition, soit par celui de l’Etat sur le territoire duquel le bien est situé au moment de sa revendication. 2 Toutefois, si le droit de l’Etat sur le territoire duquel le bien était situé au moment de sa disparition ignore toute protection du possesseur de bonne foi, celui-ci peut invoquer la protection que lui assure le droit de l’Etat sur le territoire duquel le bien est situé au moment de sa revendication.” 60 See, supra, footnote 3. 61 See, supra, footnote 7.

Private international law and cultural property and art disputes  527 holds that public policy does not require English law to introduce the notion of renvoi into the determination of title to movables.62 In France, the general rule is that title in respect of movable property should be determined by the lex situs where the object was situated at the material time.63 According to article 2279 of the Civil Code,64 for an acquisition of title by possession, it is necessary for the possessor to be in good faith. In addition, for a 30-year prescription period, the defendant must show that its possession has been public and not clandestine (article 226265 of the Civil Code). The judge held that it is conceded that the defendant acted in good faith, and therefore, she need not show any title by prescription (30 years). She acquired title by possession at the moment of transfer in November 1974. Moreover, the Unidroit Convention contains (in article 3) a limitation provision, including a ‘backstop’ of 50 years from the date on which the object in question was ex hypothesis wrongly expropriated. That would place formidable hurdles in front of the claimant if operative in this case, which it would be most unlikely to overcome. In addition, the Basel proposals of the Institut de Droit international (1991)66 also contemplate (at article 4) that any claim by the country of origin would have to be made ‘within a reasonable time’. However, in particular, it is clear from the French cases cited to the judge that the basic lex situs rule has been applied hitherto in relation to works of art or antiquities without any such exception being proposed. It was argued that it would be all the more inappropriate for an English judge (or indeed any other foreign judge) to appear to be taking such a bold and innovative approach without any French judicial precedent or legislative warrant.67 An English judge should not necessarily feel inhibited by the fact that no French judge happens to have reached such a conclusion in the past. The particular question, or the particular factual circumstances, may simply not have arisen hitherto. On the other hand, an English judge must tread with care when it appears that a particular result would not only be unprecedented but also involve the application of new principles, or a judicial development of French law, by the hypothetical French judge.68 Finally, the judge held:

62 [2007] EWHC 132 (Q.B.), at No. 30: “I can think of a number of reasons why it might be desirable to apply generally, in dealing with national treasures or monuments, the law of the state of origin but that is a matter for governments to determine and implement if they see fit.” 63 Audit/d’Avout, 206–214. 64 Article 2279 of the Civil Code reads in English: “In matters of movables, possession is equivalent to a title. Nevertheless, the person who has lost or from whom a thing has been stolen may claim it during three years, from the day of the loss or of the theft, against the one in whose hands he finds it, subject to the remedy of the latter against the one from whom he holds it.” Cf. [2007] EWHC 132 (Q.B.), at No. 32. 65 Article 2262 of the Civil Code reads in English: “All claims, in rem as well as in personam, are prescribed by thirty years, without the person who alleges that prescription being obliged to adduce a title, or a plea resulting from bad faith being allowed to be set up against him.” Cf. [2007] EWHC 132 (Q.B.), at No. 32. 66 Supra, footnote 21. 67 [2007] EWHC 132 (Q.B.), at No. 45. In addition, it must be noted that any decision of this court as to the substance of French law is only a finding of fact within this jurisdiction; cf. [2007] EWHC 132 (Q.B.), at No. 47. 68 [2007] EWHC 132 (Q.B.), at No. 48.

528  Research handbook on intellectual property and cultural heritage I should not anticipate any such changes, since not only would that be presumptuous, but I should be exceeding my function – which is to determine, on the evidence, the relevant law of France as its stands. Whether it is appropriate to introduce into French law an exception to its choice of law rules, in the context of cultural objects, is a matter of policy for French judges to decide.69

And continued: Since foreign law is approached in England as a matter of factual evidence, it would seem to accord with principle that I should ask myself whether I am satisfied, on a balance of probabilities, that a French court confronted with these facts and these submissions would be more likely than not to apply Iranian law in determining title. For the reasons identified […] I am not so persuaded. I consider it highly unlikely. I hasten to add, it is not simply a question of impression. The evidence called for the Defendant was to the effect that no French judge, as the law now stands, would conceivably apply Iranian law.70

In the light of the evidence before the judge, he is far from satisfied that a French judge would apply Iranian law. Therefore, he resolved the second issue in favour of the defendant also. The judge comes to the conclusion that a French court might (i) classify this claim, if brought in France, as based on ‘public law’, (ii) decline to recognize any relevant exception, and (iii) not accept jurisdiction to deal with it. His judgment proceeds, however, on a series of hypotheses – one of which is obviously that the French court has accepted jurisdiction. In the judge’s point of view, there was accordingly no need to pursue this interesting and theoretical debate to any kind of conclusion.71 English courts still do not apply the renvoi theory for movable property. The same is true for cultural property. But the courts apply the situs rule, i.e., the law of the place where the object was situated at the time of the event(s) said to confer title. In the case at hand, it is French law which governs title to the fragment because the defendant acquired title in France. According to French (domestic) law, the defendant acquired good title of the cultural object, and therefore it must not be returned to Iran. In other words: the judge was to apply the French law in his view and not what it might or should be. Furthermore, first, one wonders why Iran did not pursue its claim already in 1974 when the object was first sold. Probably, the Republic of Iran did not know until 2005 the whereabouts of the fragment. And second, if the auction had taken place in New York instead of London, you may raise the question whether a more generous statute of limitations provision72 would have made the judge to decide in favour of the claimant.

[2007] EWHC 132 (Q.B.), at No. 49. [2007] EWHC 132 (Q.B.), at No. 50. 71 [2007] EWHC 132 (Q.B.), at No. 55. 72 According to New York law, the statute of limitations is governed by the demand and refusal rule. Cf., among others, Menzel v List, 253 N.Y.S. 2d 43 (App. Div. 1964), 267 N.Y.S. 2d 804 (Sup. Ct. 1966): Chagall painting which was stolen in 1945. The plaintiff’s cause of action was not time-barred since it arose upon the defendant’s refusal to return the painting in 1962 on demand; Kunstsammlungen zu Weimar v Elicofon, 536 F. Supp. 829 (E.D.N.Y. 1981), aff’ 678 F. 2d 1150 (2d Cir. 1982): Two Dürer portraits were stolen in 1945 from a castle in what later became East Germany and discovered in New York. Again, the court held that the demand requirement is substantive, and the limitation period will run only after a demand and refusal. This law was affirmed in Solomon R. Guggenheim Foundation v Lubell, 567 N.Y.S. 2d 623 (Ct. App. 1991): Theft of a Chagall gouache from the Guggenheim Museum in the 1960s. Only in 1986, the museum sought the return from a good faith purchaser who had bought it 69 70

Private international law and cultural property and art disputes  529 2.2

Illegally Exported Works of Art

2.2.1 Jurisdiction When it comes to stolen pieces of art, jurisdiction hardly ever creates problems if a lawsuit is brought against the current owner in the country where they are domiciled, resident or has their place of business. In European countries, either the EU Regulation 1215/201273 or the Lugano Convention74 is applicable. If the art objects are not located in the State of the defendant’s domicile or residence, the plaintiff may also try to commence in rem proceedings in the courts at the situs of the objects or may ask for an attachment to prohibit the removal or sale of the art object.75 Such an attachment may be granted but this does not automatically create a forum for the suit in personam. Under the Lugano Convention and the EU Regulation 1215/2012, an action to validate the attachment must be brought in the fora of personal jurisdiction. Under national law the situation may be different. The forum sequestris may also serve as forum for a claim in personam to validate the attachment if no other local forum is provided.76 2.2.2 Applicable law 2.2.2.1 Basic rule: No direct enforcement of foreign public law Domestic courts may apply foreign public law but not enforce foreign public law. Such a direct enforcement of Italian export control provisions has been applied for in the English case King of Italy v Marquis Cosimo de Medici.77 The defendant, Cosimo de Medici Tornaquinci, had illegally brought documents known as the Medici Archives from Italy to London for auction at Christie, Manson and Woods Ltd in May 1919. Some of the historical documents were the property of the Italian State, others belonged to the Marchese de Medici. The State and private documents were of historical interest and inalienable within the meaning of the Italian law of 1909.78 The Italian Government and the Italian king as joint plaintiffs demanded before the English court (Chancery Division) that the documents be withdrawn from the auction offer (ask for an injunction to refrain from disposing of the illicitly exported papers) and that they be returned. The requested injunction concerning the State-owned documents was granted by order of 31 July 1918 because the Italian Government could prove its ownership. The action for the return of the private documents, on the other hand, was unsuccessful. In Attorney General of New Zealand v Ortiz and others,79 George Ortiz was able to put up for auction in London the Maori carvings smuggled out of New Zealand by others that the

in 1967. Also here, the original owner was more protected than the good faith purchaser. To the issue of statute of limitations see Siehr, International Art Trade, 70–72; Redmond-Cooper, 154–157. 73 Supra, Footnote 10. 74 Supra, Footnote 11. 75 Siehr, International Art Trade, 183, at No. 233. 76 Cf., e.g., article 4 Swiss Private International Law Act. 77 The King of Italy and Italian Government v Marquis Cosimo de Medici Tornaquinci and Christie, Manson and Woods [1917/18] 34 T.L.R. 623 (Ch.D.); Riv.dir.int. 14 (1921/22) 194; cf., among others, Merryman/Elsen/Urice, 153–155; Prott/O’Keefe, 628, No. 1224; Siehr, International Art Trade, 184, No. 235; Weber, Unveräußerliches Kulturgut, 381 et seq. 78 Legge Unveräußerliches Kulturgut, del 20 giugno 1909, n. 364, Norme per l’inalienabilità delle antichità e delle belli arti, G.U. 27.6.1909, n. 150. 79 Attorney General of New Zealand v Ortiz and others, 2 WLR (Q.B.) 10; [1984] 1 AC 1 (CA, HL).

530  Research handbook on intellectual property and cultural heritage Attorney General of New Zealand demanded out as contraband. The Kingdom of Spain failed to sue for the return of a painting by Francisco de Goya (1746–1828) smuggled out of Spain in England.80 2.2.2.2 Exception: illegality of contract of sale For example, a French export prohibition does not invalidate a contract governed by Italian law and the sale of stolen goods is not per se void ab initio as can be seen from the Italian rule of bona fide purchase (article 1153 et seq. Codice civile). This was known by the plaintiff in the Italian case Stato francese c. Ministero dei beni culturali e De Contessini.81 The subject of this case were two tapestries from the seventeenth century from the manufacture of Amiens (France) with motifs from the Odyssey.82 The carpets, which belonged to the French State, were classified as historical monuments by decree of 10 March 1909 on the basis of the French law of 30 March 1887 and entered in the register of national cultural property. According to French law, the objects were part of the domaine public, i.e., inalienable. In June 1975, they were stolen from the Palace of Justice in Riom. Two years later, the police seized them from the Milan antiques dealer Livio De Contessini, whereupon criminal proceedings were instituted against him, as Italian criminal law prohibits the acquisition of objects of dubious origin. The tapestries were confiscated. The French State, represented by its Ministry of Culture, then sued De Contessini and the Italian Ministry of Culture before the Civil Court in Rome for restitution. The decisive factors in the dispute were the extent to which the inalienability of the objects based on the French law of 1913 was respected by the Italian court before which the case was brought, the law under which the acquisition took place, and whether De Contessini had acquired ownership in good faith. The plaintiff’s side argued that the carpets were inalienable State property under French law, i.e., res extra commercium (‘non avrebbero potuto essere commercializzati né in Francia né in Italia’). In addition, neither the defendants De Contessini nor the intervenor Pilone, a second purchaser of one of the two carpets, had proved their good faith in the acquisition. On the other hand, the defendant De Contessini objected that he had acquired ownership of the carpets in good faith under article 1153 Italian Civil Code. According to Italian private international law, possession, ownership and other rights in movable and immovable property are governed by the law of the place where they are located, i.e., by the lex rei sitae. In doing so, the court relied on two different starting points, namely the location at the time the action was brought and the place where the last acquisition of ownership had taken place. However, both points of departure resulted in the application of Italian

80 Kingdom of Spain v Christie, Manson & Woods Ltd., [1986] 1 WLR 1120 (Ch.D.); cf. also Trib. civ. de la Seine 17.4.1885 (Duc de Frias c. Baron Pichon), Clunet 13 (1886) 593. 81 Supra, footnote 39; Siehr, International Art Trade, 189 et seq.; Corte di appello di Roma 6.7.1992, unpublished; cf. Nanetti/Squillante, 399–402; Corte di cassazione 24.11.1995, n. 12166 (Governo di Francia c. De Contessini e altri), Foro it. 1996, I, 1, 907, Riv.dir.int. 80 (1997) 515; Riv.dir.int.priv.proc. 33 (1997) 427. 82 Trib. di Roma 27.6.198 (Stato francese c. Ministero per i beni culturali e ambientali e De Contessini), Riv.dir.int. 71 (1988) 920, Dir.com.int. 2 (1988) 611, note Frigo; Riv.dir.int.priv.proc. 25 (1989) 652; Siehr, International Art Trade, 189 et seq.; Corte di appello di Roma 6.7.1992, unpublished; cf. Nanetti/Squillante, 399–402; Corte di cassazione 24.11.1995, n. 12166 (Governo di Francia c. De Contessini e altri), Foro it. 1996, I, 1, 907, Riv.dir.int. 80 (1997) 515–519; Riv.dir.int.priv.proc. 33 (1997) 427.

Private international law and cultural property and art disputes  531 law. It refused to apply the lex loci, i.e., the law of the place where the thing had originally been located. The court therefore examined the acquisition of ownership of the carpets under Italian law. De Contessini and Pilone claimed to have acquired the objects in Italy, so that the French rules on inalienability could not be taken into account. Based on art. 826 Italian Code Civil, the court concluded that it was not applicable to foreign cultural property in Italy. The court then examined the applicability of art. 7(b)(ii) Unesco Convention 1970 but rejected it on the grounds that this norm only constituted an obligation towards other States; however, it did not lead to an Italian provision stating that the owner must return the object inalienable under foreign law in exchange for compensation. The court then examined the good faith of the purchasers. De Contessini had received the carpets from two different sellers in Italy but had failed to inform himself about the origin of the items. However, the court did not consider this to be gross negligence. Thus, due to the inapplicability of French law, there was a bona fide acquisition by the defendants under Italian law (cf. art. 1153 French Code Civil). France’s action for restitution was therefore dismissed. The French State appealed unsuccessfully against the first instance judgment. The Court of Appeal confirmed the judgment in its entirety but justified its decision on other grounds. It held that the French State’s claim for restitution of the stolen objects could not be upheld because the plaintiff was not prepared to pay compensation to the bona fide purchaser, which was required by the 1970 Unesco Convention. The Corte di appello di Roma also disagreed with the first instance on another point. It held that art. 826 and 828 Italian Civil Code were also applicable to foreign cultural property. The Court of Cassation subsequently dismissed an appeal for annulment. The controversy over the two tapestries finally came to an end out of court: the French State purchased the tapestries in 1994 and 1996 and returned them to France. The judgment of the Tribunale di Roma of 18 March 1987 is unsatisfactory. It does not make sense why Italy, which itself recognizes the inalienability of public property (demanio pubblico), does not recognize a chattel that is also res extra commercium under foreign law, and thus the foreign State’s action for restitution of the thing cannot have any chance of success. The only and ultimately decisive difference to the Danusso case was that in this case, at the time of the acquisition of ownership, the objects were located in Italy, and not abroad. Thus, if an inalienable cultural object of State A is transferred to State B, the res extra commercium becomes a tradable and thus alienable object when it crosses the border of State A. The inalienability of the object is therefore only a matter of the law. Accordingly, the non-tradability is only limited to the territory of State A and ceases to apply if the cultural property is located in another State. One way of restricting acquisition in good faith under Italian law to negotiable objects would be to interpret the conflict rule in article 22 of the preliminary dispositions of the Italian Civil Code. If this provision were interpreted to the effect that this conflict rule would not be applicable to non-negotiable objects (cose fuori commercio), i.e., goods that are res extra commercium under foreign law, and if the Italian courts were denied the application of the principle of lex rei sitae, the cultural objects that are particularly protected in the State of origin could not be the subject of a bona fide acquisition in Italy either. If Italian public cultural objects had been stolen in Italy, had entered France illegally and had been acquired there in good faith under article 2279 French Civil Code, the question arises whether French courts would recognize the inalienability of the objects. France does not have a written conflict rule such as the aforementioned article 22 disp. prel. Codice civile. However,

532  Research handbook on intellectual property and cultural heritage the international private law principle of lex rei sitae is recognized on the basis of article 3 French Civil Code. According to the lex rei sitae, the acquisition in good faith in France by the non-entitled person would have to be assessed according to French private international law. According to article 3 French Civil Code, French substantive law would be applicable, i.e., article 2279 French Civil Code, which in turn allows the acquisition of property in good faith from the non-entitled person. French law is based solely on possession on the part of the purchaser and allows ownership to pass to the purchaser already with the bona fide acquisition of possession (article 2279 para. 1 French Civil Code: “en fait des meubles, la possession vaut titre”). According to article 2279 para. 1 French Civil Code, acquisition in good faith from a non-entitled person is possible under the following conditions: the acquirer must have acquired actual possession of the property (possession réele); this must be supported by an animus domini, and it must be possession exempte de vices. The requirement of good faith on the part of the acquirer is not expressly mentioned in article 2279 French Civil Code, but follows from article 1141 French Civil Code, and is also required by case law. Good faith must exist only at the moment of taking possession. However, the acquirer does not become the owner until the expiry of the three-year limitation period (article 2279 para. 2 French Civil Code). If the thing has been transferred on the market, at public auction or by a merchant dealing in goods of the same kind, the stolen or lost thing can only be claimed from the present owner against reimbursement of the purchase price paid by them (article 2280 para. 1 French Civil Code). The situation in the Italian Danusso case was different (infra 2.2.2.3). Mr Danusso had acquired the pre-Columbian artefacts in Ecuador under the law of that State, and according to the law of Ecuador the pre-Columbian artefacts, being national cultural property, could not be unrestrictedly disposed of. The Republic of Ecuador cannot be deprived of its title in rem and is always entitled to reclaim the objects as national property. 2.2.2.3 Repubblica dell’Ecuador c. Danusso Between 1972 and 1975, the Italian collector Giuseppe Danusso bought archaeological artefacts in Ecuador from locals as well as from Ecuadorian traders, gallery owners and local government representatives. Under Ecuadorian law, however, the artefacts were inalienable.83 He also illegally exported these findings to Italy in order to resell some of them there. The Ecuadorian consul in Milan learned about Danusso’s collection through various newspaper articles. After the objects were initially confiscated as a result of criminal proceedings against Danusso and other persons, the Republic of Ecuador sued in Turin for the return of the archaeological finds. Ecuador based its action on a legal title arising from various Ecuadorian cultural property protection norms, while Danusso invoked the bona fide acquisition of the objects. The court first examined the relevant Ecuadorian provisions on the protection of cultural property, which are found in both the 1945 and 1967 Constitutions and in the Cultural Heritage Act of 22 February 1945, which was in force at the time, as well as in the Civil Code. These regulations required interpretation because State ownership could not be determined beyond doubt from them. The result of this interpretation was that private property rights to cultural property may exist, but that these are subject to a kind of ‘super-ownership’ (dominio emi-

83 Supra, footnote 40; confirmed by Corte di appello di Torino 18.1.1983, unpublished; cf. Carducci, 297 et seq.; Prott/O’Keefe, 628–631, No. 1225–1227; Siehr, International Art Trade, 82 et seq., No. 88.

Private international law and cultural property and art disputes  533 nente) by the State, so that owners may only dispose of cultural property in a restricted manner. This does not mean, however, that private property cannot be acquired in such objects. At the time of Danusso’s acquisition, the objects were located in Ecuador, so Ecuadorian law applied according to the lex rei sitae. According to this, the objects were inalienable property of the State of Ecuador, so that a bona fide acquisition by Danusso could not be considered. This solution was in accordance with both Italian and international public policy. On the other hand, in the court’s view, restitution based on article 7(b)(ii) of the 1970 Unesco Convention could not be considered. Nevertheless, Ecuador’s action for restitution was successful in its entirety. The fact that Danusso had acquired the cultural objects in Ecuador, i.e., under Ecuadorian law, was correctly pointed out in the literature. If the archaeological finds had been resold in Italy, Italian law would have applied according to the Italian lex rei sitae (then article 22 disp. prel. Codice civile), and the purchaser would have become the owner (cf. article 1153 Italian Code Civil). However, Danusso had not been able to acquire ownership under the foreign lex rei sitae. The Italian judges affirmed the claim for restitution exclusively on the basis of the dominio eminente, and not on the basis of the private law ownership of the Ecuadorian State. The important difference between the case Stato francese c. Ministero dei beni culturali and the Danusso case can be put as follows.84 In the Danusso case the transaction by which the defendant acquired the art objects was governed by the law which at the time of this transaction imposed special provisions protecting the art objects as national property. In the case of Stato francese c. Ministero dei beni culturali, both questions were governed by different laws, and for the first one (Italian law as lex contractus for the sale), it was of no concern that the other law (French law), once applicable in France as the lex rei sitae and later substituted by the Italian lex rei sitae, objected to unrestricted commerce in art objects of the kind in question. As soon as the subsequently applicable law pays no attention (especially as to prohibitions on the import of illegally exported goods) to the law of such a third State (different from the lex fori and from the law governing the business transaction in substance as lex causae), the same phenomenon will be met. Namely, although both States agree that cultural property should be protected, they lend to protect only their own national cultural property and normally refrain from safeguarding foreign national property. This unilateral restriction of protection creates conflicts as soon as art objects leave their home State. Then the protective policy of the home State clashes with the liberal attitude of the present situs State which is relatively unconcerned about foreign mandatory provisions for the protection of foreign cultural property.85 2.2.2.4 Exception: immorality of contract of sale Foreign mandatory export bans and the disrespect by the parties involved may lead to immoral conduct and cause the invalidity of transactions based on such conduct.86 Such an attitude was supported by the German Nigeria case.87 This case, however, did not concern a contract of sale but an insurance contract. A company in Nigeria concluded a maritime transport insurance contract with a German insurance company for a maritime transport of African art objects in accordance with the German General Insurance Conditions. During the transport, 86 87 84 85

See Siehr, International Art Trade, 189, at. No. 240. Siehr, International Art Trade, 190, at. No. 240. See Siehr, International Art Trade, 190, at. No. 241. Bundesgerichtshof 22 June 1972, 59 Entscheidungen des Bundesgerichtshofs in Zivilsachen, 82.

534  Research handbook on intellectual property and cultural heritage six bronze figures were lost. The insured objects were subject to an export ban under Nigerian law. In the specific case, the Bundesgerichtshof held that the insurance contract covering illegally exported cultural objects was immoral (sittenwidrig) under § 138 para. 1 Bürgerliches Gesetzbuch and therefore void ab initio. Following, no indemnification had to be paid to the policy holder. 2.2.2.5 Exception: giving effect to the law of a third State It is well recognized that the designation of a law as the governing law also includes certain rules of public law. This is clearly stated in article 13, sentence 2, of the Swiss Act on Private International Law.88 Even more comprehensive is article 19 of the Swiss Act on Private International Law, which applies not only to contracts but to all international cases: 1 If interests that are legitimate and clearly preponderant according to the Swiss conception of law so require, a mandatory provision of a law other than the one referred to by this Act may be taken into consideration, provided the situation dealt with has a close connection with that other law. 2 In deciding whether such a provision is to be taken into consideration, consideration shall be given to its purpose and the consequences of its application, in order to reach a decision that is appropriate having regard to the Swiss conception of law.

These provisions on ‘may be taken into consideration’ of foreign law have not been applied so far in the international art trade. 2.2.3 International instruments for giving effect to foreign export regulations 2.2.3.1 Unesco Convention 1970 The Unesco Convention of 197089 is the first treaty which encourages its Member States to prevent transfers that could encourage the unlawful import and export of cultural property. Based on the Convention, Switzerland concluded bilateral agreements with other Member States of the Unesco Convention (Italy, Greece, Colombia, Egypt, Cyprus, China, Peru and Mexico). Such bilateral agreements do not apply retroactively. For example, Switzerland must return illegally exported cultural property to Italy, if plaintiff (Italy) may prove that (1) the cultural property belongs to one of the categories listed in the annex;90 and (2) that it has been unlawfully introduced into Switzerland after the entry into force of this Agreement.

88 Article 13, sentence 2 PILA reads: “The application of a foreign law is not precluded by the mere fact that a provision is considered to have public law character.” 89 Supra, footnote 1. 90 This was the problem in the Swiss Leonardo case. An oil painting allegedly painted in part by Leonardo da Vinci had been located for more than 100 years in Switzerland before it was brought to Italy for an expertise in 2010. After a couple of hours, the canvas was brought back to Switzerland. The bringing back from Italy to Switzerland was illegal based on Italian law. The bilateral agreement between Italy and Switzerland of 2008 would have been applicable but oil paintings were not mentioned in the annex of the treaty. Italy’s request for the return based on international legal assistance in criminal matters was not successful either because of lack of dual criminality. The export out of Italy was a criminal action in Italian law but in Swiss law both the export and the import were valid; cf. Weber, Isabella d’Este, 89 et seq.

Private international law and cultural property and art disputes  535 2.2.3.2 Unidroit Convention 1995 The Unidroit Convention of 199591 is another instrument which helps Member States give effect of their export regulations abroad. The following conditions must be met for the home State to bring a successful claim for the return of its cultural property: the export must be unlawful (article 5). Return is ordered if the requesting State proves that either the removal from its territory would endanger the material preservation of the object or its surroundings, the integrity of a complex object, or the preservation of information, e.g., of a scientific or historical nature, or the traditional or ritual use of the object by an indigenous or tribal community is ‘substantially affected’, or the object is of ‘significant cultural importance’ (importance culturelle significative) to the requesting State. In my opinion, the significant cultural importance for Spain, for example, is not given for every work of the Spanish ‘national painter’ Francisco de Goya (1746–1828). Probably not every painting by John Constable (1776–1837) will meet this requirement for British cultural heritage either. These rules apply only to cultural property that has been unlawfully exported after this Convention has entered into force with respect to both the requesting State and the State in which the claim was made. The request for repatriation of the cultural object is barred by the expiration of a period of three years from the time when the location of the object and the identity of the owner were known to the requesting State. The absolute limitation period is 50 years and begins at the time of export or at the time when the object should have been returned (article 5 para. 5). In the case of unlawfully removed cultural property, the owner is entitled to appropriate compensation from the requesting State, subject to the proviso that they were not aware, or should not reasonably have been aware, at the time of acquisition that the property had been unlawfully exported (article 6 para. 1). If the requesting State agrees, the owner may retain ownership of the cultural object (article 6(3)(a)) and place the cultural object on permanent loan to a museum, or they may transfer ownership of the cultural object to a person of their choice residing in the requesting State in return for payment or free of charge (article 6(3)(b)). 2.2.3.3 EU law Directive 2014/60/EU92 regulates the return of cultural objects illegally removed from the territory of an EEC Member State, whereby not only the requesting State but also the requested State in whose territory the cultural object is located must be a Member State. Moreover, whether the national treasure was stolen is irrelevant to the obligation to return it. Only the Member States are entitled to return the object, not private individuals. The national laws implementing the Directive are only applicable if the cultural object fulfils the following three conditions: first, an object must be a cultural good within the meaning of article 30 of the Treaty on European Union; second, it must belong to the objects that have the quality of national treasures under the law of the Member State in which it was located before the transfer (article 1 No. 1, 2nd option); third, it must fall under one of the categories of works of art listed in the Annex to the Directive or belong to public collections listed in the inventories of museums, archives or libraries worthy of preservation (article 1 No. 1, 3rd option) or be listed in the inventories of ecclesiastical institutions (article 1 No. 1, 4th option).

Supra, footnote 2. Supra, footnote 3.

91 92

536  Research handbook on intellectual property and cultural heritage The Directive explicitly refers only to cultural objects illegally exported from the territory of a Member State after 1 January 1993 (article 13). In the case of unlawfully removed cultural property, the owner is entitled to appropriate compensation from the requesting State, subject to the proviso that they were not aware, or should not reasonably have been aware, at the time of acquisition that the property had been unlawfully exported (article 6 para. 1). If the requesting State agrees, the owner may retain ownership of the cultural object (article 6(3)(a)) and place the cultural object on permanent loan to a museum, or they may transfer ownership of the cultural object to a person of their choice residing in the requesting State in return for payment or free of charge (article 6(3)(b)).

3.

ALTERNATIVES TO THE SITUS RULE

The proposal to take the locus originis as a starting point deviates from the principle of lex rei sitae in international private law and places the applicable law with regard to the acquisition of illegally exported or stolen cultural property under the legal system of the country of origin. The lex rei sitae applies in almost all legal systems of the world. This leads to the fact that the rights, once acquired, according to the authoritative and often coincidental localization statute, are preserved. A departure from the lex rei sitae and application of the lex originis is proposed by the Institut de Droit international. 3.1

Institut de Droit international

The 12th Commission of the Institut de Droit international, at its 65th session in Basel on 3 September 1991, on the subject of ‘La vente internationale d’objets d’art, sous l’angle de la protection du patrimoine culturel’, proposed a special conflict-of-laws rule for determining the applicable law in the international sale of works of art from the point of view of the protection of cultural heritage (‘Basel Resolution 1991’).93 According to this resolution, the sale (article 2) and export (article 3) of national cultural property that can be identified by classification, registration or any other means of internationally admissible publicity (article 1 para. 1 lit. a) should be governed by the law of the State with which the object is culturally most closely connected, i.e., according to the lex originis, the law of the country of origin (article 1 para. 1 lit. b). The resolution thus aims to give priority to the protection and preservation of cultural property over the protection of its circulation. 3.1.1 Illegally exported cultural property The core of the resolution is a conflict-of-laws rule that makes the acquisition of illegally exported cultural property that has been registered, classified or otherwise publicly designated as part of its cultural heritage by its country of origin subject to the legal system of that country

93 The resolution of 3 September 1991 is reprinted in: Ann.Inst.dr.int. 64-I (1991) 190 (French); Ann. Inst.dr.int. 64-II (1992) 402 (English and French); Int’ J. Cult. Prop. 6 (1997) 376 (English); Praxis des Internationalen Privat- und Verfahrensrechts 1991, 432 (French); Rabels Zeitschrift 56 (1992) 566 (English); Rev.crit.dr.int.priv. 81 (1992) 203 (French).

Private international law and cultural property and art disputes  537 (article 2).94 Furthermore, article 3 expressly stipulates that the relevant export regulations of the country of origin are also to be applied. The Basel Resolution 1991 appears original when compared with the Unesco Convention 197095 and the Unidroit Convention 1995.96 As indicated in the fourth recital of the preamble of the Basel Resolution 1991, the Resolution aims to strike a balance, as far as possible, between the protection of national cultural heritage and the security of the international art trade. 3.1.2 Stolen cultural property According to its article 1 para. 3, the Resolution is to be applicable to all future cases in which cultural property has been stolen or otherwise lost to its owner or possessor, or illegally exported. In the area of stolen works of art, some proposals suggest that in the case of chains of alienation, the law of the place of theft or of the place of loss should apply. At the very least, however, the lex originis should also determine the elements of the offence of theft or loss. 3.1.3 Amendments of the substantive law However, the country of origin within the meaning of article 1 para. 1 lit. b of the Basel Resolution 1991 can, solely on the basis of the reference to the law of the country of origin under conflict of laws, only demand surrender from the current owner if it can assert a corresponding right in rem to the object. For this reason, the recommendation additionally provides for a regulation according to which the country of origin can demand the surrender of illegally exported cultural property even if, according to its law, no change of ownership has taken place and the absence of the objects has been proven to mean a substantial loss for its cultural heritage (article 4 para. 1). This substantive rule supplements the conflict of laws rule under article 2, thereby ensuring the ultimately intended substantive result. The claim for compensation under article 4(2) of the Basel Resolution 1991 also constitutes such a supplementary substantive rule. The express subordination of the applicable law to the law of the country of origin under article 2 of the Basel Resolution 1991 thus means for the buyer of a work of art that they must consult the methods enumerated in article 1 para. 1 lit. a Basel Resolution 1991 and then determine whether the sale of inalienable works of art is possible, i.e., whether such a sale is prohibited or requires authorization. In the case of Jeanneret v Vichey, Italian law would thus be applicable to the acquisition of the Matisse painting. 3.2

Article 13 Directive 2014/60/EU

However, a practical tendency to relax the lex rei sitae seems to be contained not only in article 2 of the Basel Resolution 1991, but also in article 13 of Directive 2014/60/EU.97 However, the Directive does not touch any property issues. Doctrine draws different consequences from

94 See footnote 90. Article 2 reads: “The transfer of ownership of works of art belonging to the cultural heritage of the country of origin shall be governed by the law of that country.” 95 Supra, footnote 1. 96 Supra, footnote 2. 97 Supra, footnote 1. Article 13 Directive 2014/60/EU ( = article 12 Directive 1993/7/EEC) reads: “Ownership of the cultural object after return shall be governed by the law of the requesting Member State.”

538  Research handbook on intellectual property and cultural heritage the provision of article 13, which is subject to interpretation. In my opinion, a teleological interpretation of article 13 leads to the following result: the provision allows a deviation from the principle of recognition of acquired rights with the consequence that property rights to unlawfully removed cultural property that have been validly established in the meantime can be extinguished again after the return to the country of origin.98 3.3 Evaluation The Basel Resolution 1991 does not say anything on the question of which law should be applied when selling a ‘work of art’ whose origin is controversial or unknown. In such cases, there can be no recourse to a ‘country of origin’ within the meaning of article 1(1)(b). But also in other case constellations, article 2 promises an adequate solution under the condition of the existence of an international and easily accessible register of stolen works of art, e.g., the Art Loss Register. An acquirer of stolen works of art is only in good faith if they use this register to check whether the work of art has been reported as stolen. Moreover, the proposal of the Institut de Droit international under examination says nothing about whether the right determined according to the place of theft should apply only to the first transfer of the cultural object or also to all subsequent transfers of ownership. In order to provide protection against subsequent manipulation of the connecting factor, the established law of the place of theft would probably also have to apply to all subsequent alienations. The proposal of the Institut de Droit international to take into account foreign public law in the home country by means of the private international law is not new. In its resolutions of 1975 (Wiesbaden) and 1977 (Oslo), the Institute’s 20th Commission expressly advocated that courts should also apply foreign public law under certain circumstances. The purpose of deviating from the lex rei sitae in favour of applying the lex originis is obvious. By virtue of such a reference to the law of the State of origin, its laws on the protection of cultural property, including export regulations, are also applied. This consequence deserves all the more attention if the law of the new location of the cultural object provides for more generous regulations for the protection of owners and bona fide acquirers. The principle of non-applicability of foreign public law is broken in this way. Proponents of the application of the lex originis emphasize that the connection to the locus originis is a possibility to avoid or prevent accidental results. However, the attempt to deviate from the lex rei sitae in the area of the protection of cultural property is also occasionally met with rejection. Critics of a link to the locus originis point out that persons acting in good faith will hardly be aware of the locus originis as the place where the theft was committed. Moreover, the lex originis in these cases is even more accidental for the persons concerned than the lex rei sitae. The lex rei sitae is one of the few areas in which the States have adopted and also practise a consistent regulation almost worldwide. By linking to the locus originis, the necessary certainty and predictability of the conflict-of-law decision in international property law was no longer guaranteed. In my opinion, a balancing of interests must be carried out when assessing the necessity of modification by special rules. However, the balancing between legal certainty on the one hand and the protection of owner interests on the other, which regularly take a back seat with regard

See also Siehr, International Art Trade, 237, at No. 296.

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Private international law and cultural property and art disputes  539 to the applicable property law, is not always easy to perform. If these owner interests are further strengthened by the presumably predominant interest of the protection of cultural property, the traffic protection interest loses weight. Moreover, the trust of the legal community in the authoritativeness of the lex rei sitae is often less worthy of protection in the case of illegally exported cultural property. This is because the proximity to the law of the place of location is less pronounced in the case of recognizably valuable cultural property of foreign origin. Also, the location of the movable object is often accidental; it may even be deliberately manipulated for the purpose of a temporarily favourable connecting situation. The applicability of the classical conflict of laws rule thus leads to fortuitous results in the area to be assessed here. It is therefore justified to adapt the lex rei sitae to the particular factual and interest situation and to turn away from the rigid application of this rule. Such a relaxation of the lex rei sitae in favour of the lex originis is in any case also in line with the current trends in private international law from a methodological point of view. 3.4

Lois d’application immédiate

If Swiss private international law refers to the foreign legal system that is applicable anyway, then, according to article 13 Swiss Private International Law Act, the public law of this foreign State is also to be applied. However, it has been discussed for some time whether foreign mandatory rules (so-called lois d’application immédiate), which are not referred to Swiss private international law, should under certain circumstances be referred to separately. The consideration of foreign mandatory rules is linked to the prerequisites, that, first, the foreign mandatory rules want to be applied extraterritorially, second, there is a sufficiently close connection between the legal system from which these mandatory rules originate and the facts of the case (in this case the obligation) and, third, that they are ‘applicable’ according to domestic concepts. In this context, the law of a third country is to be applicable in addition to the legal system called upon to apply by the reference norm, because that law wants to be applied and that law also has a close relationship to the facts of the case. At first glance, it seems clear that the principles developed for the special conflict-of-law connection of mandatory norms are also applicable to foreign export regulations for cultural property. Thus, the prevailing opinion is that export bans are among the mandatory rules that intervene in private law relationships in the public interest. The condition of a close connection to the facts of the case is undoubtedly fulfilled in each case. This is because in cases of illegal export of cultural property, the required close connection of the facts to the law of the State of origin usually already results from the national affiliation of the illegally exported cultural property. The intention to have extraterritorial effect also seems obvious, as almost all States have enacted laws to protect their domestic cultural property. The German Federal Supreme Court expressed this unequivocally in the Nigeria99 case. However, the typical cases in which the relevance of foreign cultural property protection norms is relevant are not contractual claims, but in rem actions by the countries of origin for their illegally exported cultural property. This may lead to critical opinions. You may argue that the theory of the special conflict-of-laws linkage of mandatory norms is limited to contractual situations and therefore cannot be applied to in rem actions for the surrender of illegally

Supra, footnote 87.

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540  Research handbook on intellectual property and cultural heritage exported cultural property. The condition of applicability does not seem to create any further problems. In its previous jurisprudence, the Swiss Federal Supreme Court has in principle proceeded from the so-called theory of the status of obligations in international contract law. This theory is based exclusively on the law applicable to the contractual relationship, subject to the directly applicable norms of the lex fori (article 18 Swiss Private International Law Act). Claims of other legal systems and their influence on the contractual relationship can only be taken into account within the framework of the general substantive remedies of the contractual statute, such as, e.g., violation of morality. In article 19, the Swiss Private International Law Act does not follow the exclusive theory of the statute of obligations. According to article 19, para. 1, the provision of another law that wants to be compulsorily applied may be taken into account if “interests of a party that are worthy of protection and obviously prevail according to the Swiss legal conception, provided the situation dealt with has a close connection with that other law”. The aim is, as article 19 para. 2 states, “a decision that is appropriate having regard to the Swiss conception of law”. The judge is therefore permitted to deviate from the usual connection to the place of location according to article 100 Swiss Private International Law Act and to apply the provisions of a law other than that invoked by the lex rei sitae. In this way, the cultural property preservation provisions of the country of origin of a cultural object that has entered Switzerland illegally can also be applied, if necessary. Unfortunately, the Federal Supreme Court has not yet had the opportunity to comment on the consideration of foreign cultural property protection norms. 3.5

De Raad v OvJ

There has only been one case where a court has expressly affirmed the primacy of foreign cultural property norms instead of the lex rei sitae. In the decision De Raad v OvJ,100 the Dutch Rechtbank applied French cultural property law (L. 31.12.1913) with reference to the ‘Alnati judgment’ of the Hoge Raad of 13 May 1966, although Dutch law was applicable to the transfer of ownership of the statue according to the lex rei sitae. The Rechtbank therefore held the contract of sale concluded in the Netherlands to be null and void (articles 18 and 20 of L. 31.12.1913) and thus denied ownership to the Dutch art dealer. The subject matter of this criminal case, known as ‘Batz-sur-Mer’, was a wood-carved statue of the Madonna that had been stolen from the Catholic church of Batz-sur-Mer (France) in 1978. The statue belonged to the French State and was inalienable and irreplaceable under French law.101

100 Hoge Raad (criminal chamber) 18 January 1983, De Raad v OvJ, Ned.Jur. 1983, 1404, N 445; Prott/O’Keefe, 634–635, No.1231; Siehr, International Art Trade, 84 et seq. 101 Whether the statue was part of the public domain is not clear from the facts of the case or from the considerations in the judgment. However, this is only of minor importance because the statue, as a historical monument, was inalienable and irreplaceable according to the aforementioned regulations. In addition, the export of classified objects was prohibited according to Art. 21 L. 31.12.1913. Since the Catholic church in Batz-sur-Mer has not fulfilled a public purpose since the separation law, it, and thus the movables located in the church, will not belong to the domaine public, but rather to the domaine privé de l’État. The statue was therefore not a classic res extra commercium; cf. Weber, Unveräußerliches Kulturgut, 365, footnote 40.

Private international law and cultural property and art disputes  541 After buying the statue at a market in Brussels in 1979, the art dealer De Bruin sold it on the same day in the Netherlands to the Dutch antique dealer De Raad for NLG 26,000. De Raad restored the statue for NLG 4,500 and later exhibited it at fairs and offered it in his catalogues. In October 1981, the wooden statue was recognized as the stolen one by a visitor at a fair in Maastricht and subsequently confiscated by the Dutch police. The public prosecutor wanted to return the statue to France, although the Dutch Code of Criminal Procedure stipulates that in the case of unclear ownership, the statue should first be returned to the last owner (De Raad), i.e., the person from whom it was seized. De Raad now demanded a judicial review of the prosecutor’s decision. The court of first instance upheld the prosecutor’s order to return it to the French State, while the appellate court rejected De Raad’s appeal. The Hoge Raad dismissed De Raad’s appeal and set aside the judgment of the lower court. More than three years had passed since the theft and confiscation, so that De Raad could have acquired property in good faith according to Art. 2014 B.W. applicable under Dutch lex rei sitae. However, according to French law, the statue was unseizable and inalienable; it was classified as a monument historique (cf. article. 18 para. 1 and 2 L. 31.12.1913); alienation transactions are null and void (article. 20 para. 1 L. 31.12.1913). The second-instance law court came to the conclusion that French law was to be applied to French cultural property domestically because its non-application would violate Dutch ordre public. The French State had not lost ownership and could demand the statue back from any owner at any time. As there were doubts about his good faith, he could not have acquired the statue under article 2014 Burgerlijk Wetboek either. On this point, the Criminal Division of the Hoge Raad agreed in principle with the lower court, but overturned the lower court’s decision because the three-year period for possession had expired and the antique dealer’s bad faith had not been proven. However, summary proceedings are not suitable for the examination of complicated questions of ownership. De Raad’s good faith was therefore to be assessed in civil proceedings. Hence, civil proceedings were commenced by the antiques dealer against the Dutch Government claiming for the order for the seizure of the Madonna statue to be reversed and the return of it to him. The case was finally settled after the French State joined the proceedings and offered to compensate the antiques dealer for the return of the statue to France. The antiques dealer accepted.102

4. CONCLUSION There is no compelling reason why a special conflict-of-laws rule should not also be possible in property law. The promotion of international cooperation and decision-making harmony plays just as important a role in international property law as it does in international contract law. This applies all the more to valuable cultural property and works of art, which are of greater importance than claims under the law of obligations. It is precisely here, therefore, that a need for a special connection is also seen in property law. However, it is doubtful whether the lex originis is the better law than the lex rei sitae. Reasonable solutions must be rather found in the application of the international instruments such as the Unesco Convention 1970103 and

Siehr, International Art Trade, 85, at No. 91. Supra, footnote 1.

102 103

542  Research handbook on intellectual property and cultural heritage Unidroit Convention 1995.104 Furthermore, national treasures must be declared as res extra commercium to which the lex originis should be applied when it comes to the return of such property before domestic courts, if either the requesting State or the requested State has not ratified the Unidroit Convention 1995. Since the relevant national laws are too different, it seems to be impossible to achieve a harmonization of the laws when it comes to the good faith purchase of stolen goods. International conventions do not help to prevent a good faith purchase,105 and not even the request of domestic courts to grant ‘international public policy’ may change this situation.106 However, it seems that doctrine recently pursues a development towards the formation of a ‘lex culturalis’.107

BIBLIOGRAPHY Carducci, Guido, La restitution international des biens culturels et des objets d’art. Droit commun, Directive CEE, Conventions de l’Unesco et d’Unidroit, Paris: LGDJ 1997 Cechi, Alessandro, ‘When private international law meets cultural heritage law. Problems and prospects’, in: Yearbook of Private International Law 19 (2017/2018) 269–293 De Arruda Ferrer-Correia, Antonio, ‘La vente internationale d’objets d’art sous l’angle de la protection du patrimoine culturel’, Ann.Inst.dr.int. 64-I (1991) 90–192 Ehrenzweig, Albert A., Private International Law, Vol. I, Leyden/Dobbs Ferry, Sijthoff/Oceana, 1972 Erik Jayme, ‘Internationaler Kulturgüterschutz: Lex originis oder lex rei sitae – Tagung‘ in Heidelberg, Praxis des Internationalen Privat- und Verfahrensrechts 1990, 347–348 Hanisch, Hans, ‚Internationalprivatrechtliche Fragen im Kunsthandel‘. In: Albrecht Dieckmann/Rainer Frank/Hans Hanisch/Spiros Simitis (eds.), Festschrift für Wolfram Müller-Freienfels. Baden-Baden: Nomos 1986, 193–224 Harris, Lucien, ‘Iran loses UK court battle over Persepolis fragment’, The Art Newspaper, March 2007, 5 Mansel, Heinz-Peter ‘DeWeerth v. Baldinger – Kollisionsrechtliches zum Erwerb gestohlener Kunstwerke‘, Praxis des Internationalen Privat- und Verfahrensrechts 1988, 268–271 Merryman John Henry/Elsen, Albert E./Urice, Stephen K, Law, Ethics and the Visual Arts, 5th ed., AJH Alphen aan den Rijn: Kluwer Law 2007 Merryman, John Henry, ‘International Cultural Property Litigation in the United States: Two Recent decisions’, in Reverdini/Biscaretti di Ruffia/Frigo, La tutela e la circolazione dei beni culturali nei paesi membri della C.E.E. Atti del covegno di Milano – 14 maggio 1990, Roma: Nagard 1992, 83–97 Nanetti, Francesco/Squillante, ‘Francesca, In tema di restituzione di beni culturali illecitamente trasferiti’, Riv.dir.int. 80 (1997) 396-420 O’Keefe, Patrick J., Commentary on the UNESCO 1970 Convention on illicit traffic, Leicester: Institute of Art and Law 2000

Supra, footnote 2. Cf. article 4 para. 1 Unidroit Convention 1995 (footnote 2): “The possessor of a stolen cultural object required to return it shall be entitled, at the time of its restitution, to payment of fair and reasonable compensation provided that the possessor neither knew nor ought reasonably to have known that the object was stolen and can prove that it exercised due diligence when acquiring the object.” 106 Cf. Entscheidungen des Schweizerischen Bundesgerichts 123 II 134 (L. c. Chambre d’accusation du Canton de Genève), consid. 7c on p. 144: The Unesco Convention and the Unidroit Convention may be considered as ‘international public policy’. In this case on mutual assistance in criminal matters, Swiss authorities ordered the return of a painting by Alexandre-François Desportes (1661–1743) which had been stolen in France. The purchaser failed in making belief that he was in good faith at the moment of the purchase in Switzerland. A good faith purchase was denied because the purchaser did not ask either for the authenticity and provenance or the import of the work. 107 Chechi, 293, with reference in footnote 103. 104 105

Private international law and cultural property and art disputes  543 Prott, Lyndel V./O’Keefe, Patrick J., Law and the Cultural Heritage, Vol. 3. Movement, London/ Edingburgh: Butterworths 1989 Redmond-Cooper, Ruth, ‘Time limits in actions to recover stolen art’, in: Norman Palmer (ed.), The recovery of stolen art. London: Kluwer Law International 1998, 145–162 Siehr, Kurt, ‘Das Lösungsrecht des gutgläubigen Käufers im Internationalen Privatrecht’, Zeitschrift für Vergleichende Rechtswissenschaft 83 (1984) 100–118 Siehr, Kurt, ‘International Art Trade and the Law’, Recueil des cours 243 (1993-VI) 9–292 Stoll, Hans, ‘Probleme des Statutenwechsels nach Erwerb eines Lösungsrechts an einer gestohlenen Sache’, Praxis des Internationalen Privat- und Verfahrensrechts 1987, 357–360 Symeonides, Symeon C., ‘On the Side of the Angels: Choice of Law and Stolen Cultural Property’, in: J. Basedow et al. (eds.), Private Law in the International Arena – Liber Amicorum Kurt Siehr, The Hague: T.M.C. Asser Press, 2000, 747–761 Venturini, Gian Carlo, ‘Property’ [Chapter 21], in: International Encyclopedia of Comparative Law, vol. 3 (Private International Law). Mouton et al.: J.C.B. Mohr 1976, 1–37 Visscher, Charles De, ‘La protection internationale des objets d’art et des monuments historiques. Première partie. La conservation du patrimoine artistique et historique en temps de paix’, Rev.dr.int. lég. 16 (1935) 32–74 Weber, Marc, ‘Iran v. Berend – Renvoi for movable property?’, Art, Antiquity and Law 12 (2007) 103–109 Weber, Marc, Isabella d’Este und die internationale Rechtshilfe in Strafsachen. Anmerkungen zum Urteil des Schweizerischen Bundesgerichts vom 13. Mai 2019, Bulletin Kunst & Recht 2019/2-2020/1, 89–92 Weber, Marc, Unveräußerliches Kulturgut im nationalen und internationalen Rechtsverkehr, Berlin: DeGruyter 2002

28. ADR, cultural heritage and intellectual property: A continuum of dispute resolution processes Debbie De Girolamo

Alternative dispute resolution (ADR) has been in the dispute resolution lexicon in many states such as England and Canada since the mid-1990s in the search for new ways to resolve disputes.1 The ADR moniker refers to those processes which are alternatives to judicial adjudication for a final determination of the dispute. Some in the field argue that ADR should be an acronym for ‘appropriate dispute resolution’, which is also relevant to the ADR discourse.2 Framing the dispute resolution discussion as alternatives to litigation serves to narrow the lens by which ADR processes are viewed. Alternatives can refer to adjudicative or binding processes, including arbitration and administrative processes, in addition to the consensual processes well known within the ADR field, such as negotiation and mediation. From this perspective, a critical question emerges: what process is most appropriate for the dispute at hand? It is not solely a matter of the availability of processes; not all processes are suited to all disputes. A consideration of both dispute and process is necessary in the determination of how best to resolve a particular dispute. Cultural heritage and intellectual property (IP) disputes are fertile ground from which to explore appropriate alternative dispute resolution processes. For example, these disputes are not always located firmly within a legal framework, the stakeholders in the disputes often have heterogeneous interests or values they are seeking to protect or promote, parties can face legal and non-legal barriers to pursuing their claims, and power imbalances can impact their ability to deal with issues in dispute. This chapter seeks to familiarise the reader with the ADR movement, the nature of these disputes, and the various processes available to disputing parties in the context of IP and cultural heritage. The literature on ADR in the cultural property and heritage field often discusses ADR in terms of the individual processes that come under its umbrella. This chapter will differ somewhat from that typical approach, seeking to posit ADR as a choice for disputants when faced with the quandary of how to pursue their claims or defences. Before a choice can be made, however, an understanding of the nature and context of the dispute is needed to ensure that the most appropriate process is selected for the dispute at hand. In order to do this, it is helpful to have an understanding of the evolution of ADR processes and the reasons for their relevance. These processes have certain goals and objectives: these goals and objectives must be conducive to the dispute in issue if the process is to be effective. It is the nature and context 1 See for example, Susan Blake, Julie Browne and Stuart Sime, The Jackson ADR Handbook (OUP 2013) 2, paragraph 1.04; Sue Prince, ‘Mandatory Mediation: the Ontario Experience’ (2007) 26 CJQ 79, 79–83. 2 See for example, Carrie Menkel-Meadow, ‘Mothers and Fathers of Invention: The Intellectual Founders of ADR’ (2000) 16 OSJDR 1, 2, 29.

544

ADR, cultural heritage and intellectual property  545 of the dispute that will drive the search for the most appropriate dispute resolution process. It is not just a matter of choosing any ADR process; it is a matter of choosing the most appropriate ADR process for the dispute in issue. The chapter will examine: first, the underlying tenets of ADR, with its focus on interests, value-creating and mutually agreeable solutions; and second, its rise in offering viable alternatives to litigation. The chapter will then move to an exploration of the cultural heritage and IP dispute in the context of ADR, and the support for ADR mechanisms in the field, leading to a discussion about ADR processes framed as a continuum of choices from informal negotiation to more structured processes like arbitration. The chapter will conclude by noting that while ADR offers a range of processes to meet disputant interests, ADR cannot always offer a panacea for conflict: its consensual nature requires active engagement from parties; without it, ADR processes remain a theoretical construct.

THE PHILOSOPHY OF ADR AND ITS DEVELOPMENT IN THE WESTERN WORLD Roberts and Palmer offer an overview of dispute processes over time and across cultures.3 They mark the development of processes parties could use to deal with their disputes without invoking the formalities of state courts. In particular, they look at the various influences on their development, such as religious (the Baptist view, as an example of harmonious living, consensus and reconciliation), political (such as the Knights of Labour, which set up union courts, and China’s attempts to reinstate people’s courts and mediation), ethnic (such as the growth of mechanisms for resolution of disputes in the various Chinese communities that grew from rapid Chinese immigration in the US), occupational (with the rise of the trade guilds dealing with commercial disputes in England, for example) and territorial influences (such as the rise of the community justice systems beginning with neighbourhood justice centres).4 These varied influences helped form a variety of dispute processes that were not reliant on adjudication through normative applications. They were often outside of the Western positivist view of law – that is, the law of the sovereign enforced by state sanctions. Law was not the only way by which to deal with dispute resolution. The underlying philosophy of ADR has developed as a result of its evolution in a Western context:5 it started as a means to deal with intra-community disputes of what appeared to be intractable issues such as race, to improve access to justice for all, to empower citizens to take responsibility for their disputes, and to increase efficiency in terms of state civil justice. Bush tracks the development of ADR in the US, where an awareness of the deficiencies in the state

3 Simon Roberts and Michael Palmer, Dispute Processes: ADR and the Primary Forms of Decision-making (CUP 2005) 89–104 (it is noted that a 3rd edition of this book was published by CUP in 2020; all references in this chapter are to the 2005 edition). 4 ibid 9–44. 5 It needs to be noted that ADR processes (although not identified as such) were evident in customary and traditional practices of acephalous communities as explored by anthropologists. Roberts and Palmer (ibid) 89–104 provide a summary of these practices. The focus in this chapter is the Western concept of ADR processes.

546  Research handbook on intellectual property and cultural heritage apparatus for the delivery of justice became manifest.6 The particular concern was access to justice and the problems with the civil justice process with its great costs, delays, inaccessibility, procedural requirements and other barriers. In 1976, a seminal moment came at the National Conference on the Causes of Popular Dissatisfaction with the Administration of Justice (more commonly known as the Pound Conference), which considered dissatisfaction with the American civil justice system. There, Frank Sander coined the term ‘alternative dispute resolution’ and introduced the idea of a multi-door courthouse where a bevy of processes would be available to people who had disputes to be dealt with.7 The process would be fitted to the dispute – or rather, the nature of the dispute would determine which process would be most suitable. Non-court processes became viable options for dealing with disputing parties. With the 1980s came new approaches in negotiation theory, which included a focus on meeting party interests to create win-win outcomes in contrast to self-interested adversarial approaches, which in turn evolved into support for mediation that focused on mutual problem-solving through a discovery of needs and interests.8 Mediation was seen as a powerful way to deal with disputes in a humanistic way, making parties work together to develop an outcome which would meet their underlying interests.9 The idea that not all disputes needed to be resolved through the law or that satisfaction of non-law interests could lead to resolution gained momentum.10 Moving into the 1990s, many states began to consider the impact of ADR processes on their legal system. With the delays, costs, overburdened court dockets and lack of funds, states began to consider new ways to deal with disputes to keep them out of court and lessen the judicial and state burden for resolving these disputes. ADR became a beacon for efficiency and, arguably, increased access to justice. As Roberts and Palmer note, this has led towards the reconceptualisation of civil justice to include processes beyond traditional litigation, with the promotion of consensual disputing processes, and the search for appropriate alternative methods.11 With states supporting ADR processes within their legal systems, awareness of the benefits of ADR grew. ADR offers access to resolution processes when litigation is either not available or not suitable for the dispute, or when the law does not provide protections and support for the positions asserted. ADR is about empowering disputants to choose a method best suited for their dispute and in relation to non-adjudicatory processes, to be active in decisions made about resolution. Non-adjudicatory ADR offers an opportunity to meet varied and extensive

6 Robert A Baruch Bush, ‘Staying in Orbit, or Breaking Free: The Relationship of Mediation to the Courts over Four Decades’ (2008) 84 NDLR 705; See also, Carrie Menkel-Meadow, ‘Alternative and Appropriate Dispute Resolution in Context Formal, Informal, and Semiformal Legal Processes’ in Peter T. Coleman, Morton Deutsch and Eric C. Marcus (eds), The Handbook of Conflict Resolution: Theory and Practice (Wiley 2014). Both scholars track the development of ADR over several decades. 7 See generally, FEA Sander, ‘Varieties of Dispute Processing’ (1976) 70 FRD 111; Roberts and Palmer (n 3) 46, and for an excerpt of Sander’s article (ibid) 49–50. 8 Bush (n 6) 720–722; See generally, Roger Fisher, William Ury and Bruce Patton, Getting to Yes: Negotiating Agreement Without Giving In (Penguin 1991). 9 Bush (n 6) 722–724. 10 See generally, Menkel-Meadow, ‘Alternative and Appropriate Dispute Resolution’ (n 6) 8–11. 11 For discussion about this development, see Roberts and Palmer (n 3) 65–77, 359–364; Bush (n 6) 732–735.

ADR, cultural heritage and intellectual property  547 party interests and needs through collaborative decision-making, and to reach creative, out-of-the box, solutions that can satisfy all parties to the dispute. ADR can also be about working toward resolution while protecting, preserving, or creating new future relationships. ADR is therefore much more than a list of processes alternative to litigation in the quest for resolution of a dispute.

A DISPUTING RELATIONSHIP TO BE EXPLORED: ADR, CULTURAL HERITAGE AND INTELLECTUAL PROPERTY Before turning to ADR processes, it is relevant to consider the context in which the discussion of ADR in this chapter is situated, because an understanding of the nature of the dispute delineates elements which may impact the path to its resolution. These include: the underlying sources fuelling the conflict; the relationship between the parties; the stakeholders to be involved in the process if a viable resolution is to be reached; the issues to be considered; the values and interests underlying behaviour; the intricacies of power relations between parties and stakeholders; the information parties require to make informed decisions; and the barriers to be overcome. Such elements can guide the selection of an appropriate dispute resolution process for the dispute. Intellectual property and cultural heritage have a symbiotic relationship of polarities which demands our attention as a result: the private and public, and the individual and collective. For example, Macmillan sees intellectual property rooted in market, and intangible cultural heritage rooted in community. She argues that tension exists between the individual and the collective, where the intellectual property right is an individual right that is steeped in the promotion and protection of market rights, and the collective centres on community concerns about cultural heritage for reasons of identity, sovereignty, and nation-building.12 Shyllon also sees a dichotomy between the private/public and individual/collective interests manifested by cultural heritage and intellectual property: cultural heritage is about universal values, whereas intellectual property is not; economics is embedded deeply within the concept of intellectual property, whereas cultural heritage may have not only economic considerations at play, but also broader principled values; cultural heritage has universal beneficiaries, whereas intellectual property has individual or group beneficiaries; cultural heritage can benefit everyone, whereas intellectual property is for private interests; cultural heritage crosses geographic boundaries and is not subject to temporal limits, whereas intellectual property is constrained geographically and by time; intellectual property is generally bounded by national laws, whereas cultural heritage may not only be bounded by national laws, but may also be subject to international conventions and instruments.13 Divergence of interests seem to underlie the dichotomy. Yu also speaks of differences between cultural heritage and intellectual property: first, the goals and forms of protection differ between the two, with repatriation, preservation, reten-

12 Fiona Macmillan, Intellectual Property and Cultural Property: Between Market and Community (Routledge 2021) 91, 108. 13 Folarin Shyllon, ‘Cultural Heritage and Intellectual Property: Convergence, Divergence, and Interface’ in William Logan, Máiréad Nic Craith and Ullrich Kockel (eds), A Companion to Heritage Studies (Wiley 2015) 59–60.

548  Research handbook on intellectual property and cultural heritage tion and authentication being a focus for cultural heritage, and less so if at all for intellectual property, which is more commercially focused; second, reproduction plays different roles in each, with cultural heritage being less amenable to reproduction, whereas intellectual property engages specifically with reproductions; and third, intellectual property is predominantly a function of economically dominant nations, while cultural heritage is more closely embedded within economically weaker nations.14 The private/public and individual/collective interests in these disputes are often at odds with one another. Macmillan refers to the cultural appropriation dispute to illustrate the issues that can arise in this context: who owns the cultural symbol, music, dance or story at issue – is it the state, individual or collective; can cultural heritage be properly protected through law, such as copyright; can an individual have a valid claim over a collective’s assertion of rights over intangible heritage, whether or not it is grounded in law?15 This can be exacerbated when the cultural heritage is in the public domain. Protection against unauthorised use can lead to exploitation of the collective as noted by Shyllon; he uses the example of a photograph of a Maasai individual to illustrate how legal protections over image (for example, copyright) reside with the photographer of the image, resulting in the exploitation of the Maasai identity.16 Consider also the issues surrounding traditional knowledge within communities which can lead to disputes over its use: traditional knowledge may not be capable of being patented; or patent registration may not be accessible by local communities.17 Similarly, the digitisation of tangible and intangible cultural heritage raises potential for disputes: digitisation for purposes of recording cultural heritage can be for good reasons, such as the preservation of local customary traditions, oral histories, song, dance, and other cultural heritage. However, many issues arise from the digitisation: who owns the digital version; how can local communities keep control over their heritage in the digital form; how is the digitisation to be disseminated; what values and ethics are guiding the production of the digital cultural heritage?18 Pigliasco examines these issues in relation to the Sawau Project, which recorded the cultural heritage of a Fijian community, and which required negotiation of these issues.19 These issues are all ripe for disputing, and illustrate the private/public and individual/ collective dichotomies that characterise the intellectual property and cultural heritage relationship. These tensions can be at the root of conflict; an appropriate dispute resolution process needs to account for these tensions in one way or another, either to be dealt with head-on in a consensual participatory process or to be avoided through an adjudicatory process where third-party decision-making controls outcome. The impact of law in IP and cultural heritage disputes is relevant too for the discussion about ADR processes. These disputes may be impacted by law at the local, regional, state, and international levels. Often these disputes are about public or private rights and their protection. 14 Peter K Yu, ‘Cultural Relics, Intellectual Property, and Intangible Heritage’ (2008) 81 TLR 433, 447–448. 15 See Macmillan (n 12) 88. 16 Shyllon, ‘Cultural Heritage and Intellectual Property’ (n13) 63–65. 17 Angela R Riley and Kristen A Carpenter, ‘Owning Red: A Theory of Indian (Cultural) Appropriation’ (2016) 94 TLR 859, 919–921. 18 See generally, Kate Hennessy, ‘Cultural Heritage on the Web: Applied Digital Visual Anthropology and Local Cultural Property Rights Discourse’ (2012) 19 IJCP 345. 19 Guido Carlo Pigliasco, ‘Intangible Cultural Property, Tangible Databases, Visible Debates: The Sawau Project’ (2009) 16 IJCP 255; see also, Hennessy (ibid) 349–50.

ADR, cultural heritage and intellectual property  549 Intellectual property is generally framed through legislation at the state level with rights and protections embedded within state law and having the apparatus of the state supporting their application. As such, the default resolution process would seemingly be litigation. Cultural heritage rights and protections, on the other hand, are not always so clearly framed, may be inadequately protected by state laws or may be subject to customary and traditional protection methods which may not be recognised by state law.20 Macmillan refers to work conducted in the creative industries which examined communities’ relationship to law, finding that creative industries often did not rely on the law, acting outside the law where the community was a cohesive supportive entity.21 The law, as evidenced by the intellectual property framework, took on significance where community ties were weak.22 Although cultural heritage may benefit from some legislative protections either at the state or international level, litigation may not be the only avenue for these disputes or, indeed, may not be viable for a claimant. Pigliasco, Riley and Carpenter, in their respective studies about the Sawau Project and cultural appropriation of Indigenous heritage, speak about the gaps in intellectual property law rendering cultural heritage vulnerable to the taking.23 A critical issue is how to protect these interests without the need for law or resort to litigation. If law does not protect or offer an appropriate remedy, litigation is not possible, and access to some sort of justice needs to be handled by alternative means.24 ADR may be the only viable means to achieving resolution when the law creates a barrier to entitlement; for example, when the law prevents a claimant from proceeding with a claim because the claim is statute barred, not capable of legal proof, or cannot be translated into legal language needed to sustain a cause of action.25 The law, in such circumstance, may not provide protection or a remedy for a party. Expansive and varied interests typify these disputes. They can be about economic and commercial interests of the state or about the cultural interests of the community. They can be about control over resources or the benefits of control. A dispute could arise between state and corporation or between state and local groups within the nation-state. China’s concern about its traditional medicines and the fact that foreign entities have patent rights over the development of its traditional knowledge illustrates such competing interests.26 Cultural heritage may not be solely a state-conceived issue or a private issue; the local may become an important participant in a dispute. Communities have a role to play in seeking res-

20 Pigliasco discusses this issue of communities having customary and traditional means of protecting their cultural heritage (ibid) 259–261; Riley and Carpenter also speak to traditions and customs that deal with the way in which cultural heritage is protected (n 17) 927. They also refer to tribal laws where certain tribal causes of actions and remedies are recognised under tribal law but only apply on tribal lands (n 17) 928. 21 Macmillan (n 12) 105–107. 22 ibid 107. 23 See generally, Pigliasco (n 19) and Riley and Carpenter (n 17). 24 For example, Riley and Carpenter (n 17) 930–931. 25 On the latter point of translation of the claim into a legal cause of action, see Roberts and Palmer (n 3) at 79. 26 The issue of traditional medicine and China’s concern is explored in Michael Blakeney and Candy Cheung, ‘Protecting traditional medicinal knowledge to promote the economic interests of the state: the case of the People’s Republic of China’ (2018) 40 EIPR 775; see also Riley and Carpenter’s discussion of traditional knowledge (n 17).

550  Research handbook on intellectual property and cultural heritage olution of contested issues when it comes to cultural heritage.27 Arizpe sees cultural heritage as being steeped in the collective memory of peoples and nations, requiring safeguarding.28 Communities rich in cultural heritage demand respect, understanding and equality, say Riley and Carpenter: the use of cultural heritage should be carried out with the consent of the community and in accordance with tribal laws, customs and traditions.29 This leads to the issue of stakeholders and their identification: participation by key stakeholders may be required when seeking to resolve cultural heritage disputes. For an effective process, all persons who have an interest in the dispute and its outcome, whether direct or indirect, who can affect the outcome or the implementation of the outcome, who can contribute to the process either through knowledge or resource generation, and who could create barriers to resolution if not involved in the process, need to be involved.30 While this will necessarily complicate any process chosen, ADR permits the participation of such stakeholders more easily than litigation, where only the directly affected individuals are parties, subject to court approval of amicus curiae involvement. ADR can accommodate all those with an interest or role in resolution. It is also important to note at this juncture that ADR processes are relevant not only for disputes which are ripe, but also for dealing with the escalation of issues that can lead to disputes. Often it is a lack of communication, understanding and engagement which can lead to disputes. ADR’s collaborative approach, which encourages dialogue and empowerment, can head off disputes before they arise or indeed become entrenched. For example, referring again to Pigliasco’s Sawau Project, intellectual property legislation may not sufficiently protect traditional knowledge and cultural heritage of peoples; work must be done on the local, regional, national and international level, and there must be a recognition of the customs and traditions of the community that seek to provide protections where intellectual property laws cannot, such as in connection with the internet and cultural heritage in the public domain.31 As Hennessy states, Pigliasco made clear the role of collaborative engagement with issues that lead to disputes: “Engaging with media and local heritage in a collaborative setting required the negotiation of anxiety and opportunity associated with digital media, and decision making that leaned toward restricting circulation rather than participating in the continued appropriation of practices considered to belong to the Sawau people of Beqa.”32 The resolution of cultural property disputes could also be used as a tool by states, says Stamatoudi, to improve relationships for purposes of negotiating other issues not necessarily related to a cultural heritage dispute: “The issue of culture can be used as an instrument for various purposes, in some countries more than others. It cuts across many areas and can be

For example, see Hennessy (n 18) 364–5. Lourdes Arizpe, ‘The Cultural Politics of Intangible Cultural Heritage’ (2007) 12 AA&L 361, 361–2, 387–88. 29 Riley and Carpenter (n 17) 917–18: Their focus is on cultural appropriation of designs and emblems of Indigenous communities. 30 David Myers, Stacie Nicole Smith and Gail Ostergren (eds), ‘Consensus Building, Negotiation and Conflict Resolution for Heritage Place Management (Proceedings of a Workshop organised by the Getty Conservation Institute, Los Angeles, December 2009)’ (The Getty Report) 26, accessed 13 May 2021. 31 See for example, Pigliasco (n 19) 257–261. 32 Hennessy (n 18) 349. 27 28

ADR, cultural heritage and intellectual property  551 used as a bargaining chip for numerous issues, especially with regard to parts of countries that value its importance.”33 Shehade and Fouseki suggest that a long-claimed chalice was returned to Iran in an effort to show good faith before the US began to negotiate the nuclear proliferation agreement with Iran.34 Similarly, when the US wanted a flyzone over Italy to get to the Middle East, the US government’s support of Italy in its quest for the return of certain cultural property set the environment for a collaborative tone over those negotiations.35 This suggests that the processes of ADR, of which negotiation is one, do not occur in a vacuum; they are not rigid processes but evolutionary, and can be used as needed by parties in dispute. ADR is about creativity of process and it is about creativity of outcome. It is about privacy and confidentiality; it is about taking control of the dispute and dealing with the dispute in a way that is not engaging a public decision-maker who is subject to set rules of evidence and procedure. ADR offers flexibility and an opportunity to overcome substantive barriers to resolution that may impede the ability to seek a judicial determination as well as restrictions on the type of remedies courts can award. It offers the opportunity to think outside of the box, which is often needed in these disputes, even where the dispute appears intransigent, involving issues of ownership, identity and sovereignty, such as the repatriation of the Haisla G’psgolox Pole.36

THE RELEVANCE OF ADR TO CULTURAL HERITAGE AND INTELLECTUAL PROPERTY The relevance of ADR to cultural property disputes, more broadly, has been recognised in various international instruments and conventions. The two most obvious are the mediation and conciliation services offered by the Intergovernmental Committee for Promoting the Return of Cultural Property to its Countries of Origin or its Restitution in Case of Illicit Appropriation (ICPRCP) established in 1978 under the auspices of the UNESCO Convention on the Means of Prohibiting and Preventing the Illicit Import, Export and Transfer of Ownership of Cultural Property 1970 (1970 UNESCO Convention), and the mediation service offered by the International Council of Museums (ICOM) and the World Intellectual Property Organization (WIPO) Art and Cultural Heritage Mediation (ICOM-WIPO Mediation Service).37 In addition

Irini Stamatoudi, ‘Mediation and Cultural Diplomacy’ (2009) 61 MI 116, 116. Maria Shehade and Kalliopi Fouseki, ‘The Politics of Culture and the Culture of Politics: Examining the Role of Politics and Diplomacy in Cultural Property Disputes’ (2016) 23 IJCP 357, 365–66. 35 ibid 366. 36 Debbie De Girolamo, ‘Art Disputes and Their Resolution through ADR: A Matter of Creativity rather than of Brexit Implications’ (2017) 22 AA&L 143, 144–145. 37 Rules of Procedure for Mediation and Conciliation, in accordance with article 4, paragraph 1 of the Statutes of the Intergovernmental Committee for Promoting the Return of Cultural Property to its Countries of Origin or its Restitution in Case of Illicit Appropriation (ICPRCP), CLT-2010/CONF.203/ COM.16/7 (ICPRCP Mediation and Conciliation Rules), established in 1978 under the auspices of the UNESCO Convention on the Means of Prohibiting and Preventing the Illicit Import, Export and Transfer of Ownership of Cultural Property, 14 November 1970, 823 UNTS 231, (1970 UNESCO Convention) accessed 10 July 2021; International Council of Museums (ICOM) and the World Intellectual Property Organization (WIPO), Art and Cultural Heritage Mediation (ICOM-WIPO Mediation Service) accessed 10 July 2021. 33 34

552  Research handbook on intellectual property and cultural heritage to the ICOM-WIPO Mediation Service, WIPO offers other ADR services for art and cultural heritage including arbitration, expert determination and good offices.38 Prior to the establishment of these services, UNESCO promoted options for settlement under its various conventions: for example, article 17.5 of the 1970 Convention states that, at the request of states, “UNESCO may extend its good offices to reach a settlement between them” if they are in dispute over a term of the Convention;39 article 25 of the Convention on the Protection of the Underwater Cultural Heritage (2001 UNESCO Convention) sets out a multi-clause dispute resolution procedure dealing with “peaceful settlement of disputes” requiring negotiation or other means as a first step of the procedure, with submission to mediation as the second step;40 the 2005 Convention on the Protection and Promotion of the Diversity of Cultural Expression (2005 UNESCO Convention) sets out its support in article 25, which describes a multi-tiered dispute resolution clause invoking first negotiation, then mediation or good offices, with conciliation following.41 On a more regional basis, although still crossing national boundaries, the 2014 Directive of the European Parliament on the return of cultural objects unlawfully removed from the territory of a Member State and its amending Regulation (EU 2014 Directive) lends its support for ADR processes in article 5(6), which references good offices and arbitration as a means to effect the return of an object.42 More recently, the European Parliament 2019 resolution on cross-border restitution claims of works of art and cultural goods looted in armed conflicts and wars calls on the European Commission to establish alternative dispute resolution mechanisms including hybrid models of arbitration and mediation to deal with restitution claims.43 There is also general support for the use of ADR processes in the cultural property literature. For example, Shehade and Fouseki note the impact of rights-based approaches creating barriers to resolution and the role that diplomacy can play in these disputes;44 Cornu and Renold consider the use of ADR and speak specifically of the creativity of solutions arising from it;45 Hatanaka sees mediation as relevant for IP disputes generally;46 Kadhim highlights the importance of ADR processes as illustrated by the creation of the new Court of Arbitration for

38 WIPO Alternative Dispute Resolution for Art and Cultural Heritage (WIPO ADR) accessed 10 July 2021. 39 1970 UNESCO Convention, Article 17.5. 40 UNESCO Convention on the Protection of the Underwater Cultural Heritage (2001 UNESCO Convention), 31st Session, Article 25; in particular, 25.1, 25.2. 41 The 2005 Convention on the Protection and Promotion of the Diversity of Cultural Expression (2005 UNESCO Convention), Article 25; in particular, 25.1, 25.2, 25.3. 42 Directive 2014/60/EU of the European Parliament and of the Council of 15 May 2014 on the return of cultural objects unlawfully removed from the territory of a Member State and amending Regulation (EU) No 1024/2012 (recast) (EU 2014 Directive), article 5.6. 43 European Parliament resolution of 17 January 2019 on cross-border restitution claims of works of art and cultural goods looted in armed conflicts and wars, (2017/2023(INI)), Article 21. 44 Shehade and Fouseki (n 34) 361–362; 369–370. 45 Marie Cornu and Marc-Andre Renold, ‘New Developments in the Restitution of Cultural Property: Alternative Means of Dispute Resolution’ (2010) 17 IJCP 1, 2–3, 18–23. 46 Asako Wechs Hatanaka, ‘Optimising Mediation for Intellectual Property Law – Perspectives from EU, French and UK Law’ (2018) 49 IIC 384, 388. Hatanaka examines whether mediation is suitable for IP disputes, and determines that mediation would work well for such disputes. In so doing, he canvasses the institutional support for mediation in IP matters, concluding that it is a process that can be utilised, while recognising its limitations.

ADR, cultural heritage and intellectual property  553 Art (CAfA);47 Chechi is of the view that ADR is a necessary mechanism for cultural property disputes, particularly given the ad hoc nature of adjudicative forums for such disputes;48 and Stamatoudi describes the relevancy of various ADR processes for cultural property disputes using specific examples.49 ADR processes offer varied frameworks within which resolution may be explored. A determination needs to be made as to which process would be suitable for the dispute at issue. As has been discussed, there can be disparate interests and rights involved in these disputes. A goal to resolving these disputes is to attempt to locate commonalities, generate better understandings of parties’ motivations and goals, and encourage creativity of outcome. Understanding the elements of a dispute is the first step in the progression to resolution. The next step is to determine the appropriate process for the dispute. ADR requires expansion of what is thought possible and what is thought feasible. It is malleable and can become whatever parties need in order to obtain a resolution of their dispute.

A CONTINUUM OF PROCESSES Having explored the philosophy of ADR, its development and place within dispute resolution, its relationship with IP and cultural heritage, and support for ADR in the field, it is time to examine relevant processes that fall under the umbrella of ADR processes. The state adjudicative process is a prominent one which offers a model of dispute resolution that traditionally emphasises a third-party decision-maker who relies on state rules for decision-making. In the past, this approach reduced the relevancy of other non-adjudicative models of dispute resolution.50 Yet not all disputes are settled by state courts. Negotiation, mediation, diplomacy, good offices, administrative panels, and arbitration are processes that have been utilised for the cultural property dispute. Furthermore, the importance of ADR in civil justice is recognised in many states where rules of civil procedure may require parties to consider alternative methods to resolving disputes before or during a litigation process rather than relying on litigation alone.51 It is important therefore to have an understanding of alternatives available to parties that take them away from the courtroom. There are many different models of ADR processes available to disputants. Processes are either consensual in the sense that the parties have ultimate control over both the decision and the decision-making process, or they are adjudicative, where parties have control over the decision-making process in the sense of choosing the process but they cede authority to a third party to determine outcome. In the latter case, parties choose at the outset whether such an outcome will be binding on them or not. For the purpose of this chapter, ADR will be explored 47 Noor Kadhim, ‘Agreeing on How to Disagree: Arbitration and Other Alternative Resolution Methods for Art and Cultural Heritage Disputes’ [2014] 80 IJAMDP 243. 48 Alessandro Chechi, ‘Evaluating the Establishment of an International Cultural Heritage Court’ (2013) 18 AA&L 31, 55–56. 49 Irini Stamatoudi, ‘Alternative Dispute Resolution and Insights on Cases of Greek Cultural Property: The J.P. Getty Case, the Leon Levy and Shelby White Case, and the Parthenon Marbles Case’ (2016) 23 IJCP 433. 50 Roberts and Palmer (n 3) 82–85. 51 As examples: The Civil Procedure Rules (CPR), rule 44.5; Rules of Civil Procedure, R.R.O. 1990, Reg, 1094, rule 24.1 under Courts of Justice Act, R.S.O. 1990, c. C.43. 

554  Research handbook on intellectual property and cultural heritage as a continuum of dispute resolution processes: beginning with negotiation and ending with litigation.52 A continuum highlights the differences and similarities between processes and provides an excellent introduction to them. Negotiation Negotiation is an important process in this field. A good example are the successful negotiations between Italy and various American museums for the repatriation of looted or stolen cultural property where agreements included not only the return of the objects, but also other terms such as future loan arrangements and education partnerships.53 Negotiation is an attractive process for parties for many reasons: it is a confidential process in the sense that it is a private process, taking place within the confines set by the parties, and it is confidential in the sense that the parties can control disclosure of the process and outcome through agreed terms. It is a fully consensual process: parties choose the time, place, and protocols to be applied for the process; the parties control the conduct of the process as it unfolds, and the parties determine outcome.54 It is not an institutional process and hence there is minimal formality. The parties engage in direct communication with one another or through agents such as legal representatives or other actors. Given these factors, it is understandable that the process is speedier and less costly than other processes which are more formal and involve the participation of third parties. An agreement reached at the conclusion of a negotiation results in a binding settlement agreement, subject to contract law and enforceable as such, unless a term of the settlement requires the filing of the agreement as part of a court order in pending litigation, in which case it could become part of a court record. The next process on the continuum sees the addition of a third party to the process. As movement progresses along the continuum, the level of third-party participation increases, including the amount of authority the third party has over the procedural framework and 52 Approaching ADR as part of a continuum of dispute resolution processes is not unusual: see for example, Roberts and Palmer (n 3) 81–97; Henry Brown and Arthur Marriott, ADR: Principles and Practice (3rd edn, Sweet & Maxwell 2011) 19–24. There are many processes that can sit on this continuum. For purposes of this chapter, processes which are relevant for the IP and cultural heritage dispute are explored. One further note, negotiation is generally recognised as an ADR process and will be examined here; however, there are others such as Brown and Marriott who take a contrary view at 18. It is the view of this author that negotiation is foundational as an ADR process and hence its inclusion. This is particularly relevant for the cultural property dispute where negotiation forms the basis for many resolutions, whether through a mediated negotiation, good offices or diplomacy. 53 Italy has entered into agreements for the return of its cultural property with several museums including the Metropolitan Museum and Boston Museum of Fine Arts: See, for example, Raphael Contel, Giulia Soldan and Alessandro Chechi, ‘Case Euphronios Krater and Other Archaeological Objects – Italy and Metropolitan Museum of Art’, Platform ArThemis (http://​unige​.ch/​art​-adr), Art-Law Centre, University of Geneva, accessed 11 July 2021; Giulia Soldan, Raphael Contel and Alessandro Chechi, ‘Case 13 Archaeological Objects – Italy and Boston Museum of Fine Arts’, Platform ArThemis (http://​unige​.ch/​art​-adr), Art-Law Centre, University of Geneva, accessed 11 July 2021. 54 For a discussion about the negotiation process, see Debbie De Girolamo, ‘The Negotiation Process: Exploring Negotiator Moves Through a Processual Framework’ (2013) 28 OSJDR 353.

ADR, cultural heritage and intellectual property  555 decision-making. There is more formality of process, judicial-like procedures and functions are increasingly engaged, party control over process issues is reduced, parties have less input into the resolution, more time and costs are expended in the process, and results can be judicially binding. Good Offices Good offices is one such process involving third-party participation and often comes up in relation to international disputes. The good offices of an international organisation, for example, can be used to assist parties to commence or continue dialogue, to commence or re-engage with negotiation or other dispute resolution processes. WIPO has its good offices process whereby parties can seek WIPO’s assistance: “When parties are involved in an intellectual property/technology dispute, the WIPO Arbitration and Mediation Center can provide procedural assistance to them (Good Offices) in order to facilitate direct settlement between them or the submission of their dispute to WIPO mediation or arbitration, as alternatives to court litigation.”55 It is also available in respect of art and cultural heritage disputes.56 Other examples of good offices include ICOM’s role in the return of the Makonde Mask and UNESCO’s ICPRCP use of its good offices in trying to bring Greece, the UK and the British Museum to the mediation table.57 The third party acts as an instigator – drawing parties together in the attempt to resolve their dispute.58 Usually, the role is no more than that, which distinguishes it from the more active form of third-party intervention of mediation, discussed below. The third parties are often not related to the primary actors in the sense of having a direct interest in the dispute. A variation of good offices is diplomacy where the third party may be a state, elected officials and other political actors engaging with a dispute to bring parties together. Senator Christopher Dodds, a member of the US Senate Relations Committee, used his good offices or, as some might say, diplomacy, to bring Yale University and Peru back to the negotiation table after years of litigation and unfruitful negotiations over the return of Machu Pichu artefacts.59

55 WIPO Good Offices Service at accessed 12 May 2021. 56 ibid. 57 See Maria Shehade, Kalliopi Fouseki and Kathryn Walker Tubb, ‘Alternative Dispute Resolution in Cultural Property Disputes: Merging Theory and Practice’ (2016) 23 IJCP 343, 347; ICOM, Art and Cultural Heritage Mediation: An alternative litigation resolution method adapted to art and cultural heritage fields, Press conference: 12 July, 2011 Paris, accessed 11 July 2021; for WIPO and ICOM’s willingness to use their good offices to facilitate parties to mediation see at accessed 12 May 2021; for the ICPRCP and its role in attempting to facilitate a mediation between Greece, the UK and the British Museum, see discussion in Stamatoudi, ‘ADR and Insights on Cases’ (n 49) 439, 448 & 449. 58 For a succinct overview of Good Offices, see Ruth Lapidoth, ‘Good Offices’ [2006] MPIL accessed 13 May 2021. 59 Shehade and Fouseki (n 34) 369–71 speak in detail about diplomatic efforts at assisting parties in resolution, also citing the Dodds example at 369, among others.

556  Research handbook on intellectual property and cultural heritage Consensus-building Consensus-building is another process which is relevant for cultural property disputes. It is a collaborative process, engaging parties to work together to uncover interests, improve dialogue, and overcome barriers on the road to resolution. It is a process that can involve third parties assisting disputants and, where applicable, external stakeholders to work together through consultations or negotiations. It is a flexible process where the third party can act in a variety of capacities, such as facilitator, chair or advocate, and it can be private or public. It is a process that can be shaped as required by the dispute and the parties. The process can involve: consultation with stakeholders; assessment of the situation; fact-finding; process design, including ground rules for dialogue; negotiation and discussion; facilitation; coaching and training stakeholders to deal with the issues effectively; and mediation, if necessary.60 The Getty Conservation Institute had occasion to explore the relevance of consensus-building for the management of cultural heritage sites.61 The framework offered by its report on the issue is pertinent to cultural property disputes, whether dealing with tangible cultural property or intangible cultural heritage. The Report describes the process: The consensus building process is a framework for developing and implementing collaborative decision making. It is appropriate for situations in which two or more parties or groups seek to affect outcomes on a complex, interrelated set of issues, and when their support – if not full agreement, then at least broad-based consent – is helpful or essential to the implementation and long-term sustainability of the decisions. It is, in essence, a way to structure and coordinate deliberations so that participants can work together efficiently and productively.62

Such a framework is relevant for the cultural heritage dispute, which, as noted above, may involve several stakeholders. Nafziger refers to the Native American Graves Protection and Repatriation Act as an example of a framework for such collaboration and consultation among stakeholders such as museums, local Indigenous communities, and governments for the negotiation of a resolution for disputes.63 Mediation Mediation, another process on the ADR continuum, sees enhanced engagement with the parties by the third party. The third party facilitates resolution through their participation in the process; the manner in which they do this is variable. First it must be understood what mediation is: “mediation is consensual negotiation assisted by an independent third party who does not have authority to impose a resolution.”64 As a result, the negotiation framework is relevant 60 For a discussion about consensus-building, see Brown and Marriott (n 52) 361–362, paragraphs 15-059 – 15-064; 470–472, paragraphs 20.026–20.031; Blake, Browne and Sime (n 1) 205, paragraph 16.45. 61 The Getty Report (n 30). 62 ibid 25. 63 James A R Nafziger, ‘A Blueprint for Avoiding and Resolving Cultural Heritage Disputes’ (2004) 9 AAL 3, 13–14, which also discusses the relevance of consensus-building processes to cultural heritage issues and, in so doing, discusses the American legislation. 64 Debbie De Girolamo, The Fugitive Identity of Mediation: Negotiations, Shift Changes and Allusionary Action (Routledge 2013) 65.

ADR, cultural heritage and intellectual property  557 when considering mediation; all the elements of negotiation are present. The parties come to mediation voluntarily (unless mandated by some legislative or contractual requirement), they continue to have control over the process (although they are guided by the mediator in terms of process decisions) and they have control over outcome. A decision is not imposed on them.65 The mediation process is private and confidential, as defined by the parties. The process is flexible and informal, not usually subject to normative rules of procedure or evidence. Law can be invoked as and when the parties wish. It is important to remember that the mediation process in terms of structure and procedural framework, as well as mediator approaches and interventions, is flexible and can be shaped to respond to the needs of the parties and the dispute. While mediation is a facilitated negotiation, there are significant differences between mediation and negotiation. One difference between the processes is the addition of a neutral, impartial, non-aligned third party (the mediator) to the negotiation, who generally stands outside of the dispute and who assists the parties to communicate with one another and helps them to resolve their dispute if they can.66 The mediator can work with the parties to overcome negotiation barriers and barriers imposed by law, to uncover party interests in an attempt to meet those interests in any resolution, and to assist in identifying creative solutions. In essence, this third party helps the parties negotiate a deal. The mediator guides the parties through the process, with the parties interacting with and through the mediator, and with each other. The extent of mediator interactions varies along a spectrum of actions including facilitative, advisory, directive, and other active (party-centric) interventions.67 Another difference between mediation and negotiation is found in their strategic approach to resolution: mediation seeks to be an exercise in problem-solving negotiation, where party interests play a central role in the process, an aim of which is to meet those interests in order to achieve a mutually agreeable settlement. Negotiation on the other hand can move between problem-solving, competitive and co-operative strategies, where self-interest can be a primary goal. Mediation can also preserve and promote future relationships by reorienting the parties to one another through greater understanding of the dispute and the manner in which the resolution is attempted.68 Any agreement reached during a mediation is subject to contract law for enforcement, unless the agreement is made part of the court record according to its terms or the parties have the benefit of making use of the United Nations Convention on International Settlement Agreements resulting from Mediation (the Singapore Convention) for enforcement of agreements reached during mediation.69 Negotiation does not have the option of enforcement under the Singapore Convention.

For a discussion about mediation, see generally, De Girolamo, ibid. This is the traditional view of mediation and is invariably described as such in the literature: For example, Blake, Browne and Sime (n 1) 15, paragraph 2.19; Brown and Marriott (n 52) 155, paragraph 8-007, 159–160, paragraphs 8-029 – 8-034. However, there are those who challenge the concept of a mediator being a neutral non-aligned third party: see for example, Debbie De Girolamo, ‘The Mediation Process: Challenges to Neutrality and the Delivery of Procedural Justice’ (2019) 39 OJLS 834. 67 For discussion about mediator approaches, see De Girolamo, The Fugitive Identity of Mediation (n 64) 149–205. 68 Lon L Fuller, ‘Mediation – Its Forms & Functions’ (1971) 44 SCLR 305, 308, 325–6. 69 The United Nations Convention on International Settlement Agreements resulting from Mediation (the Singapore Convention) is a recent piece of international soft law, adopted in 2018 and signed in 2019 by 46 states: accessed 13 July 2021; and accessed 13 July 2021. 70 ICOM-WIPO Mediation Service (n 37); and ICPRCP Mediation and Conciliation Rules (n 37); for a discussion of these rules, see Sabrina Urbinati, ‘Alternative Dispute Resolution Mechanisms in Cultural Property Related Disputes: UNESCO Mediation and Conciliation Procedures’ in Hildegard Schneider and Valentina Vadi (eds), Art, Cultural Heritage and the Market: Legal and Ethical Issues (Springer 2014). The Court of Arbitration for Art (CAfA) also offers mediation services: accessed 13 July 2021. 71 ICOM-WIPO Mediation Rules, article 6; ICPRCP Mediation and Conciliation Rules, article 2.2; compare to International Chamber of Commerce (ICC) Mediation Rules, article 5 and Centre for Effective Dispute Resolution (CEDR) Model Mediation Procedure, paragraph 3. 72 ICPRCP Mediation and Conciliation Rules, article 3.4; compare to International Chamber of Commerce Mediation Rules, article 7 and Centre for Effective Dispute Resolution Model Mediation Procedure, paragraph 1, 7, 9. 73 ICOM-WIPO Mediation Rules, article 13; ICOM Code of Ethics for Museums, articles 7 and 8.1. 74 ICPRCP Mediation and Conciliation Rules, article 8.3; for comparison, see generally ICC Mediation Rules and CEDR Model Mediation Procedure. 75 CAfA accessed 13 July 2021.

ADR, cultural heritage and intellectual property  559 fire which destroyed valuable artworks.76 Unfortunately, due to its confidential and private nature, it is rare to get a glimpse of the way the mediation process unfolds or the outcomes are achieved.77 The parties control access to information in this regard, making it difficult: to determine the frequency by which disputes are resolved through mediation; to explore the structure of the process; and, to assess mediator interactions and quality of outcome. Conciliation Conciliation is another process that is referred to on the continuum, sometimes used in conjunction or interchangeably with mediation.78 However, conciliation can be a different process whose definitions may change from jurisdiction to jurisdiction, moving from a passive facilitation to an active intervention. It has a fluid definition, but it does involve a neutral third party assisting parties with the resolution of their dispute, and is often a process steeped in a legislative framework.79 Stamatoudi sees it as a mix of inquiry and mediation where the conciliator investigates and proposes a solution to the parties which is non-binding on them.80 Similarly, for the ICPRCP, conciliation means investigation and effecting settlement.81 Chechi argues that the conciliation process resembles government advisory panels for the restitution of Nazi-era looted art in that there is investigation and recommendation made at the end of the inquiry.82 In traditional mediation, mediators usually do not make recommendations for solution to the parties unless all parties specifically request that a recommendation be made. Early Neutral Evaluation Early neutral evaluation (ENE) is another private consensual process parties may consider early in the dispute, also involving a neutral or impartial third party, usually someone with expertise in the subject area who conducts an evaluation on a specific issue of fact, law, or evidence.83 The evaluator assesses the strengths and weaknesses of the parties’ positions and 76 Anne Laure Bandle, Raphael Contel and Marc-André Renold, ‘Case Ancient Manuscripts and Globe – Saint-Gall and Zurich’ Platform ArThemis (http://​ unige​ .ch/​ art​ -adr), Art-Law Centre, University of Geneva accessed 13 July 2021; Anne Laure Bandle, Raphael Contel, Marc-André Renold, ‘Case Warehouse Fire – Gillian Ayres et al. and Momart’, Platform ArThemis (http://​unige​.ch/​art​-adr), Art-Law Centre, University of Geneva, November 2018 accessed 13 July 2021; see also Shehade and Fouseki (n 34) 362–3 for a discussion of an ICPRCP mediation involving Turkey and Germany. 77 For a consideration of observed commercial and civil mediations, see De Girolamo, The Fugitive Identity of Mediation (n 64). 78 See discussion in Brown and Marriott (n 52) 156–158, paragraphs 8-012 – 8-021. 79 Blake, Browne and Sime (n 1) paragraphs 2.27, 23.03, 23.04–06. 80 Irini A Stamatoudi, Cultural Property Law and Restitution: A Commentary to International Convention and European Union Law (Elgar 2011) 202. 81 ICPRCP Mediation and Conciliation Rules, article 2.3. 82 Alessandro Chechi, ‘Plurality and Coordination of Dispute Settlement Methods in the Field of Cultural Heritage’ in Francesco Francioni and James Gordley (eds) Enforcing International Cultural Heritage (OUP 2013). 83 Blake, Browne and Sime (n 1) 16, paragraph 2.24, 241, paragraph 22.04; see discussion in Stamatoudi, Cultural Property Law (n 80) 201 on the process of fact finding which is similar to early

560  Research handbook on intellectual property and cultural heritage gives a view on outcome which can be binding or not, depending on party preference. It tends to be rights-based and can occur at any time during the life of a dispute. The parties make submissions to the evaluator in a process that is very flexible: the submissions can be written or oral; the evaluator does not need to confer with the parties; and a recommendation is made at the conclusion of the process.84 Parties can agree jointly to conduct an early neutral evaluation, or a party may engage an evaluator for their own purposes.85 The ENE is usually designed to assist with a particular aspect of the dispute, to further negotiations or to define/narrow issues in dispute and help parties assess the strengths and weaknesses of their positions: for example, on cultural property matters such as title, copyright infringement, or contractual obligations dealing with licensing or museum loans. Expert Determination Expert determination is a process similar to ENE, involving a third-party neutral with expertise in a particular field on a particular matter; in this case, however, the expert makes a determination on the positions of the parties in respect of a specific issue in dispute.86 The outcome can be binding on the parties, if agreed by the parties as a condition of engaging in the process. Essentially, this process involves a technical expert opining on an issue; in cultural property disputes, this could be about provenance, authenticity, title, or restitution issues.87 Advisory Panels Advisory panels have become a known feature within the field, particularly as a result of the various spoliation panels set up by Austria, the Netherlands, France, Germany and the United Kingdom for restitution claims involving Nazi-era looted cultural property.88 They too can be seen to be a form of ADR.89 These panels involve both inquiry and adjudication yet do not result in final determination. Their recommendations are made to the state or other governmental body who have the final say on the matter. Decisions are usually made public. These processes tend to be semi-formal in nature, with loose procedural requirements, and terms of reference setting out factors for consideration, which often include legal and non-legal

neutral evaluation; for a succinct and informative summary of the process, see Government of Canada, Department of Justice, Dispute Resolution Reference Guide on Neutral Evaluation, accessed 13 May 2021. 84 Roberts and Palmer (n 3) 287–88, 328–331. 85 The information on early neutral evaluation comes from Blake, Browne and Sime (n 1) 16, paragraph 2.24 and 241, paragraphs 22.01, 22.04; for more detailed information see paragraphs 22.05–22.13 therein. 86 For fulsome discussion about expert determination, see Blake, Browne and Sime (n 1) 252–266, paragraphs 24.01–24.55. 87 Regarding restitution claims, the Binding Expert Opinion procedure of the Dutch Restitutions Committee provides an opportunity for restitution claimants to obtain a binding opinion on their claims. See Evelien Campfens, ‘Restitution of Looted Art: What about Access to Justice’ (2018) S A&CLR 185, 207–209 for a description of the procedure. 88 For a brief summary of these panels, ibid 204–206. 89 For example, in her exploration of the UK Spoliation Panel, Charlotte Woodhead, ‘Putting into place solutions for Nazi era dispossessions of cultural objects: the UK experience’ (2016) 23 IJCP 385, 388, 400, sees these advisory panels as alternatives to litigation.

ADR, cultural heritage and intellectual property  561 factors.90 The relevance of these processes for cultural property disputes is that they cross the boundaries of law in that they consider moral aspects of claims in coming to their recommendations.91 This can be very important for those cultural property claims which cannot meet the legal case for entitlement and hence would be denied access to a means for recovery despite compelling evidence supporting the claim. A form of advisory panel was used in the Lakota Ghost Dance Shirt repatriation claim against Glasgow City Council by the Wounded Knee Survivors Association. A Repatriation Working Group established by a Committee of the Council investigated the claim for recommendation purposes. It acted as an advisory panel in its deliberations, having regard to various criteria, which included: the status of those making the repatriation request; the relationship between the claimant and the object; the cultural and religious importance of the object to the community; the circumstances surrounding the acquisition of the object by the museum; and the fate of the object if returned. Expert witnesses, including academic and legal experts, were engaged on various issues, parties made submissions, and consultations were held with the museum community and the community at large. A public hearing at which all interested parties were invited to attend was conducted. Before a recommendation was made to the Council, the parties negotiated a resolution to the claim which saw the repatriation of the Ghost Dance Shirt to the Lakota community.92 The way in which the Working Group proceeded is reminiscent of the work of the restitution advisory panels dealing with Nazi-looted art: working under terms of reference, conducting inquiry, hearing submissions and making recommendations to a superior body who ultimately makes the final decision. The additional community consultation on the part of the Working Group is also critical for these disputes and a relevant feature to advisory panel work. The Lakota Ghost Dance Shirt repatriation provides a good example of the viability of these panels for cultural property repatriation claims in general and for responding to the demands of a dispute such as consideration of the various interests of the parties, legal and non-legal factors, expert evidence, and full stakeholder participation. It incorporated aspects of adjudication, consensus-building, conciliation, expert determination, and ultimately negotiation in reaching a resolution. Arbitration Arbitration, another relevant process, falls within the adjudicative realm of the ADR continuum. The arbitrator is a neutral and impartial third party who imposes a decision on the

90 As an example, see the UK Spoliation Advisory Panel Constitution and Terms of Reference, paragraphs 8, 9, 15 and 16 accessed 14 July 2021. 91 For a discussion about moral considerations in restitution cases, see generally, Debbie De Girolamo, ‘The Conflation of Morality and “the Fair and Just Solution” in the Determination of Restitution Claims Involving Nazi-Looted Art: An Unsatisfactory Premise in Need of Change’ (2019) 26 IJCP 357. 92 See at accessed 13 May 2021 for these details. See also Stamatoudi, Cultural Property Law (n 80) 205, which refers to the Lakota Ghost Dance claim as an example of an advisory panel.

562  Research handbook on intellectual property and cultural heritage parties after a hearing which usually includes the presentation of evidence and oral argument.93 Arbitration usually works within a legal framework in which rules and norms are applicable. Arbitration blends both the characteristics of the non-adjudicatory ADR processes explored above and some of the adjudicative characteristics of litigation. Arbitration remains generally a consensual process: both parties must agree to be bound by an arbitration process (unless legislation requires it). This usually occurs in arbitration clauses found in contractual documents and agreed before any dispute arises or agreed once the dispute occurs. The rules of evidence and procedure are not as formal as court rules and the parties choose which they wish to follow in the arbitration. The process is private and confidential. The parties select the decision-maker or, at minimum, the process for the selection of the decision-maker. Decisions are binding and can be subject to limited judicial review. Arbitration awards are enforceable under the auspices of the United Nations Convention on the Recognition and Enforcement of Foreign Arbitral Awards (New York Convention).94 For cultural property disputes, arbitration would be relevant where parties require a determination on an issue (usually one which is coloured by law such as ownership or title), yet desire control over the selection of the decision-maker, the process to be applied to the hearing, and the framework within which the decision is to be made. Examples of the use of arbitration include the Altmann and Austria arbitration over six Klimt paintings; arbitration was finally agreed by the parties after years of expensive litigation. A consensual process was not possible for these parties; a third-party determination was needed.95 Arbitration was also used to determine donor intention in relation to a cultural object given to a museum.96 While the use of arbitration has not been prevalent within the art world, the literature has considered its benefit.97 The new CAfA also seeks to encourage its use. It has developed a roster of arbitrators comprising art experts and lawyers with art dispute experience. Its rules set out specific provisions on the use of art experts during the arbitration. Its process is intended to be fast, relatively cost-efficient, and adaptable to disputant needs.98 Administrative Tribunals Administrative tribunals are another process worth mentioning on this continuum of dispute resolution processes, although some may consider them to be a state adjudicative process and so not falling under the ADR umbrella of processes, which are the focus of this chapter. The 93 For a discussion about arbitration, see generally, Loukas Mistelis, ‘International Arbitration: Corporate Attitudes and Practices’ (2004) 15 ARIA 525. 94 Convention on the Recognition and Enforcement of Foreign Arbitral Awards (New York, 10 June 1958) accessed 13 July 2021. 95 Caroline Renold and others, ‘Case Six Klimt Paintings – Maria Altmann and Austria,’ Platform ArThemis (http://​unige​.ch/​art​-adr), Art-Law Centre, University of Geneva accessed 13 July 2021. 96 Alexander Herman, ‘Loan or Gift Revisited: Determining the Donor’s Intent (Once Again) Lord Beaverbrook et al v. The Beaverbrook Art Gallery’ (2011) 16 AA&L 317. 97 See for example, Noor Kadhim, ‘Arbitration in the Art World and the Court of Arbitration for Art: Heading towards a More Effective Resolution of Arts Disputes’ (2019) 24 AA&L 223, 225–229, which explores arbitration for title and authenticity disputes. 98 CAfA Arbitration Rules accessed 13 July 2021; Kadhim, ‘Arbitration in the Art World’ (n 97) 229–234.

ADR, cultural heritage and intellectual property  563 administrative tribunal used in China for intellectual property disputes is one that beckons consideration.99 It is a process that has one foot in the realm of ADR and the other in litigation. A specialised government agency deals with particular disputes, such as breach of trademark or patent, opining only on the breach. It permits quick and low-cost access to an authoritative decision to prevent infringement and allows parties to pursue damages claims through traditional litigation.100 This echoes the process of adjudication, an ADR process in the construction industry where disputes are dealt with immediately so as not to interfere with the construction schedule, but which permit parties to challenge the decision once the construction project has concluded.101 These processes suggest opportunities for creativity in process design where elements of various processes are combined to suit a particular type of dispute. Litigation Litigation is at the end of this chapter’s dispute resolution continuum, being the process against which the ADR moniker was conceived.102 It is the formal, rights-based state adjudicative process which depends on each party advancing positions, presenting evidence and making arguments before a neutral, impartial, non-aligned third-party decision-maker – the judge. Its normative process is formally and stringently observed and is usually a public one. Judicially binding decisions are imposed, subject to judicial appeal.

IN CONCLUSION: A CAVEAT This chapter has considered the role of ADR in cultural heritage and intellectual property disputes by examining its underlying philosophy, its development, the nature of these disputes, and the variety of processes offered under a dispute resolution continuum. The continuum offers a myriad of ADR processes available to disputants seeking to resolve their intellectual property and cultural heritage disputes. These processes expand the possibilities for resolution by moving disputes away from a restrictive litigation framework. The ADR choices within party control are adaptive to party needs. They are available for party benefit, waiting to be selected and conformed into a process fitting for the issues in dispute. 99 My thanks to Queen Mary University of London LLM graduate, Yannan Li, who delivered a class presentation on the administrative tribunal in my QMUL postgraduate ADR course, and initiated a relevant class debate as to whether this tribunal process falls within the sphere of ADR processes. While this chapter will not engage in the debate, the process may be of interest to ADR proponents as well as IP and cultural heritage claimants. 100 For brief summaries of the Chinese IP administrative tribunal, see Nari Lee and Liguo Zhang, ‘Specialized IP Courts in China – Judicial Governance of Intellectual Property Rights’ (2017) 48 IIC 900, 919–920; Kristina Sepetys and Alan Cox, ‘Intellectual Property Rights Protection in China: Trends in Litigation and Economic Damages’ Topics in Law and Economics in China, NERA Economic Consulting, 2009, page 4 accessed 14 July 2021; China IPR SME Helpdesk, ‘Enforcement of Intellectual Property Rights in China’, 2013 accessed 14 July 2021. 101 Blake, Browne and Sime (n 1) 276–279, paragraphs 26.01–26.13; Brown and Marriott (n 52) 17, paragraph 2-007 and 133–137, paragraphs 7-002 to 7-017. 102 See earlier discussion, n 7.

564  Research handbook on intellectual property and cultural heritage The consensual nature, of the ADR process, however, leads to an ADR quandary: its benefits can only be effected through participation in its processes. When all is said and done, all hinges on whether all stakeholders are willing to engage in the ADR process – recall, it is only litigation which can force an unwilling defendant to engage in the litigation process. If there is no agreement to use an ADR process, ADR processes will not be helpful. Parties cannot be forced to engage in the process unless the law demands it. In some jurisdictions, ADR processes become part of civil justice, requiring parties to engage in settlement discussions, negotiation or mediation, for example, due to procedural requirements, which makes engagement in the process easier.103 However, where disputes are not embedded within litigation, and are not subject to legislative requirements, the ability to convince all parties to participate in ADR processes becomes paramount. The decision to engage in a process will often depend not only on the interests of the parties, but also on the nature of the dispute. For example, Greece encountered this barrier when seeking to invoke the ICPRCP’s mediation process to deal with the dispute over the Parthenon Sculptures. Greece triggered the process inviting the UK Government and the British Museum to engage in the process, only for the invitation to be rejected by them after a lengthy delay.104 No mediation took place as a result since all parties need to voluntarily participate in mediation; the ICPRCP could not enforce attendance.105 A variety of processes for resolution are necessary to enable greater opportunity for parties to achieve a resolution of their dispute, but the promise of these ADR processes can be hollow if the parties are not willing to engage with them. For ADR to be effective, the parties must desire such engagement. It is the hope of the author that this chapter will generate increased awareness of the relevance of ADR to the cultural heritage and intellectual property dispute, and the potential suitability of its various processes in the search for resolution.

103 These can be direct mandatory requirements imposing an obligation on litigants to engage in some form of ADR process in order to proceed to trial; other mechanisms may be indirect, such as applying cost sanctions where a party has unreasonably refused to engage in ADR; see n 51. 104 Diana Perks, John Woodhouse and Sarah Pepin, ‘The Parthenon Sculptures’, House of Commons Library, Research Briefing, 9 June 2017 accessed 13 May 2021. 105 See Stamatoudi, ‘ADR and Insights on Cases’ (n 49) 450–451.

29. Intellectual property implications of 3D printing of cultural heritage Charles Cronin

1. INTRODUCTION In 2020, to alleviate COVID pandemic gloom, the Frick Collection in New York sponsored its enthusiastically received weekly live webcast ‘Cocktails with a Curator.’ In one episode Xavier Salomon, the Frick’s dapper Chief Curator, discussed one of the Frick’s best-known works, comprising four large panels now known as Fragonard’s ‘Progress of Love,’ which were installed in Henry Clay Frick’s princely house in New York, in the drawing room that now bears the artist’s name.1 The four canvases had been previously housed for over a century in a room dedicated to them in the villa of Fragonard’s cousin Alexandre Maubert, a perfume merchant in Grasse. When Maubert’s descendants sold the paintings to J.P. Morgan in 1898, they commissioned identical copies, which were, and still are, hung in the location of the originals. Morgan subsequently sold the work to Frick.2 The migration of the originals to New York, and the installation of copies in the Grasse villa, appears to have been a successful arrangement for all concerned. The financial straits of the descendants of the original owner were mitigated by Morgan’s wealth. The paintings, previously housed in an obscure building in a now somewhat miteuse city, are now ensconced in a sumptuous milieu in New York, at an institution that scrupulously invigilates their condition, and are enjoyed by exponentially more numerous admirers than they could be in the south of France. Frick, and other American art collectors of his era, like Rockefeller and Mellon, purchased enormous works, original rooms, and even buildings, from European owners pursuing financial windfalls made possible by these American industrialists’ spectacular wealth. Why ‘settle for’ a copy when one could afford the original, and the expense of transporting and re-installing it? This perspective is still evidenced, albeit in more frivolous enterprises like interior decorating, when, for instance, real estate agents gush over the presence in a newly built house in Beverly Hills or Palm Beach of ‘reclaimed’ floor planks or cobblestones relocated from an eighteenth-century French farmhouse. The personal wealth of today’s Rockefellers and Carnegies, like Bill Gates and Mohammad bin Salman, still strongly affects ownership of, and access to, significant cultural artifacts like Leonardo’s Codex and his Salvator Mundi.3 However, considerable advances in technologies, 1 See https://​www​.frick​.org/​interact/​miniseries/​cocktails​_curator/​fragonards​_progress​_love​_series​ _part​_one. 2 See generally, Colin Bailey, Fragonard’s Progress of Love at the Frick Collection (2011). 3 Gates purchased the Codex from Armand Hammer in 1994. See https://​hammercodex​.com/​. Bin Salman purchased Salvator Mundi at auction in 2017. See David Kirkpatrick, Mystery Buyer of $450 Million ‘Salvator Mundi’ Was a Saudi Prince, N.Y. Times, Dec. 7, 2017, at A1.

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566  Research handbook on intellectual property and cultural heritage particularly digital, by which to replicate and distribute these objects, challenge the significance, long promoted by the art market, of their original manifestations. In 2016, the Getty Museum exhibited the enormous paintings and sculptures of the Buddhist cave temples of Dunhuang, China.4 Given the Getty’s vast financial resources, it might have purchased and transported these objects to its acropolis in Los Angeles, as George Barnard did early in the twentieth century with four medieval cloisters now owned by the Metropolitan Museum. Given the ongoing spiritual and cultural connection between the cave artwork and the population that has long admired and cared for it, today most of us would consider such acquisition and relocation to be in poor taste, and ethically questionable. The Getty neither borrowed nor acquired any original paintings from the Dunhuang temples; in fact, it contributed to their preservation in situ. It displayed copies of them made by living proponents of the Buddhist practice of gaining personal merit by replicating sacred images. Some of the works were presented virtually, as high-resolution projections that allowed viewers wearing 3D glasses to perceive stereoscopic images in which sculptural works stood apart from the decorated walls behind them. There are countless similar deployments of copying technologies to overcome limitations on access to cultural works imposed by material fragility and geographical distance. Recent high-profile examples include the reproductions of the paintings of the Lascaux caves, and even the high-resolution projections of old master paintings on the interior walls of Bill Gates’ house near Seattle. Over the past decade or two, advances in, and broad accessibility to, 3D scan and print technologies have allowed us to circumvent both limitations, and to create copies of three-dimensional cultural works which are increasingly indistinguishable from the originals. This potential, however, has disconcerted many owners of original works who, purportedly in support of the admonitory adage ‘familiarity breeds contempt,’ fear these technologies may undermine the financial value, and the prestige of their originals, which depend on scarcity, and exclusivity of access and possession. The potential of 3D technologies to help preserve cultural artifacts while simultaneously making them more broadly accessible depends significantly upon the policies of those who own these physical objects, and what, if any, intellectual property protection adheres to 3D scan data of these objects and the material copies produced from them. Our discussion opens with a high-level description of digital 3D scan technologies. We next consider some of the copyright issues associated with the virtual and tangible products of these technologies. I touch upon the copyright regimes of several European nations, but my discussion reflects my greater familiarity with that of the United States. Finally, I posit that 3D technologies hold the desirable potential to transform cultural artifacts of human expression, previously capable of being rendered and perceived only as tangible objects, into less material-bound works of human expression, like music and poetry.

2.

3D SCAN AND PRINT TECHNOLOGY

Humans have always copied tangible and intangible artifacts they have found useful or aesthetically pleasing. Their ability to do so has depended upon both available technologies and 4 See http://​www​.getty​.edu/​research/​exhibitions​_events/​exhibitions/​cave​_temples​_dunhuang/​index​ .html.

Intellectual property implications of 3D printing of cultural heritage  567 characteristics of the artifacts. For example, since Antiquity, artists have used the technology of camera obscura to trace the shadows of stationary objects projected through small apertures into dark spaces.5 In the sixteenth century Michelangelo used a somewhat similar technology by first rendering sculptures in easily manipulated wax models which he placed in a cistern. The descending plane of water resulting from gradually draining the cistern allowed him to calculate precisely the dimensions of the emerging model. Using this information, he could more readily and accurately replicate the wax model in less-malleable stone.6 It has always been easier to replicate two- than three-dimensional artifacts. Accordingly, given the accessibility of 2D copying technologies, and their capacity to produce copies indistinguishable from originals, three-dimensional holograms are now embedded within once purely two-dimensional passports, paper currency, credit cards, etc. Recasting such valuable two-dimensional information into three dimensions, makes illicit copying of it more difficult. The value of tangible objects, like music scores, audio recordings, and literary works, also lies mostly, or entirely, in the information they contain. Because their information is readily copied, owners of these objects increasingly control access to them using watermarks and 3D holograms.7 For thousands of years casting has been used both to create and replicate sculptural works. Creators of wax models would encase these works in clay to create molds which they would fill with molten bronze or other metal. They could also, in turn, make a copy of the resulting artifact by creating a clay mold of it, which could likewise be filled with metal, or another molten material like glass, to produce objects with an identical shape. There are two significant limitations to copying three-dimensional works by casting: first, it requires potentially damaging physical contact with the copied object; and second, casting cannot capture colors and textures of the object. Because of the first, one cannot use casting to make copies of delicate or finely articulated works like metal funerary wreaths or objects whose surface materials would be damaged by contact with wet clay. Similarly, death masks and similarly macabre relics have been typically cast from bodies of deceased individuals given the potential discomfort to, and need for rigidity of, the model. The fact that casting cannot capture color, veining, patina, etc. does not significantly affect the value of copies of cultural artifacts when these aspects of the original work are insignificant, or when they are not particularly relevant to the purpose for which the copy is intended. In the eighteenth and nineteenth centuries, producers of thousands of casts of Italian and Greek Classical statuary did not intend these to substitute for, or pass off as, the originals.8 They intended only to replicate their shapes, which were regarded as the most valuable attribute of these objects and were used for pedagogical purposes as well as aesthetic delectation. 3D scan and print technologies have largely overcome the limitations of casting in producing copies of three-dimensional cultural artifacts. 3D scanners record the speed at which See Picturing Machines 1400–1700 (Wolfgang Lefevre ed., 2004). See Giorgio Vasari, The Lives of the Artists (Julia Conway Bondanella trans., Oxford University Press 2008). 7 See Kim, Chol-Su, et al., Document Watermarking Based on Digital Holographic Principle (2013). Available at https://​arxiv​.org/​abs/​1306​.5066. 8 See Lisa Hargrove, et al., The History of Plaster Casts, George Mason University History & Art History Department,  http://​chnm​.gmu​.edu/​courses/​mattusch/​plaster/​index​_files. See also Pamela Born, Canon is Cast: Plaster Casts in American Museum and University Collections, 21 J. Art Libr. Soc’y N. Am. 8, 9–10 (2002) (noting the decline in appeal of plaster casts in the twentieth century). 5 6

568  Research handbook on intellectual property and cultural heritage a laser beam is reflected from infinitesimally graduated increments across the surface of an object. From this data one can assemble a ‘polygon mesh’, the digital equivalent of a wire three-dimensional model of the external surfaces of an object. 9 A ‘printer’ can then build a three-dimensional replica of the object, through additive manufacture involving spraying layers of polymer, or another material in a liquid state, following the contours of the virtual model. The same model can be used for subtractive manufacture, in which a machine reading the scan data removes portions of existing solid material, like a block of marble or wood, to produce an object with the same shape as the model. 3D scans do not capture color or other two-dimensional information on the surface of a scanned object. However, one can replicate accurately the colors and reflective quality of surfaces using color sampling technology. Deploying both technologies, it is increasingly possible to produce copies of three-dimensional objects that are indistinguishable from the originals. Unlike molds of clay, iron, etc., used for casting copies, scan data used to produce digital models is intangible information that can be easily copied and distributed without cost. Moreover, whereas casting molds are not readily amenable to alteration, one can handily manipulate digital polygon meshes and the scan data from which they are built to produce models and tangible copies whose shapes diverge from those of the scanned originals. One could, for instance, manipulate the scan data of a statue of Ganesh, replacing its elephant head with that of another animal or human, or by removing some of its numerous arms that give the work an uncanny aspect. Owners and conservators of three-dimensional cultural artifacts have always made copies of them for economic gain, scholarship and pedagogy, and their public dissemination. Because 3D scanning typically involves no contact with an object other than that of a beam of light, it is vastly preferable to casting, particularly for delicate objects. Not only does it allow one to copy highly faceted and frangible works not tractable to casting, but also simultaneously to obtain quantitative information providing new insights into artists’ design and creation of these objects.

3.

3D PRINTING OF CULTURAL ARTIFACTS AND INTELLECTUAL PROPERTY PROTECTION

The universe of ‘cultural heritage’ is enormous, extending to virtually anything representing human intellection: language, cuisine, dance, costume, music, visual art, etc. The most prominent disputes over ownership of artifacts of cultural heritage have involved works of visual art. More recently, however, we have witnessed what hitherto would have been considered extravagantly attenuated allegations of misappropriation of cultural heritage of a population, nation, or religion. Such allegations have targeted, for instance: an Asian actor’s use of language and gestures associated with African-Americans (‘blaccent’); an American liberal arts college

9 See Paolo Cignoni & Roberto Scopigno, Sampled 3D Models for CH Applications: A Viable and Enabling New Medium or Just a Technological Exercise?, 1 Ass’n for Computing Machinery J. on Computing & Cultural Heritage Art. 2, at 1–2 (June 2008).

Intellectual property implications of 3D printing of cultural heritage  569 dining hall’s serving Asian cuisine; and the fashion industry’s employing textiles, apparel, and even hair styles, purportedly influenced by those associated with a particular population.10 It is almost impossible to prevent or curtail copying, or imitation, of a population’s language, cuisine, performing arts, etc., because these artifacts are essentially information and knowledge, independent of any physical reification by identifiable creators, and which cannot be owned as chattel. The physicality of three-dimensional works has made it easier to control copying them because their creators are typically more readily identifiable than those of more purely informational works, and also because of available physical and legal constraints on access to them. 3D scan technology, however, has undermined this control by enabling the capture of intangible information about tangible cultural artifacts by which one can reproduce them. Application of 3D technologies to the reproduction of three-dimensional cultural property artifacts implies two fundamental questions relating to intellectual property: 1. What, if any, IP protection attaches to the original artifacts themselves? 2. What, if any, IP protection applies to 3D scan data, and ‘prints’ they may generate, of the artifacts? Like answers to most questions involving the application of law, the most accurate, if least immediately satisfying, response to each of these questions is: ‘it depends’. Let us consider what it depends upon. Copyright Protection for 3D Cultural Artifacts Disputes over ownership of artifacts of cultural heritage that are no longer within a claimant nation’s borders typically involve objects created hundreds, if not thousands, of years ago. In fact, the national significance ascribed to these artifacts often correlates to their age. The venerable ages of the Parthenon/Elgin Marbles, the Stone of Scone, and the Headdress of Moctezuma II, for instance, undergird the national import ascribed to these objects.11 Paradoxically, the greater an object’s age, the less legitimate may be claims of national ownership grounded on its significance to those currently inhabiting the location in which it was created or found. Moreover, the older the object the less likely copyright, or even related moral rights, might protect it. Accordingly, whereas copyright has never protected universally known sculptural works of anonymous creation like Winged Victory, or Michelangelo’s David, it may still protect relatively unknown three-dimensional works created by Alberto Giacometti, Constantin Brâncuși, and Henry Moore in the middle of the twentieth century. The public domain status of an enormous number of epochal cultural artifacts is an inconvenient fact for governments and public institutions wishing to capitalize financially on their

10 See Mark Tseng-Putterman, One Way That “Crazy Rich Asians” is a Step Backward, The Atlantic (Aug. 23, 2018); Justin Moyer, Oberlin College Sushi “Disrespectful” to Japanese, Wash. Post (Dec. 21, 2015); Michelle Malkin, Why Aren’t The PC Police Outraged at the Met Gala’s Catholic Cosplay?, National Review (May 9, 2018). 11 See Warwick Rodwell, et al., The Coronation Chair and Stone of Scone: History, Archaeology and Conservation (2013); Marta Martinez & Jorge Dastis, Mexico’s First Lady Embarks on “Impossible” Mission in Austria to Retrieve Headdress of Aztec King, euronews. (Oct. 14, 2020).

570  Research handbook on intellectual property and cultural heritage ownership by controlling access to, and copying of, these objects. Fearing the financial consequences of the accessibility and efficacy of copying technologies like 3D scanning, some governments have proposed and enacted legislation and regulations providing sui generis copy protection for these artifacts. In 2007, government officials in Egypt, for instance, irked by the fact that Las Vegas’s pyramid-shaped Luxor Hotel garnered more tourist dollars than the ancient city of Luxor, proposed legislation that would require anyone who makes copies of their country’s monuments and antiquities to make royalty payments to Egypt.12 France obliquely capitalizes on its iconic buildings and monuments like the Louvre and the Eiffel Tower. Anyone who, with commercial intentions, captures I.M. Pei’s glass pyramid while filming the Louvre’s exterior, or who films the Eiffel Tower while it is illuminated with a sparkling light show, must obtain authorization from, and pay royalties to, the City of Paris and the Musée du Louvre, respectively.13 While the Egyptian legislative proposal may have been merely a demonstration of political grandstanding, Italy has enacted a Code of Cultural Heritage and Landscape authorizing officials charged with care of antiquities and other cultural artifacts to establish and collect fees from anyone who copies these public domain works for commercial purposes.14 This economically motivated legislation, conflicting with Italian and international copyright law,15 limits replication of works like Michelangelo’s David, and antiquities in Italy that have been in the public domain for centuries, if not millennia.16

12 See Martin Godwin, Egypt to Copyright the Pyramids and Antiquities, The Guardian, Dec. 27, 2007. 13 See The Eiffel Tower Image, https://​www​.toureiffel​.paris/​en/​business/​use​-image​-of​-eiffel​-tower; Musée du Louvre Visitor Regulations, https://​www​.louvre​.fr/​sites/​default/​files/​medias/​medias​_fichiers/​ fichiers/​PDF/​louvre​-visitor​-regulations​.pdf 14 See Codice dei beni culturali e del paesaggio, Art. 108, Gazz. Uff., Feb. 24, 2004. 15 Like those of other European Union nations and the United States, Italian copyright law provides protection of a work for 70 years following the death of its author. See Protection of Copyright and Other Rights Related to its Exercise, Law 22 April 1941, No. 633 (modified 2010), available at https://​wipolex​ .wipo​.int/​en/​text/​477618. 16 Institutional owners of these works have attempted to bolster the legitimacy of such overreaching authority by conflating it with copyright. See Elisabetta Povoledo, A High-Tech Twin for a Renaissance Masterpiece, N.Y. Times, Oct. 2, 2020, at A10. Povoledo reports that Cecilie Hollberg, the director of the Galleria dell’Accademia that houses the original David, “won a copyright battle over the statue in 2017.” Hollberg, born and educated in Germany, abruptly left her position in 2019, in what was widely perceived as the ouster of a foreigner by the increasingly nationalist Italian government. See Alex Greenberger, In Sign of Cooling Nationalist Spirit in Italy, German-Born Director of Florence’s Galleria dell’Accademia Will Return, ARTnews (Jan. 29, 2020) available at https://​www​.artnews​.com/​art​-news/​ news/​cecilie​-hollberg​-galleria​-dell​-accademia​-director​-returning​-1202676525/​. Hollberg was eventually reinstated at the Galleria, but perhaps because of this undoubtedly singeing experience she has not responded to this writer’s inquiries seeking further information on the Galleria’s position on copyright and the original David, and the significance, and use, of Stanford University’s 3D data in the creation of the 3D print of the statue produced as Italy’s contribution to the 2021 World Expo in Dubai. See infra, note 28 and accompanying text. Italy’s display of David was widely condemned as a disgraceful embarrassment given that the public could only view the upper portion of the statue, the lower portion hidden, ostensibly not to offend the sensibilities of Muslim men. See Rory Jones & Giovanni Legorano, World’s Fair Offers a New View of Michelangelo’s ‘David’: Just His Head, Wall Street Journal (Oct. 15, 2021).

Intellectual property implications of 3D printing of cultural heritage  571 Copyright Protection for 3D Scans, and Copies Generated from Them Like black and white photographs of colored images, 3D scan data might not capture, and enable the replication of, all aspects of the copied originals. Like black and white photographs, however, to the extent they provide information from which we readily identify the originals, we consider 3D scan data copies of them. Accordingly, before I scan a copyrighted sculpture by Henry Moore, I would need to obtain authorization from his estate, which owns the copyright.17 My intangible scan data is a copy of the Moore bronze, as is a tangible miniature version manufactured from the data and rendered in white plastic. If I colored the plastic copy in whimsical hues, I might have created a derivative work, authorization to do so I would also have to obtain from Moore’s estate. Any protection I might obtain in my chromatic copy would be scant, if any, and extend only to my particular arrangement of colors in this context. Copyright adhering to an authorized 3D scan of a copyrighted sculpture by Henry Moore would be limited to the protectable expression of Moore’s original. This is true unless the scan data was deliberately altered to produce a work whose appearance deviates from that of Moore’s. And only if the data alteration were so extensive that Moore’s original expression is not readily discernible in the resulting work might the altered scan be deemed an original work, and not derivative, or a copy, of Moore’s. On the other hand, if the scan data were tweaked to allow a more exact rendering of the sculpture than one produced from unmodified data, the modified scan would obtain no copyright protection beyond that of the physical sculpture. In Meshwerks v. Toyota, a 2008 United States case, Toyota hired the plaintiff to scan its automobiles, and to create digital models of them to be used in developing advertisements.18 Toyota used these digital wire-frame models more extensively than anticipated by Meshwerks, who then claimed Toyota infringed the copyright protecting its authorship of the models. The appeals court, however, ultimately determined that the purported hundreds of hours Meshwerks alleged it had invested in refining the scanned data did not support its copyright claim. Meshwerks’ goal – which was established, and paid for, by Toyota – was to tinker with the scan data to produce the most exact copy possible of the shape of Toyota’s automobiles. Therefore, and paradoxically, the greater Meshwerks’ effort to replicate the exact appearance of Toyota’s automobiles, the less likely its scan data and polygon models would contain protectable expression independent from that of the automobiles. Accordingly, at least in the United States, similar efforts to replicate public domain three-dimensional objects using 3D scan data would produce no copyrightable original expression. Despite the expertise and labor required to gather it, the data would evince no ‘spark’ of creativity on the part of those obtaining the information; 19 in fact, evidence of a ‘spark’, or more, of the personal imprint of the gatherer, in prints produced from the data, would likely only diminish its economic value.

17 See Henry Moore Foundation, Licensing and Reproduction, https://​www​.henry​-moore​.org/​ archives​-and​-library/​henry​-moore​-images/​licensing​-and​-reproduction​# 18 Meshwerks, Inc. v. Toyota Motor Sales U.S.A., 528 F.3d 1258 (10th Cir. 2008). 19 See Feist Pub., Inc. v. Rural Telephone. Service., Inc., 488 U.S. 340 (1991) (determining that the purpose of copyright is to encourage creative expression as evidenced by at least a ‘spark’ of originality, and not to reward ‘sweat of the brow’ efforts in collecting unprotectable factual information).

572  Research handbook on intellectual property and cultural heritage Certain other national copyright regimes promulgate a broader conception of original protectable expression than that of the United States, which may extend to works produced entirely from the application of human expertise and labor. In 2000, in the ‘Dead Sea Scrolls’ case, for instance, Israel’s Supreme Court determined that Elisha Qimron’s reconstruction of a 2,000-year-old text constituted original protectable expression.20 The Court justified this determination, observing that “Qimron’s work was not technical, ‘mechanical’, like simple labour which result is pre-known.”21 Five years later, in a somewhat factually similar English case, Hyperion Records v. Sawkins, an appeals court upheld the lower court’s determination that a new edition of a public domain musical work contained original copyrightable expression.22 Lionel Sawkins’ goal was akin to Qimron’s: to produce a visual document from which contemporary musicians could read and perform Baroque-era works not yet broadly accessible in perceptible copies. Qimron’s work was akin to that of assembling the pieces of a jigsaw puzzle containing the complete expression of a visual work. The greater the number of pieces, the more challenging it is to assemble them into meaningful expression. However, whereas Qimron’s ‘puzzle’ comprised only verbal text, Sawkins’ involved numerous elements associated with both reading and performing music scores: melody, harmony, rhythm, instrumentation, ornamentation, etc. Sawkins’ public domain sources contained the structurally essential elements of melody and rhythm, but other ‘pieces’ of the scores that he ‘puzzled’ were missing. Like a chagrinned puzzler who ruefully substitutes rough approximations for missing pieces, Sawkins added additional musical information in the style of the original author, which performers executed in the defendant’s unauthorized recordings. Sawkins hoped his additions would result in performances of the works which matched the sound of those heard centuries earlier. Because there was no extant documentation by which to confirm the match, however, the court determined Sawkins’ additions must be considered original expression. Therefore, whether, and to what extent, 3D scan data and prints of public domain works may be copyrightable, devolves to the issue of originality. There has been no consensus among European Union member states as to the threshold of originality for copyright eligibility.23 Courts in Germany, for example, have conditioned originality on a relatively high degree of authorial creativity, whereas those in England have deemed original certain works produced entirely by “sweat of the brow.”24 In recent years, however, there has been increased harmonization among European Union members’ standards of originality, emerging from decisions

See Eisenmann v. Qimron, 54(3) P.D. 817 (Sup. Ct. Isr.) (2000). Id. Michael Birnhack has argued that the Israel Supreme Court erred in its interpretation of the requirement of originality, which requires not only that the expression demonstrates investment of human intellection, but also that it originates from the claiming author. Qimron invested intellectual effort in his reconstruction, but the reconstructed work obviously did not originate with him. See Michael Birnhack, The Dead Sea Scrolls Case – Who is an Author?, 23(3) E.I.P.R., 128 (2001), available at SSRN: https://​ ssrn​.com/​abstract​=​905114. 22 See Hyperion Records, Ltd. v. Lionel Sawkins, [2005] 3 All E.R. 636 (CA). 23 See Thomas Margoni, The Digitization of Cultural Heritage: Originality, Derivative Works and (non) Original Photographs, available at: https://​ssrn​.com/​abstract​=​2573104. 24 See id at 16. On the other hand, Section 71 of the German Copyright Act provides copyright protection for 25 years to previously unpublished public domain works. Urheberrechtsgesetz [Copyright Act] Act of Sept. 9, 1965, available at German Law Archive, https://​germanlawarchive​.iuscomp​.org/​?p​ =​855​#17. 20 21

Intellectual property implications of 3D printing of cultural heritage  573 of the Court of Justice of the European Union turning on this issue. Thomas Margoni has summarized the CJEU copyright originality standard requirements: 1. The expression is the “author’s own intellectual creation;” 2. The author can exercise free and creative choices and put their personal stamp on the work; 3. The expression is not determined by technical rules as when, for instance, there is only one way to express an idea, leaving no space for free and creative choices.25 3D scan data of public domain artifacts meet none of these requirements and could not satisfy the CJEU originality standard any more than they could the ‘creative spark’ threshold of originality in the United States. Neither the scanned work, nor the scan data itself, is the human scanner’s intellectual creation; the scanner’s goal is to avoid making creative choices resulting in any deviation from the underlying work, by which he might be identified; and any ‘expression’ in the scan data itself is determined entirely by the efficacy of scanning hardware and software technologies. Controlling Access to 3D Scans of Public Domain Cultural Works Copies of public domain cultural artifacts imply both economic opportunity and risk for owners of the originals. The economic value of a cultural artifact correlates to the degree to which it is known and appreciated. Accordingly, the monetary valuation of Leonardo’s Mona Lisa is undoubtedly higher than that of his arguably greater, but less universally known and copied, Saint Anne, hanging in an adjacent gallery at the Louvre. Because Mona Lisa is so widely known, the economic potential of copies of it is also greater than that of copies of Saint Anne. However, because Mona Lisa is universally known, the Louvre, has less, if any, ability to monopolize the market for copies of the painting, than it does for copies of the lesser-known Saint Anne. 3D scan/print technologies also imply both increased economic opportunity and risk for owners, particularly institutional, of public domain cultural artifacts. They want to profit from the sale and licensing of copies of these three-dimensional artifacts, the production of which these technologies facilitate. Unlike plaster molds once used to produce copies, however, intangible 3D scan data is easily disseminated and copied. Accordingly, if no copyright protection adheres to the scan data, anyone who legally acquires it without contractual limitations may use it for any lawful purpose. While the mission of public cultural and educational institutions with growing archives of such data is the preservation and dissemination of cultural objects and information and knowledge associated with them, these institutions have been skittish about providing open access to their 3D scan data. Berlin’s Neues Museum, for instance, initially balked at releasing its high-resolution scan of its Bust of Nefertiti. The Baltimore Museum of Art and the Musée

25 See Margoni, supra note 23 at 14. See also, Directive (EU) of the European Parliament and of the Council of 17 April 2019 on Copyright and Related Rights in the Digital Single Market and Amending Directives 96/9/EC and 2001/29/EC, https://​eur​-lex​.europa​.eu/​legal​-content/​EN/​TXT/​HTML/​?uri​=​ CELEX:​32019L0790​&​from​=​EN​#d1e1344​-92​-1 (“providing for rules to adapt certain exceptions and limitations to copyright and related rights to digital and cross-border environments, as well as for measures to facilitate certain licensing practices … as regards the dissemination of out-of-commerce works…”).

574  Research handbook on intellectual property and cultural heritage Rodin have rebuffed requests to make publicly available their 3D scan data of public domain sculptures despite, in the case of the Baltimore Museum, initially and enthusiastically declaring an intention to do so.26 Even Stanford University, which ostensibly espouses the promotion of unfettered dissemination of cultural information and knowledge,27 has limited access to its ‘Michelangelo Project’ 3D scan data. In 1997 Stanford sponsored the work of faculty and students to obtain high-resolution scans of public domain works including Michelangelo’s David. Despite the fact that neither the scanned works nor the scan data contain copyrightable expression, Stanford’s administration has condoned Marc Levoy’s control over access to the university’s project data. Levoy, a retired member of its computer science faculty who was involved with the project, administers access to it based on his opinion of the bona fides of requestors.28 Public and private institutional owners of 3D scan data of public domain cultural artifacts have justified recalcitrance in making this information freely available on economic and moral grounds. The Musée Rodin, for instance, claims that unfettered access to its 3D scan data could result in a proliferation of ‘forgeries’ with deleterious economic consequences for owners of ‘originals’.29 According to the Musée, only the first 12 casts – that it alone may authorize – of Rodin sculptures are ‘originals’. But bronze casting produces indistinguishable copies of sculptural works. Discriminating between originals and copies is sophistry; the twelfth cast is no more original than the thirteenth. 3D scan/print technologies’ potential to enable production of copies of cultural artifacts that are indistinguishable from the originals may ultimately lessen the economic value of the originals, just as the technology enabling production of cultured pearls decreased the economic worth of naturally occurring ones. Naturally occurring pearls are materially identical to cultured ones; only their scarcity distinguishes them from the cultured variety. The technology to produce cultured pearls did not lessen the appeal of this gem. In fact, it likely broadened it insofar as it made it more accessible. The same is true for high-quality copies of cultural artifacts manufactured from 3D scan data. The copies will diminish the rarity, and associated economic value, of the tangible originals, but will not lessen, and may actually broaden, the aesthetic or cultural significance of the artifacts as intangible works of human expression. The moral rights justifications offered by those who limit access to 3D scan data of public domain works, which they control, are as specious as justifications based on potential economic harm. Moral rights pretexts, like those claimed by the Musée Rodin, are typically couched in rhetoric about protecting the reputation of the artist, and the interests of the (undis-

26 Cosmo Wenman, an artist and advocate for public access to the scan data of these and other works, has chronicled and documented his efforts at https://​cosmowenman​.com/​. 27 See Stanford University Founding Grant, https://​purl​.stanford​.edu/​bz978md4965. 28 See Marc Levoy, The Digital Michelangelo Project, https://​accademia​.stanford​.edu/​data/​dmich​ -public/​. Levoy has refused requests by this author and others that he disclose the terms of the agreement he entered into with Italian government officials. Neither Stanford’s General Counsel, Debra Zumwalt, nor Yi-An Chen, whom Zumwalt tasked with handling my inquiries, would share information about this agreement. Nor would they respond to my inquiries about ownership of what I assume is an institutional work, or the university’s policies on whether, and the extent to which, faculty members are authorized to enter contracts that bind the university’s use of its intellectual property. 29 See Musée Rodin, Respecting Moral Rights, https://​www​.musee​-rodin​.fr/​en/​professionnals/​ respecting​-Rodins​-moral​-right

Intellectual property implications of 3D printing of cultural heritage  575 cerning) public by curtailing its exposure to spurious works and reproductions. Or they might be based upon pieties about accommodating the sensitive collective psyche of a particular population. Along with his list of daunting prerequisites for access to – and limitations on use of – Stanford’s Michelangelo Project data, Marc Levoy exhorts those to whom he grants access “to keep renderings and use of the data in good taste” because the artifacts in question “are the proud artistic patrimony of Italy.”30 The integrity of tangible cultural artifacts, and the reputations of their creators, are no more fragile than those of intangible works of music, literature, poetry, dance, etc., and their authors. Les Ballets Trockadero’s en travesti send-ups of Giselle, Le Lac de cygnes, etc., are only fully appreciated by those who know and love the legitimate choreography of these ballets.31 Peter Schickele’s (P.D.Q. Bach) irreverent riffs on works of J.S. Bach and other Baroque-era musicians only underscore the admiration of Schickele and his audiences, including those in Bach’s native Germany, of the works he spoofs.32 The innumerable caricatures, outrageous adaptations, and appalling productions of Shakespeare’s dramas have in no way diminished their integrity or the universal admiration of the genius of their author. Likewise, while some may find accessorizing a copy of Michelangelo’s David with a Speedo swimsuit and pair of sunglasses, or even a machine gun, to be in poor taste, doing so does not affect the integrity of David, or the reputation of his creator or the population that happens to live in the area where Michelangelo worked hundreds of years ago. In 1972, when the mentally disturbed Laszlo Toth vandalized the Vatican’s Pietà, he compromised the integrity of Michelangelo’s original sculpture. But because there are innumerable copies of this Pietà, some virtually indistinguishable from the original, he could not compromise Michelangelo’s transcendent genius, which can be fully conveyed in replications of this work.

4.

3D TECHNOLOGY AS AN AGENT FOR PRESERVATION AND DISSEMINATION OF CULTURAL ARTIFACTS

The economic values we ascribe to cultural artifacts fall along a continuum, on one end of which the value is determined mainly by the physical material of the artifact, and on the other end by the artifacts’ intangible evidence of human intellection. The value of a tennis bracelet is generated mainly by the precious metal and diamonds assembled within a simple circular band, whereas the value of a cancer pharmaceutical lies overwhelmingly in the intellectual investment in the skillful combination of material substances of relatively insignificant value. Of course, the value of many cultural objects, like Benvenuto Cellini’s gold Saliera, is determined by a blend of their material and intangible attributes. As previously mentioned, cultured pearls are an example of how the development of technologies that enable the creation and production of cultural artifacts also affects the placement along this continuum of the value we ascribe to them. Before the invention of the printing press, the value of literary and musical works was more closely allied to handwritten copies of them. As technologies made it easier and cheaper to copy and distribute these works, the locus

See Levoy, supra note 28. See Les Ballets Trockadero de Monte Carlo, https://​trockadero​.org/​. 32 See Peter Schickele, https://​www​.schickele​.com/​wp/​. 30 31

576  Research handbook on intellectual property and cultural heritage of their value shifted away from the physical objects in which they were fixed, and towards the intangible human expression they reify.33 Technologies facilitating creation and reproduction of, and access to, cultural works are double-edged swords. Word processing, and digital access to fathomless verbal information on the web, for instance, have promoted plagiarism and production of virtual mountains of worthless prose. But they have also made it easier to dodge grammatical and typographical errors, and to locate sources of authoritative information far more efficiently than one might in an analog environment. Digital technologies allow us to unshackle human intellection of cultural artifacts from the tangible objects in which it is fixed. Works of visual art have long been regarded as intellectually and spiritually inferior to literature, poetry, choreography, and music because their meaning and appeal depend more heavily on the materials in which they are rendered. By capturing precise information about the choices of visual artists – colors, shapes, textures, etc. – 3D and other digital technologies allow their works to approach what art critic Walter Pater identified as the aspiration of all genres of art: “the condition of music.”34 3D and other digital technologies enable production of increasingly precise copies of visual works, as well as derivative works in which information about existing works may be altered or combined. This capacity disconcerts owners of original works who fear these technologies may abet production of forgeries, counterfeits, and other works they consider derogations of the originals. Counterfeit Hermès bags, Chanel fragrances, and Pfizer pharmaceuticals are illegal not only because they may infringe intellectual property rights but also because consumers may not realize that they are inferior to, or less efficacious than, authorized articles. 3D copies of public domain bronzes, on the other hand, do not infringe any intellectual property or moral rights. Only their economic values may be inferior to those of the originals, and these disparities stem from financial motivations of owners. Like haute couture, and markets of other discretionary goods accessible only to wealthy consumers, the art market has long been viewed as rank with humbug and chicanery.35 Underlying sanctimonious authentications, provenance reports, and catalogues raisonnés, propounded as promoting an ethical market, is financial greed, and the preservation of value through attributes of scarcity and exclusivity. By challenging, and at times overcoming, such efforts to maintain scarcity and exclusivity, those creating copies, forgeries, and counterfeits reveal how hollow a base these attributes provide for the monetary values ascribed to tangible cultural works. In the early twenty-first century, experts and seasoned collectors believed paintings by Pei-Shen Qian, an obscure Chinese artist eking out a living in New York’s Times Square, were created by Mark Rothko,

33 Paradoxically, simultaneous with the development of technologies that allow production of increasingly accurate copies of cultural artifacts, has been heightened preoccupation with protecting the originals. The Bust of Nefertiti, Michelangelo’s Pietà, the Mona Lisa, and other iconic works, once more immediately accessible to viewers, are now housed in glass cases, and with extravagant concern for the air, light, and sound of their immediate environments. 34 Walter Pater, The Renaissance Studies in Art and Poetry 86 (1986). 35 See, e.g., Robins v. Zwirner, 713 F. Supp. 2d 367 (S.D.N.Y. 2010) (describing the art market as “a realm of self-proclaimed royalty full of ‘blacklists,’ ‘greylists,’ and astonishing chicanery”).

Intellectual property implications of 3D printing of cultural heritage  577 Jackson Pollock, and other well-known Abstract Impressionists.36 They were identified as forgeries, not by the visual perceptions of their sellers and buyers – which were overwhelmingly favorable until the works were deemed fake – but by chemical analysis of the paint pigment Qian used.37 The fact that Jackson Pollock practiced a particular style before Qian does not render Pollock’s works more aesthetically significant.38 Moreover, if experts cannot distinguish between works by Qian and Pollock, rendered in essentially the same materials, there should be no difference between the economic value of works created for visual delectation. An analogy to works of literary or performing arts again underscores this view. Generally accepted additions to the known oeuvres of Mozart, Beethoven, and other towering musicians are extremely rare.39 There have been relatively few attempts to pass off spurious works as those of Mozart et al. because it is so difficult to do so. Every professional classical musician could distinguish between a concerto by Mozart and one written in Mozart’s style. That is because they can evaluate the works almost entirely on their intangible merits, quite apart from their manifestations in particular scores or performances. In the 1980s Josua Bruyn, a founder of the Rembrandt Research Project, claimed Rembrandt did not paint The Polish Rider, one of the Frick Collection’s prized works.40 In response to this allegation – subsequently widely dismissed by other Rembrandt experts – one critic suggested that to change one’s admiration of, and affection for, the painting based on a cloud placed on its authorship by two self-anointed judges is “…never to have truly loved it in the first place. Such a viewer has been enamored of a name, nothing more.”41 The same is true of copies of works of visual art, the creators of the originals who intended them to be appreciated almost entirely through human vision. If human eyes cannot differentiate between the original and a copy of a work of visual art, the only justifiable differentiation in their economic value should be based upon the quality of the tangible materials in which they are rendered.42 By enabling the separation of the intellectual expression of cultural artifacts from the tangible media in which it is fixed, 3D technologies promote appreciation of these works based 36 See Sara Maslin Nir, et al., Struggling Immigrant Artist Tied to $80 million New York Fraud, N.Y. Times (Aug. 17, 2013), at A1. 37 See Susan Moore, Made You Look – A True Crime Doc that Should Terrify Art Collectors, Apollo (March 16, 2021), available at https://​www​.apollo​-magazine​.com/​made​-you​-look​-documentary​ -knoedler​-forgery​-case/​. 38 The fact that this hitherto unknown artist created not copies, but convincing original works in the style of Pollock et al. should lead us to question the aesthetic significance we ascribe to works produced by Pollock and other artists of highly priced abstract works. 39 But not unheard of… In 2018 the Mozarteum Foundation purchased the autograph manuscript of a previously unknown work – a brief Allegro for piano Mozart wrote when he was 17. See Katharina Rabillon, Previously Unknown Mozart Piece Enthuses Mozart Week, euronews. (April 2, 2021) available at https://​www​.euronews​.com/​2021/​01/​28/​previously​-unknown​-mozart​-masterpiece​-premieres​-at​ -mozart​-week. 40 See Joseph Alsop, The Faker’s Art, New York Review (Oct. 23, 1986) available at https://​www​ -nybooks​-com​.ccl​.idm​.oclc​.org/​articles/​1986/​10/​23/​the​-fakers​-art/​. 41 James Gardner, Culture or Trash 15 (1993). 42 The same is true for literary and musical works. Editions of works by Shakespeare or Bach may vary in value based upon the work of their editors. But to the extent they accurately impart the original expression of their authors, they are distinguishable only by the quality of presentation – i.e., paper, print, layout, binding, etc.

578  Research handbook on intellectual property and cultural heritage on their merit alone, and not their authorship, provenance, rarity, and other attributes associated with art market artifice. The dematerialization and distribution made possible by these technologies might also alleviate disputes over authorship and ownership of these works by individuals, institutions, governments, and populations. The more widely a work is distributed and appreciated, the more it may be perceived as an object of world heritage, like naturally occurring wonders that are accessible to everyone.

Conclusion to the Research Handbook on Intellectual Property and Cultural Heritage: Important highlights Irini Stamatoudi

When I first conceived the idea of a Research Handbook on Intellectual Property and Cultural Heritage, I had in mind two things: (a) the complexity of the subject, i.e., the intersection between intellectual property (IP) and cultural heritage (CH), which has been further stretched by the rapid evolution of new technologies and the pandemic; and (b) the scarcity of the academic materials in this particular area. In the past, in an attempt to simplify things, one would delineate the two fields by saying that where IP ends, CH starts. This book proves that this is not necessarily the case, especially by reason of the all-encompassing, multi-natured (tangible and intangible), multifaced, loaded and broad at the same time, as well as continuously expanding notion of culture. The first part of the book explored the extent to which cultural heritage may be protected by IP rights, such as copyright and related rights, trademarks, patents, designs, trade secrets, as well as by unfair competition law. In order for one to comprehend the convergences and divergences (or, better, frictions) between the two fields, i.e., IP and CH, one needs to have a general overview of the two concepts; this formed the subject of Chapter 1 (Irini Stamatoudi). The analysis in Part I demonstrated how aspects of cultural heritage are commodified and move from the sphere of ‘public good’ to propertization as well as how propertization does not aim necessarily at commercialization – as one would expect – but rather works (in certain cases) as a means of further and more substantiated CH protection. Examples in copyright are the preservation of the public domain and the prevention of hurdles to access it; issues pertaining to the digitization and reproduction of works of cultural heritage that are still in copyright, and moral rights protection, which – in those countries where moral rights are perpetual and pass to the heirs or even to the state – may become the ‘copyright’ tool to protect cultural heritage (Chapter 2 – Paul Torremans). Trademark law may also work as a means for indigenous and local communities to preserve their interests. As Mira Burri (Chapter 3) puts it: there is a fine line between the commercialization through the branding of cultural heritage and the real support of cultural identities of indigenous and other disempowered groups,1 but trademark law can be well adapted to reflect better the concerns of source communities and empower them to “claim themselves as subjects of property […] rather than as mere objects, or someone else’s property”.2

1 Susy Frankel, “Branding Indigenous Peoples’ Traditional Knowledge”, in Andrew T. Kenyon, Ng-Loy Wee Loon and Megan Richardson (eds), The Law of Reputation and Brands in the Asia Pacific (Cambridge: Cambridge University Press, 2012), 253–267. 2 With references as set out in the relevant chapter.

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580  Research handbook on intellectual property and cultural heritage With regards to patents, Pedro Batista (Chapter 4) analyzed if and to what extent traditional knowledge of indigenous and local communities can be protected (positive protection). The author concluded that patent law is not a suitable mechanism for protecting this knowledge. A sui generis protection in accordance with the Convention on Biological Diversity and its Nagoya Protocol is more appropriate. Nonetheless, the effectiveness of this protection can be guaranteed by mechanisms related to patent law. On the one hand, the existence of traditional knowledge may – under some circumstances – prevent third parties from obtaining exclusivity rights over this knowledge (defensive protection). On the other hand, the duty to disclose in the patent application that the rights related to genetic resources and traditional knowledge were duly observed by the applicant can contribute to greater transparency and facilitate the enforcement of these rights, which – among others – aim at protecting the cultural heritage. Bernd Justin Jütte and Alina Trapova (Chapter 5) explored the legal vehicle of designs. They came to the conclusion that design law seems ill-equipped to provide positive protection for intangible cultural heritage (ICH). Yet, according to the two authors, “[d]esign law foresees mechanisms that could prevent the abuse of traditional designs that deserve special protection. At the registration phase, but also by way of an invalidity claim, design law has the potential to function as a protective roadblock against a misappropriation of ICH.” Neethu Rajam and Jens Schovsbo (Chapter 6) looked at the diversity of cultural assets and how trade secrecy law (TS) could apply to each one of them. They then examined the inter-relationship of trade secrets with competition law and concluded by addressing the measures for enforcement and transferability of TS while safeguarding its traditional uses. They argue that “[d]espite its many limitations in regard to traditional knowledge (TK), the law of trade secrets offers a subtle, elaborate and traditionally familiar system that has the prospects of safeguarding indigenous cultural information in many of its forms.” With this chapter, Section 1 of Part I ends. Section 2 dealt with special issues cutting across IP and CH. In Chapter 7, Reto Hilty, Pedro Batista and Suelen Carls touched upon the issue of traditional knowledge, databases and prior art and the options for an effective defensive use of TK against undue patent granting. In fact, they analysed under which conditions TK can be considered as part of prior art and thus contribute to the defensive use of cultural heritage to avoid the undue patenting of inventions based on it. To this end, they examined the public accessibility of information and the specific configuration of the TK databases. They also addressed the option of extending the relevant prior art to include TK that is not publicly accessible, but only available within the relevant communities, so as to determine its effectiveness as well as its compatibility with international patent law. Chapter 8 (Marina Markellou) dealt with the re-evaluation of the art practice of ‘appropriation’ from a copyright law perspective. In fact, she “explore[d] the possibilities and pitfalls connected with the creative use of pre-existing artworks or other cultural or raw material with themes limited to appropriation, creativity, and collaborative practices”. Very close to those considerations is also Chapter 9 by Enrico Bonadio, who explored the preservation and heritagization of street art and graffiti. This chapter shed new light on these issues and brought IP to the streets. Marie-Christine Janssens, Arina Gorbatyuk and Sonsoles Pajares Rivas (Chapter 10) discussed the copyright issues on the use of images on the Internet. They noted that: While the supply of images on the internet is overwhelming, the web is a minefield for those who want to use such images without the risk of infringing copyright. Online images that are available online are significantly easier to copy, share, reproduce and store than their tangible equivalents. Nevertheless, copyright holders of digital works are essentially entitled to the same scope of rights

Conclusion  581 as their non-digital counterparts. This makes safeguarding copyright in the digital environment extremely challenging, yet ever so important.

Chapter 11 (Irini Stamatoudi and Zoi Mavroskoti) dived into the world of linking, framing, and browsing, acts that are nowadays commonplace on the internet, and discussed the requirements on the basis of which these acts are legal under EU law. Michael Blakeney (Chapter 12) dealt with the protection of traditional cultural expressions (TCEs) by geographical indications (GIs) and reached the conclusion that “[i]n the absence of international sui generis legislation to protect TCEs, it must be concluded that the protection of GIs for the tangible manifestations of folklore is a second-best solution”. Chapter 13 is the final chapter of Section 2 of Part I. Theodoros Chiou analysed the copyright ownership challenge arising from artificial intelligence (AI)-generated works of art, AI being “a generic term referring to the development of machines that are able, by appropriate programming, to learn and achieve decision-making and produce certain output, with limited or no human involvement”. He argued that the issue of copyright ownership primarily pinpoints towards a discussion about the future of copyright law. AI challenge shall thus be seen as an opportunity to globally reiterate and enhance the human-centric approach of copyright law, by prioritizing the satisfaction of human authors’ interests over the mere desirability of privatization of AI-generated works under any circumstances, so that copyright law remains author’s right in the 21st century and beyond.

Part II of the book focused on politics and policies associated with protecting cultural heritage by IPRs. Maria-Daphne Papadopoulou and Maria Sinanidou (Chapter 14) set out and discussed the extent to which a legislation may allow competent authorities, such as the Ministry of Culture, to classify IP materials as national cultural heritage. They refer to national experiences, including the Greek one. Peter Yu (Chapter 15) examined the intersection between IP, cultural heritage, and human rights. This is an interesting triangle since human rights cut across both areas of law (i.e., IP and CH), creating tensions and conflicts. Jessica Lai (Chapter 16) then critiqued that idea that there are best practices to protect Indigenous knowledge and argued that exsisting practices are a distraction from meaningful change. While Charlotte Waelde (Chapter 17) discussed the intersection between intangible cultural heritage, intellectual property, and the public domain. She reached the conclusion that: In its practical application, IP can be a useful tool for ICH communities pursuing commercial strategies in connection with manifestations of their ICH. Using IP in connection with Creative Commons licences, for example, can start to teach consumers and others that ICH communities do have rights in their works, reproductions of which cannot be copied and further disseminated without permission and payment – in other words, these manifestations are not in the public domain.

Andrzej Jakubowski and Hanna Schreiber (Chapter 18) dealt with the issue of bridging intellectual property and cultural heritage law in the practice of international governmental organizations (IGOs). They say that: The dynamic, complex, and constantly-evolving international law setting for the IP–CH relationship renders the achievement of consensus on universally accepted protective standards for individual and collective creativity nearly a “mission impossible”. This naturally affects the practice of the key IGOs in this field, as has been proven by the common WIPO–UNESCO endeavours. It is also true that these global IGOs, whose membership is almost entirely composed of sovereign states with often very different interests, may not offer ideal forums to address all the questions and challenges concerning the

582  Research handbook on intellectual property and cultural heritage IP–CH relationship. What is achievable, however, and what has already been accomplished due to the present-day regime complexity (and its inconsistency) at the global level, is the adoption of various solutions at local, national and regional levels – thanks to regional IGOs’ activity.

This is the final chapter of Part II. The last part (Part III) of the book focused on special issues for cultural institutions. It started with Chapter 19 on the artist’s resale right by Simon Stokes. The author explored the origins and scope of the artist’s resale right with a focus on the European Union’s Resale Right Directive and its application in the UK (one of the world’s largest and longest-established art markets), together with Australia (where the application of the right to Indigenous art is of particular concern). In Chapter 20 Stavroula Karapapa discussed the issue of digitization of cultural heritage under EU copyright. She noted that “[w]ith the Covid-19 pandemic having recently disrupted the traditional way of working, digital transformation of cultural heritage institutions has become more relevant than ever. Digitization of cultural heritage has benefits for education, enjoyment or re-use of copyright works, including use towards innovation and the development of new knowledge.” Pinar Oruç and Uma Suthersanen (Chapter 21) introduced us to the issues of IP and cultural heritage for museums of archaeological materials. They underlined that: it is not guaranteed that the museum collections will be free from IP issues: copyright in relation to the reports and recordings/copies, as well as any ensuing publication of books and articles or films depicting images of the site, artefact(s), and representative communities; confidentiality and fiduciary issues arising from the publication or communication of the sites or artefacts, ownership of the intellectual and intangible knowledge and the culture (and property) that arises from the archaeological research. Moreover, where IP rights are asserted, matters get obfuscated from other angles. Does the IP status of the heritage artefact dictate the intangible heritage status or vice versa? Are these recognised international IP rights or are the rights being asserted from a specific jurisdictional or cultural understanding? The incompatibility between IP laws and cultural heritage is more significant when it comes to the treatment of artefacts held in archaeological (and ethnographic) museums and Indigenous community claims. While digitisation is useful for preserving and giving access, it also creates a fresh set of issues in relation to ownership and the use of the digital surrogates.

In Chapter 22 Konstantinos Roussos and myself dive into the managerial aspects of a cultural heritage institution. As we pointed out: In a constantly changing world, where rapid transformations (economic, social, technological, environmental) occur, the cultural heritage (CH) sector, meaning any institution, organization or agency, private, public or semi-public, national, regional, international, governmental or non-governmental, as well as stakeholders, dealing with issues of cultural property/heritage,3 as a whole has become increasingly competitive and complex. As the 21st century advances and brings with it new unpredictable challenges, cultural heritage institutions (CHIs) as living organisms need to continuously reassess their role in society and reposition themselves more strongly and visibly in order to be more relevant and attain their mission. Since their role will become even more central in the coming years, they are moving away from traditional approaches by adopting more people-oriented perspectives. Their future must be designed in such a way to meet multiple challenges, such as considerable cuts of private or public funding, climate change, safeguarding public health, rise of the competitiveness

3 As to the notions of ‘cultural property’ and ‘cultural heritage’ see Irini Stamatoudi, Cultural Property Law and Restitution. A Commentary to International Conventions and European Union Law (Edward Elgar 2011) 4seq.

Conclusion  583 level, the increasing diversification of visitors’ interests and demands, the growth of digital technologies and their enormous impact on humans’ lives, etc. In this context, CHIs are called to successfully respond to the rapidly changing reality and act timely and effectively. They are called to deal with everyday challenges and needs as well as to manage risks and respond to opportunities. The recent pandemic has been a characteristic example in this respect. This, in a structured manner, can be addressed through cultural heritage management (CHM). CHM, as a growing sector, is the main vehicle for helping them to face these challenges and secure sustainable competitiveness.

Rina Elster Pantalony in Chapter 23 finishes up the puzzle of management by discussing the IP issues. According to Rina Pantalony: As technology developed, cultural heritage institutions continued their research and development, engaging in social media, with some mixed results, and intellectual property experts began to play a more prominent role in collections management, with the call for both the legal and practical assessments of risk in digitizing collections with the purpose of making them available online for discovery purposes or even downloadable where risk and rights assessments might permit.

Leila Amineddoleh (Chapter 24) gives us an overview of certain international cultural heritage disputes and how they were handled in practice. Chapter 25 by Julia Wildgans dealt with IP issues relating to cultural heritage platforms and new business models. According to her: Cultural heritage platforms are able to make a significant contribution to the realization of this right – in particular by providing access to cultural heritage resources. In the past, however, their activities have often been hampered by highly restrictive IP legislation. At the same time, the cultural heritage platforms themselves have been criticized for unduly restricting access to public cultural heritage – for both non-commercial and commercial purposes – through restrictive IP rights management.

She examined the legal framework of cultural heritage platforms in terms of the opportunities that the current EU IP law offers to stakeholders, as well as any risks that the current legal framework entails. Benjamin Farrand (Chapter 26) made a very original contribution to the debate on IP and cultural heritage by looking into the law, policy, and the preservation of videogames as digital cultural heritage. He concluded that: Culture is not static, and nor are the forms of technology that will interact with culture to create new mediums and forms of expression. As more and more of our expressions are born in digital form, the implications for the preservation of these items of culture, as well as guaranteeing public access, become intimately tied to copyright and its exceptions.

Marc Weber (Chapter 27) dealt with a rather complex issue, i.e., private international law and cultural property and art disputes. He explored issues of jurisdiction and applicable law, taking into account that “[s]ome States completely exclude cultural property from legal transactions by excluding even bona fide acquisition (France and Italy), while others make private trade in cultural property more difficult by imposing restrictions on ownership under public law.” He also stressed that “[s]ince the courts treat foreign cultural property differently from their own and do not enforce export regulations on cultural property as foreign public law domestically, it is difficult for the State of origin to sue out its cultural property abroad.” In Chapter 28 Debbie De Girolamo discussed the specifics of alternative dispute resolution (ADR) in cultural heritage and intellectual property. She underlined that:

584  Research handbook on intellectual property and cultural heritage Cultural heritage and intellectual property (IP) disputes are fertile ground from which to explore appropriate alternative dispute resolution processes. For example, these disputes are not always located firmly within a legal framework, the stakeholders in the disputes often have heterogeneous interests or values they are seeking to protect or promote, parties can face legal and non-legal barriers to pursuing their claims, and power imbalances can impact their ability to deal with issues in dispute.

So, she “[sought] to familiarise the reader with the ADR movement, the nature of these disputes, and the various processes available to disputing parties in the context of IP and cultural heritage”. Part III of the book closes with Chapter 29, which deals with a cutting-edge issue, i.e., the intellectual property implications of 3D printing of cultural heritage. 3D technologies hold the desirable potential to transform cultural artefacts of human expression, previously capable of being rendered and perceived only as tangible objects, into less material-bound works of human expression. Charles Cronin describes for the non-experts what digital 3D scan technologies are. He then goes on to consider some of the copyright issues associated with the virtual and tangible products of these technologies, both from a US and an EU perspective. He points out that: the potential of 3D technologies to help preserve cultural artifacts while simultaneously making them more broadly accessible depends significantly upon the policies of those who own these physical objects, and what, if any, intellectual property protection adheres to 3D scan data of these objects and the material copies produced from them.

This multitude of subjects – varying from museum collections of antiquities, intangible cultural heritage and indigenous communities to street art, video games and artificial intelligence – came together to form the puzzle of the intersection between CH and IP with a clear aim in mind: not just to make us wiser, but mostly to make us watch out for the days to come…

Index

3D printing of cultural heritage 565–78, 584 casting techniques and drawbacks 567 colour replication 568 copyright and original protectable expression 571–2 copyright protection for 3D cultural artifacts 569–70 copyright protection for 3D scans and copies 571–3 copyright and threshold of originality 572–3, 575 cultural artefacts and IP protection 568–75 economic opportunity and risk issues 573, 574, 576–7 forgeries and counterfeits 576–7 misappropriation of cultural heritage issues 568–9 moral rights 574–5 preservation and dissemination agent 575–8 public domain status 569–70, 571, 572–5 scan and print technology 566–8 sui generis copy protection 570 access, public see public domain access and benefit sharing agreements, ‘best practices’ to protect Indigenous knowledge 316, 317–20, 322, 323 access copy concept 440 accessibility, and patents see patents, databases and prior art, traditional knowledge accessibility Adams, D. 82, 135, 140 adaptation, videogames and loss of originals 512–14 administrative tribunals 562–3 advisory panels 560–61 Afghanistan, Bamiyan Buddhas destruction 395 Africa Organisation Africaine de la Propriété Intellectuelle (OAPI), Bangui Agreement 313, 343–4, 353 Sarr-Savoy Report on African cultural heritage 410–11 African Regional Intellectual Property Organization (ARIPO) Lusaka Agreement 343–4, 353 Swakopmund Protocol 240–41 AI artist’s resale right 372–3

cultural heritage platforms and filtering systems 499 AI-generated works of art and copyright 250–73, 581 AI black box 259–60 AI as creative tool 259–60 and authorial characteristics 255–7, 258 computer program and database protection 258 creation–authorship–ownership trio 255–7 and cultural heritage 250 future direction 272–3 multi-stage and multi-agent algorithmic creative process 257–8, 259–60 next Rembrandt project 252–3, 373, 500 ownership challenge 254–5, 257–61 ownership and protection 250–52 responses 260–72 and robotics 262–3 strong AI, growth of 263 see also computer programs; Internet, digitisation; virtual reality projects; works of art AI-generated works of art and copyright, full autonomy as valid assumption 259–60, 261–71 appropriation, lack of 264–5 appropriation-by-dissemination proposal 268–9 copyright ownership based on factual authorship 269–70 electronic copyright 265–7 fictitious authorship 270–71 legal personhood categories 266–7 partial autonomy 269–72 possible ownership responses 264–9 sui generis related right 267–9 threshold of protection 260, 268, 269, 271 alternative dispute resolution 544–64, 583–4 administrative tribunals 562–3 advisory panels 560–61 arbitration process 561–2 benefits 546–7 civil justice reconceptualisation 546 collaborative approach and dialogue and empowerment 550 community role 549–50 conciliation process 559 consensus-building process 556

585

586  Research handbook on intellectual property and cultural heritage cultural appropriation disputes 548, 549 digitisation of tangible and intangible cultural heritage 548 early neutral evaluation process 559–60 expert determination 560 galleries and auction houses, looted objects on the art market 467–8 good offices process 555 intellectual property and collective and individual rights 547–51 intellectual property and collective and individual rights, goals and forms of protection, differences in 547–8 intellectual property and collective and individual rights, legal impact 548–9 litigation 548–9, 563 mediation process 546, 551, 552–3, 556–9 mediation process, focus on interests rather than strict legal rights 558–9 negotiation process 546, 550–51, 554–5, 557 public domain, cultural heritage in 548 relevance 551–3 stakeholders and their identification 550 third-party participation 554–5, 556–60, 561–2 see also disputes and private international law Amineddoleh, L. 417, 455–79, 583 Anderson, J. 148, 314–15, 394, 405 Ann, C. 134, 136, 138 Antons, C. 299, 303, 340 Aplin, T. 59, 209 appropriation and AI-generated works of art 264–5, 268–9 alternative dispute resolution 548, 549 and copyright law see copyright law and art practice of cultural appropriation arbitration process 561–2 archaeological materials see museums of archaeological materials archives 405, 409, 441–2, 445, 449, 450 see also museums Arezzo, E. 304, 307 Arizpe, L. 393, 550 art see works of art artificial intelligence see AI artist’s resale right 359–74, 582 and classification of national cultural treasures 291 and copyright 360–61 cultural institutions 371–2 museums 372 non-fungible cryptographic tokens (NFTs) 373 online sales, digital artworks and AI 372–3

origins 359–60 threshold of protection 364, 366, 367, 368, 371 traditional craftsmanship and originality 370–71 artist’s resale right, Australia 367–71 collection 369 digital artworks 372, 373 eligible transactions 368 holders 369 list to which right applies 368–9 negative impacts of Act 369–70 operation of Act 369–70 Resale Royalty Right for Visual Artists Act 368–70 royalties 368, 369, 370 artist’s resale right, EU Directive and UK implementation 362–7, 370 administration costs, concerns over 366 beneficiaries 367 collective management organisations 361, 364, 365, 366–7, 371–2 cultural institutions 371–2 digital artworks 373 eligible work classes 363 excluded sales 363 liability to pay 363 museums 372 overall operation 365–7 reciprocity/where sale takes place 364–5 right to information 365 royalties 363–4, 367 term of protection of resale right 365 auction houses see galleries and auction houses audience development process see management issues for cultural heritage institutions, audience development process Australia Aboriginal Heritage Act 127–8 artist’s resale right see artist’s resale right, Australia National Trust and Heritage Victoria and street art 179 Australia, cases Australian Competition and Consumer Commission v. Australian Dreamtime Creations 127 Australian Competition and Consumer Commission v. Birubi Art 127 Bulun Bulun v. R & T Textiles 120, 127, 167 Foster v. Mountford 123 George M* and Others v. Indofurn (Carpet Case) 163, 166–7 Milirrpum v. Nabalco 31

Index  587 Pitjantjatjara Council Inc and Peter Nganingu v. John Lowe and Lyn Bender 125 Yumbulul v. Reserve Bank of Australia 120 Austria Klimt paintings dispute 562 Meteodata v. Bernegger Bau 222–3 authenticity loss, street art and graffiti 181–9 authorship AI-generated works of art 255–7, 258, 269–71 copyright law and art practice of cultural appropriation, appropriation art 160–61 cultural heritage platforms and new business models 482 Internet, digital images and copyright 193, 195–201, 206 see also ownership autonomy, and AI see AI-generated works of art and copyright, full autonomy as valid assumption Ayala, I. 425, 428 Bagley, M. 94, 315, 316 Banksy 172–3, 175, 176, 178–9, 186–7 Bannister, K. 392, 398 Basole, A. 243, 248 Bathaee, Y. 252, 259, 260 Batista, P. 73–93, 132–53, 580 Belder, L. 283, 305 Belenioti, Z.-C. 426, 436 Belgium Association of Newspaper Editors v. Google 223 copyright protection and integrity right 53–4 Google v. Copiepresse 209 benefit-sharing agreements, trade secrets 125, 126, 127 Bengtsen, P. 173, 175 Bently, L. 192, 209 Berne Convention 11, 12–13, 54, 192–3, 206, 208–9, 329, 341, 343, 360, 361 Bertolini, A. 263 ‘best practices’ to protect Indigenous knowledge, questions over 9, 312–26, 581 access and benefit sharing agreements 316, 317–20, 322, 323 biocultural labels 315 categorisation of terms 312 Creative Commons extension 314–15 databases and registers 315–16 disclosure of origin requirement 316–17 dynamic development of knowledge, consideration of 314

facilitating access agreements 317–20 future direction 323–4 intellectual property interface 315–17, 320–23 labelling 315 licensing 313, 314–15 meaningful change, distraction from 320–23 prior informed consent 316, 317–20, 322 and public domain 313–14, 315, 319–21 romantic framing of Indigenous knowledge 312–13 ‘traditional knowledge’ and ‘modern knowledge’, distinction between 322 Western negotiators and biases and cultural constructions 319–20, 321 Bienkowski, P. 419, 420 biotechnology 74–5, 89, 90, 151, 315 Birnhack, M. 404, 572 Blake, J. 32, 57, 295, 340, 345, 394, 480, 481, 483 Blake, S. 544, 556, 557, 559, 560, 563 Blakeney, M. 99, 236–49, 549, 581 Blanché, U. 174, 181 bona fide purchases 518, 520–21, 530 see also disputes and private international law Bonadio, E. 170–90, 256, 258, 262, 263, 264, 267, 269, 271, 580 Booton, D. 359, 361 Borghi, M. 375, 378, 383, 386, 389, 390 born-digital cultural heritage 443, 502, 504–5, 506, 507, 508, 510–11, 512, 514 see also videogames as digital cultural heritage Bortolotto, C. 328, 331, 333 Bosher, H. 198, 199 Boucher, P. 262, 266 Boyle, J 59, 321 Brascoupé, S. 118, 127 bridging intellectual property and cultural heritage law 340–57, 581–2 common objectives 345–7 communities and folklore 344 copyright law and folklore 344 decolonisation of Africa, effects of 343 ‘expressions of folklore’ definition 345 folklore as national heritage 344, 345 history 341–2 institutional endeavours 342–5 politicisation effects 355 regime complexity theory 354–5 specialised IP regional organisations 353–4 sui generis protection 345 Western multicultural societies and heritage boom 343

588  Research handbook on intellectual property and cultural heritage Bridy, A. 251, 255, 257, 258, 260, 264, 265, 266 Broude, T. 69, 249 Brown, H. 554, 556, 559, 563 Brown, M. 26, 56, 67, 94, 95, 107, 161, 284, 303, 392, 393, 405–6 Brown, R. 262, 266, 267 Bucher, S. 77, 78, 91 Burrell, R. 66, 508 Burri, M. 56–72, 94, 96, 111, 340, 579 Burstein, S. 103, 104, 109 cached copies, works of art, digital or digitised 230–31 Calboli, I. 59, 60, 61, 62, 69, 110, 249 Cambodia, Warrior Statue dispute 470–71 Canada copyright exception for non-commercial user-generated content 301 Inuit of Nunavik database 145 Kaska communities 137, 144–5 Canat, J.-F. 396, 399 Carducci, G. 276, 532 Carls, S. 132–53, 580 Carpenter, K. 94, 548, 549, 550 Carver, M. 400, 402 cataloging of rights associated with photographic materials and artworks 442, 444, 445, 446, 447–9, 450 certification patent law and traditional knowledge and genetic resources 86, 92 trademarks, cultural heritage protection 69–70, 71 trademarks and geographical indications 20 see also licensing; registration Chalfant, H. 170, 171, 183 Chander, A. 72, 303, 321 Chandrashekaran, S. 84, 153 Chatzidakis, M. 181, 185 Chaudhary, A. 84, 147 Chechi, A. 460, 542, 553, 559 Chesterman, S. 261, 266 China Patent Act 85 Shenzhen Tencent v. Shanghai Yingxun (Dreamwriter) 253 traditional medicine 139, 549 Chiou, T. 250–73, 581 Christen, K. 67, 314–15 churches and religious communities, cultural objects belonging to 284 classification of national cultural treasures, States’ discretion 275–94, 581 control of use of property versus deprivation of use consideration 287–90

free movement of goods 276, 278, 279, 280, 287, 289, 290–91 human rights and right to property 282–7 international instruments and EU law 281–7 and international treaties 276–7 legal status quo of cultural property 276–8 national experiences and national significance 290–93 national treasures definition 275–6, 280, 281, 283, 294 national treasures exception and EU Directive 278–81, 282 property of ‘artistic interest’ 277 proportionality principle 287 republishing and translations 292 resale rights 291 return of cultural objects classified as national treasures 279–80 classification of national cultural treasures, States’ discretion, cultural heritage protection as justifiable public interest 283–90 cultural objects belonging to churches and religious communities 284 intangible cultural expressions 284 national treasures owned by the state or public entities 284, 292–3 objects owned by non-public entities 284, 289 property rights and copyright protection 284 three-step test 288–9 climate change concerns 431–3 collage, and appropriation art 158–9 collective management organisations 14–15 artist’s resale right, EU Directive and UK implementation 361, 364, 365, 366–7, 371–2 EU and out-of-commerce works see copyright, EU, out-of-commerce works, collective management organisations and licensing out-of-commerce works and new business models 492–3 collective marks 20, 23, 69, 70–71 see also trademarks collective rights, alternative dispute resolution 547–51 colonialism effects 343, 397, 410–11, 474–6 commercial exploitation, street art and graffiti 171–2 commercial values, trade secrets and unfair competition law 122–3, 124–5, 126–7 commercial venture restrictions, EU Orphan Works Directive 381–2 commissioned works, street art and graffiti 185–6 community involvement

Index  589 bridging intellectual property and cultural heritage law 344 copyright law and art practice of cultural appropriation 161, 162, 163, 167 management issues for cultural heritage institutions 423–31 patents, databases and prior art 136–9, 141, 142 public domain and intangible cultural heritage, HIPAMS project 335 street art and graffiti, preservation and heritagisation 180, 185–6 competition, unfair competition law and trade secrets see trade secrets and unfair competition law computer programs 42, 219, 258 see also AI; digitisation; Internet conceptual art 160 confidentiality patents, databases and prior art 134, 136–7, 144–7, 149 trade secrets and unfair competition law 125, 127–8 consensus-building process 556 control of use of property versus deprivation of use consideration 287–90 Convention on Biological Diversity 19, 73–4, 80, 84–92 passim, 113, 116, 136, 145, 304 Coombe, R. 56, 62, 63 copies, permission to make see copyright, EU, permission to make copies copyright 3D printing of cultural heritage see under 3D printing of cultural heritage AI-generated works of art see AI-generated works of art and copyright and artist’s resale right 360–61 bridging intellectual property and cultural heritage law 344 classification of national cultural treasures 284 and cultural heritage platforms see under cultural heritage platforms and new business models and design 24 and digital images see Internet, digital images and copyright information fields see IP management for cultural heritage institutions, information fields and underlying copyright intellectual property, cultural heritage and human rights relationship 306 management issues for cultural heritage institutions 422

museums of archaeological materials 399, 401, 405, 408, 409 origins 8 and performers’ rights 330, 335, 336, 338 and transformative use doctrine 301–2 videogames as digital cultural heritage 507–9, 511 copyright, EU 38–55, 579 copyright, EU, moral rights 52–5 consent and waivers 54–5 digitisation issues 53 formatting and remastering 53 integrity right and opposition to changes 53–4 paternity right 52 copyright, EU, out-of-commerce works 43–52 databases and sui generis right 47 digitisation 43, 44, 45, 46–7, 51 exclusive rights 43 grace period 44 information publication (public single online portal) 44, 46, 48 licensing 44–6, 47–8, 49–50, 51 non-commercial purposes 44–5, 47 opt-out and publicity measures 47–9 orphan works 43 rightholders’ input 44–5, 46, 47–9 specificities of different types of work 50 stakeholder dialogue 49–50 supervision issues 47 verification of availability 43 copyright, EU, out-of-commerce works, collective management organisations and licensing 44–7, 49 additional appropriate publicity measures 49 cross-border uses 51–2 multi-territorial licences 45–6 national mechanisms 50 representative collective management organisation 44–5 copyright, EU, out-of-commerce works, cultural heritage institutions 49–52 cross-border uses and exceptions and limitations 51–2 identification of works 49–50 and opt-out option 49 works permanently in collection 42, 44 copyright, EU, permission to make copies 41–3 computer programs 42 exceptions and exclusive rights 42–3 format or medium 42 insurance issues 41–2 preservation issues 41–2 rightholders’ authorisation 42

590  Research handbook on intellectual property and cultural heritage copyright, EU, reproductions of out-of-copyright works of art in the public domain 38–41 cultural heritage institutions and access to works 38–9 digital art and non-fungible tokens (NFTs) 40–41 JPEG files 40 originality test 40 copyright law and art practice of cultural appropriation 154–69, 580 cultural misappropriation 161–2 devaluation of source community 161, 162, 163, 167 future direction 168–9 and originality 162–3, 167 traditional cultural expression 161, 162–3, 166, 167 copyright law and art practice of cultural appropriation, appropriation art 155–61 and authorship 160–61 and collage 158–9 conceptual art 160 creativity and production, relationship between 160–61 dematerialisation of art 160 and digitisation 156 history 156–8 and originality 156–9, 160 Pop Art 159 copyright law and art practice of cultural appropriation, legal evaluation of appropriation 163–8 creative transformation arguments 165–6 ‘domaine public payant’ model 168–9 ‘fair use’ exception 164–5 freedom of artistic expression 165–6 joint ownership issues 167 and originality 167–8 and photography 166 copyright and related rights 10–17 and cultural heritage and traditional cultural expressions 16–17 and design 24 duration 13 economic rights 12, 13 exclusions 10 moral rights 12–13 originality requirement 10, 12 related rights holders 14–15 special provisions for special types of works 13–14 voluntary registration systems 11 Corbett, S. 488, 509 Cornu, M. 419, 420, 552 Correa, C. 90, 151

Cottier, T. 142, 246 country of origin rights 537, 538 see also disputes and private international law Court of Arbitration for Art (CAfA) 552–3, 562 COVID-19 pandemic effect 418, 421, 422–3, 424, 425, 428, 429, 431, 434–5, 440, 451 Craig, C. 264, 265, 266, 322 creation–authorship–ownership trio, AI-generated works of art and copyright 255–7 Creative Commons 204–5, 314–15, 336, 337, 499–500 creative process focus, and cultural heritage 307 creative transformation arguments, legal evaluation of appropriation 165–6 creativity and production, relationship between 160–61 Crimp, D., ‘Pictures’ 155 Cronin, C. 565–78, 584 cross-border uses copyright, EU, out-of-commerce works 51–2, 385–6 EU Orphan Works Directive 381 cultural appropriation see appropriation cultural heritage institutions 2, 3–4, 15–16 artist’s resale right 371–2 copyright, EU, reproductions of out-of-copyright works of art in the public domain 38–9 cultural heritage platforms and new business models 490–91 and design 26 digital repositories see Internet, digital images and copyright, cultural heritage institutions’ digital repositories EU copyright and digitisation of cultural heritage 387 EU copyright and digitisation of cultural heritage, out-of-commerce works 385 EU and out-of-commerce works see copyright, EU, out-of-commerce works, cultural heritage institutions exceptions and limitations 16 IP management see IP management for cultural heritage institutions management issues see management issues for cultural heritage institutions third party rights 16 trademarks and geographical indications 22–3 videogames as digital cultural heritage, EU legal framework 509–10 cultural heritage platforms and new business models 480–501, 583

Index  591 artificial intelligence and filtering systems 499 collective management organisation for out-of-commerce works 492–3 commercial interest platforms 487–8 copyright and authors’ rights protection 482 copyright and international private law issues 491 copyright law 488–9 copyright and use of work for preservational or educational reasons 491 Creative Commons use 499–500 cultural heritage definition 480–81 dissemination mission of cultural heritage institutions 490–91 Europeana digital library network 483–4, 487, 488, 489–90, 498 future direction 500–501 individual licensing 499–500 intellectual property issues 481–3, 487, 488–500 licensing 486, 491, 492–4, 496, 499–500 national and regional galleries, libraries, archives and museums (GLAMs) 484–5, 486, 489 Next Rembrandt project 252–3, 373, 500 orphan works 490, 493, 495 out-of-commerce works 490, 492–5 out-of-commerce works, identification issues 493–4 out-of-commerce works, reproduction and communication exceptions 492–3, 494 participatory platforms and input by individuals 486–7 public domain works 485–6, 495–9 public domain works, cost factors 496 public domain works, photography and originality 496–8 State subsidies and political interest 483 users and digitisation services 482–3 virtual reality projects 500–501 cultural property law 30–37 categories 30–31 and cultural heritage 31, 32–3 cultural and natural heritage, distinction between 34–5 cultural property definitions 35–6 land and underwater cultural heritage 34–5 movable and immovable property 33–4 origins 32 tangible and intangible property 33 cultural tourism 423–5 curatorial and archival staff and contractual limitations 445, 449, 450

Cyprus, mosaics looted during conflict 461–3 Czech Republic, eSBÍRKY web portal 484 databases AI-generated works of art and copyright 258 ‘best practices’ to protect Indigenous knowledge, questions over 315–16 copyright, EU, out-of-commerce works 47 patent law and traditional knowledge and genetic resources 82–3, 84 and prior art see patents, databases and prior art and trade secrets and unfair competition law 121–2 De Girolamo, D. 544–64, 583–4 De Werra, J. 313, 316 Dearn, R. 367, 369, 370, 371 defensive mechanisms patent law and traditional knowledge and genetic resources 80–84 trademarks, cultural heritage protection 62–7 demonstrations against removal of street art and graffiti 173–4 Denmark Home v. Ofir 223 Newspaper Publishers’ Association v. Newsbooster.com 223 deprivation, property right versus deprivation of use consideration 287–90 Derclaye, E. 24, 94, 393 descriptive taxonomies vs. rights taxonomies 443–4 design 23–6 absolute and exclusive rights 25 and copyright 24 and cultural institutions 26 duration 25 exclusions 23–4 international registration 25–6 prior design 25 public availability 24–5 regional protection 24 trademark comparison 24 unregistered 25 design law and intangible cultural heritage 94–112, 580 defensive and positive protection 97–9, 107–8 design definition 101 design uses not related to product 108 designs offensive to indigenous communities 104, 110 disclosures of potentially novelty-destroying designs 102, 103 duration and ownership 106–7

592  Research handbook on intellectual property and cultural heritage eligibility challenges 109–10 EU legal framework 100, 103, 104, 107, 109 excluded subject matter 104–5 existing design (prior art) and new design, required differences 107–8, 109 freedom of designer and individual character standards 103 future direction 111–12 group knowledge and time factor issues 105–6 industrial designs 95–6 and informed user 101, 103 invalidity declaration 110 legal framework 98, 99–100 limitations 105–8 novelty and individual character standards 101–2, 103–4 protection requirements 101–4 public policy and morality concepts 104–5, 110 registration requirements 107–8, 109–10 rightholder and third parties, tensions between 96 traditional cultural expression 97, 98, 107–8 unregistered designs 25, 100, 103 devaluation of source community, and art appropriation 161, 162, 163, 167 Dietz, A. 54, 169 digital business models, management issues for cultural heritage institutions 434–5 digital cultural heritage, videogames see videogames as digital cultural heritage digitisation and alternative dispute resolution 548 copyright, EU, out-of-commerce works 43, 44, 45, 46–7, 51 and copyright law and art practice of cultural appropriation, appropriation art 156 digital images and copyright see Internet, digital images and copyright EU see EU copyright and digitisation of cultural heritage intellectual property, cultural heritage and human rights relationship 306 and IP management for cultural heritage institutions 439–40 management issues for cultural heritage institutions 421–3, 424, 426–8 and moral rights 53 museums of archaeological materials 397–8, 399, 400, 401, 407–11 repositories of videogame ROMs, suggestion of 514 and trademarks, cultural heritage protection 67

users and digitisation services, cultural heritage platforms and new business models 482–3 works of art see works of art, digital or digitised see also AI; computer programs; Internet Dinwoodie, G. 9, 61 diplomacy use, galleries and auction houses, looted objects on the art market 474–6 disclosure requirement ‘best practices’ to protect Indigenous knowledge, questions over 316–17 design law and intangible cultural heritage 102, 103 intellectual property, cultural heritage and human rights relationship 303–5 patent law and traditional knowledge see patent law and traditional knowledge and genetic resources, disclosure requirement patents, databases and prior art 135 traditional knowledge and genetic resources see patent law and traditional knowledge and genetic resources, disclosure requirement displays and exhibitions, management issues for cultural heritage institutions 420 dispute resolution, alternative see alternative dispute resolution disputes and private international law 517–41, 581 disputes and private international law, illegally exported works of art 529–36 applicable law 529–34 bona fide purchase rule 530 country of origin rights 537, 538 domaine public objects 530 EU law 535–6, 537–8 foreign mandatory rules (lois d’application immédiate) 539–40 giving effect to the law of a third State 534 good faith of purchasers 531 illegality of contract of sale 530–32 illegally exported cultural property 536–7 immorality of contract of sale 533–4 inalienability of objects 530–33, 537, 540–41 international instruments 534–6 jurisdiction 529 lex originis (place where the object was stolen) principle 536, 537, 538–9 lex rei sitae principle 531, 533 lex rei sitae principle alternatives 536–41 no direct enforcement of foreign public law 529–30

Index  593 disputes and private international law, stolen works of art 518–28, 537 applicable law 519–28 bona fide purchase 518, 520–21 inalienable movables 522–3 jurisdiction 519 lex loci furti (law governing in the State of theft) 522 lex originis (place where the object was stolen) 520 lex rei sitae (law where the property is situated) 519–20, 521, 523, 524, 525, 526, 527 public policy of forum state 525–8 renvoi theory 525, 526–7, 528 request and refusal rule 524 res in transitu 521 standing to sue 519 time limitations 524 vested rights 520, 524 see also galleries and auction houses, looted objects on the art market dissemination impact cultural heritage platforms and new business models 490–91 patents, databases and prior art 151–2 works of art, digital or digitised 216 distinctiveness trademarks, cultural heritage protection 67–8 trademarks and geographical indications 20, 21 Dolder, F. 87, 89 domaine public see public domain Dornis, T. 252, 255, 257 Drahos, P. 57, 59, 72, 249, 304, 329, 334, 406 Drexl, J. 251, 257, 258 Dreyfuss, R. 63, 65, 75 Duchamp, M. 155, 157, 160 due diligence requirements, management issues for cultural heritage institutions 417–18 duplicate trademarks, unauthorised use 59 Durantaye, K. de la 492, 493, 494, 495 duration see time factors and duration Dutfield, G. 96, 99, 102, 103, 303, 319, 342, 392, 398, 399 Eakin, H. 465, 466, 467 early neutral evaluation process 559–60 economic rights 9 3D printing of cultural heritage 573, 574, 576–7 Internet, digital images and copyright 200 videogames as digital cultural heritage 507, 509 educational purposes

copyright and use of work for 491 Internet, digital images and copyright 208 effectiveness limits patent law and traditional knowledge and genetic resources 76–9, 88–92 patents, databases and prior art 149–52 Egypt Nefertiti bust scans 410 patrimony laws 459 Ehrenzweig, A. 520, 522 Eklund, L. 506, 512 eligibility challenges, design law and intangible cultural heritage 109–10 Endemann, K. 118, 127 environmental concerns and climate change 431–3 equal treatment of all rightholders principle, EU copyright and digitisation of cultural heritage 385 ethical standards HIPAMS project 336–7 management issues for cultural heritage institutions 417–18 EU 3D scan data and prints of public domain works 572–3 artist’s resale right see artist’s resale right, EU Directive and UK implementation certification mark 69 Community Design Regulation 24–5, 104, 107 Convention for the Protection of the Architectural Heritage 32 copyright see copyright, EU Internet, digital images and copyright 193–5 Lugano Convention 519, 529 Megalithic Portal 487 PLUGGY platform 486 Registered Community Design 100 Treaty on the Functioning of the European Union (TFEU) 275–6, 279 Unregistered Community Design 100, 103 works of art, digital or digitised see works of art, digital or digitised, EU case law and linking EU, cases ACI Adam 379 Apple Inc. v. Deutsches Patent-und Markenamt 20 Bang & Olufsen v. OHIM 20–21 BestWater International v. Michael Mebes, Stefan Potsch 227, 231–2 C More Entertainment v. Linus Sandberg 225–6 Christie’s France 363

594  Research handbook on intellectual property and cultural heritage Commission v. Italy 294 Constantin Film Produktion GmbH v. EUIPO 104 Crocs v. EUIPO 102 Deckmyn v. Vandersteen 210, 302 Easy Sanitary Solutions BV and EUIPO v. Group Nivelles 108 Football Association Premier League Ltd v. QC Leisure 217, 224, 229, 275 Football Dataco Ltd v. Yahoo! UK 275 Funke Medien NRW GmbH v. Federal Republic of Germany 389 Gala-Salvador Dali and Visual Entidad de Gestion de Artistas Plasticos 361, 364 Gamma-A SIA v. EUIPO 108 GS Media BV v. Sanoma Media Netherlands 226–8 Infopaq International A/S v. Danske Dagblades Forening 40, 229, 230, 275, 380, 404, 508 ITV Broadcasting v. TV Catchup 220, 224 Karen Millen Fashions Ltd. v. Dunnes Stores 103 Karen Murphy v. Media Protection Services Ltd 217, 275 Land Nordrhein-Westfalen v. Dirk Renckhoff 379 Levola Hengelo BV v. Smilde Foods BV 193 Linak A/S v. EUIPO 108 Marc Soulier and Sara Doke v. Premier Ministre 194, 379, 384 Martin Luksan v. Petrus van der Let 287 Metronome Musik v. Music Point Hokamp 286 Nintendo Co. Ltd and Others v. PC Box Srl and 9Net Srl 516 Organismos Sillogikis Diacheirisis Dimiourgon Theatrikon v. Optikoakoustikon Ergon 224 Painer v. Standard Verlags 193, 194, 209, 210, 211, 275, 404, 497, 508 Pelham v. Ralf Hütter and Florian Schneider-Esleben 209, 210, 211, 286, 379 PepsiCo v. Grupo Promer Mon Graphic 101, 108 Public Relations Consultants Association 228–31 SGAE v. Rafael Hoteles 220, 224 Soulier u Doke/Premier ministre ua 492 Spiegel Online v. Volker Beck 389 Stichting Brein v. Jack Frederik Wullems 379–80 Svensson v. Retriever Sverige 206, 223–5, 227, 232, 233, 490–91

UsedSoft GmbH v. Oracle International Corp. 220 VCAST Limited v. RTI 379 VG Bild-Kunst v. Stiftung Preuβischer Kulturbesitz 194, 197, 215–16, 232–4 EU copyright and digitisation of cultural heritage 375–91, 582 digital monopolies 388–90 digital monopolies, sui generis database right 389–90 digitisation initiatives 379–80 Europeana portal to its digital cultural heritage 380 licensing 377, 378, 380, 383, 385–6, 388–9 opt-out mechanism 385, 388 text mining and data analytics 375–6, 386–8 text mining and data analytics, exceptions 387–8 universal digital library, move towards 376–9 universal digital library, move towards, Internet Archive 376–7 and US fair use test 377, 378–9, 382 EU copyright and digitisation of cultural heritage, Orphan Works Directive 375, 379, 380–82, 389, 390 commercial ventures, restrictions 381–2 cross-border uses of orphan works and phonograms 381, 382 and digitisation 382 legal provisions 381 mandatory exception/limitation 382 public interest 382 EU copyright and digitisation of cultural heritage, out-of-commerce works 383–6, 389, 390 collective licensing mechanisms 385 cross-border uses 385–6 and cultural heritage institutions 385 equal treatment of all rightholders principle 385 national legislation 383–4 EU Directives Biotech 85, 87 Collective Management 15, 46 Computer Programs 42, 388 Copyright in the Digital Single Market 39–50passim, 199–200, 206–7, 234–5, 302, 375, 379, 383–7passim, 389, 401, 408, 491–5, 498–9, 510–15 Copyright Term 497 Database 42, 387, 389 Designs 100 E-Commerce 221

Index  595 Information Society 194, 207–8, 209, 217, 219, 225, 229–31, 306, 379, 382, 384, 387, 389, 492, 508, 509 Orphan Works 43, 495, 509–10 Orphan Works and digitisation see EU copyright and digitisation of cultural heritage, Orphan Works Directive return of cultural objects unlawfully removed from the territory of a Member State 36–7, 278–81, 282, 552 Term 206 Trade Secrets 27, 118–19 Trademark Law 60, 64 EU Intellectual Property Office 22, 44, 46, 100, 104 Dick Lexic Ltd. v. OHIM 110 Screw You v. OHIM 110 EU law classification of national cultural treasures, States’ discretion 281–7 design law and intangible cultural heritage 100, 103, 104, 107, 109 disputes and private international law, illegally exported works of art 535–6, 537–8 videogames see videogames as digital cultural heritage, EU legal framework Euler, E. 201, 207, 496, 497, 498, 499, 500 European Convention on Human Rights 282–3, 284–5, 297–8 European Convention on the Protection of Archaeological Heritage 32, 35 European Copyright Society 110, 223 European Court of Human Rights Anheuser-Busch Inc v. Portugal 284, 297–8 Ashby Donald and others v. France 281 Balan v. Moldova 284–5 Beyeler v. Italy 288–9, 290 European Free Trade Association, Vigeland 64–5, 105, 110 European Patent 18 European Patent Convention 135 European Patent Office 149 Brüstle v. Greenpeace 317 neem tree oil as fungicide 81, 82, 139 Warf/Stem cells 317 European Trade Mark 22, 64 Europeana Foundation 205, 380, 483–4, 487, 488, 489–90, 514 Evans, G. 423, 429 ex situ conservation and free public access, street art and graffiti 175, 182 examiners, patent office 135, 140, 143 exceptions

copyright, EU, permission to make copies 42–3 copyright law and art practice of cultural appropriation 164–5 cultural heritage institutions 16 design 23–4, 104–5 EU copyright and digitisation of cultural heritage 382, 387–8 intellectual property, cultural heritage and human rights relationship 306 Internet, digital images and copyright 199–200, 202, 207–11 patents 17–18 trademarks 61 exclusive rights copyright, EU, out-of-commerce works 43 patent law and traditional knowledge and genetic resources 17, 18, 77–8, 88 trademarks and geographical indications 21 exhibitions and displays management issues for cultural heritage institutions 420 street art and graffiti, preservation and heritagisation 174 expert determination 560 see also alternative dispute resolution exploitative practices, addressing, trade secrets and unfair competition law 129–30 exported works of art, illegally see disputes and private international law, illegally exported works of art expression medium of videogames, videogames as digital cultural heritage 505–6 ‘expressions of folklore’ definition 345 extended collective licensing, out-of-commerce works 44–5 fair use copyright law and art practice of cultural appropriation 164–5 trademarks 61 Falk, R. 77, 296 Farrand, B. 502–16, 583 Federle, C. 81, 90, 139, 140 fictitious authorship, AI-generated works of art 270–71 Fiji, Sawau Project 548, 549 filtering systems, AI and cultural heritage platforms 499 Fisher, W. 105–6, 111, 322, 323, 406 follow-on creations 301–2 for-profit links, works of art, digital or digitised 227–8 Forbes, N. 426, 501

596  Research handbook on intellectual property and cultural heritage forgeries and counterfeits, 3D printing of cultural heritage 576–7 Forsyth, M. 318, 319, 323, 466 Fouseki, k. 551, 552, 555 Frabboni, M. 200, 509, 510 framing, works of art, digital or digitised 231–4 France artist’s resale right, origins of 359–60 Code du Patrimoine 526–7 Copyright Code 164 freedom of artistic expression 165–6 Louvre digital platform 484–5 Mona Lisa 184, 210, 496, 573 out-of-commerce works 383–4 Sarr-Savoy Report on African cultural heritage 410–11 stolen works of art and bona fide purchase 518 France, cases De Raad v OvJ (Madonna of Batz-sur-Mer) 523, 540–41 Duc de Frias c. Baron Pichon 523, 530 Governo di Francia c. De Contessini 530 Havas Numerique SNC and Cadres OnLine v. Keljob 223 Iran v. Berend 525–8 Succession Bauret v. Jeffrey Koons 164 Villede Genève et Fondation Abegg v. Consorts Margail 34 Francioni, F. 30, 395 Frankel, S. 57, 58, 63, 64, 67, 68, 69, 70, 71, 72, 318, 406, 579 free and informed consent of information dispersal, trade secrets and unfair competition law 121 free movement of goods, classification of national cultural treasures 276, 278, 279, 280, 287, 289, 290–91 freedom of artistic expression, copyright law and art practice of cultural appropriation 165–6 freedom of designer and individual character standards, design law 103 Fresa, A. 426, 501 future direction AI-generated works of art and copyright 272–3 ‘best practices’ to protect Indigenous knowledge, questions over 323–4 copyright law and art practice of cultural appropriation 168–9 cultural heritage platforms and new business models 500–501 design law and intangible cultural heritage 111–12 patents, databases and prior art 152–3

trade secrets and unfair competition law 128–30 works of art, digital or digitised 234–5 future-proofing against climate change disasters 440 galleries GLAMs (galleries, libraries, archives and museums) 484–5, 486, 489 street art and graffiti, preservation and heritagisation 174 galleries and auction houses 455–79, 583 cultural artefacts and different treatment 455–60 foreign governments, claims against, and proof of ownership 476–8 international instruments protecting cultural heritage 456–8 national patrimony laws protecting cultural heritage 458–60, 469, 472 protection of objects for present and future generations 455–6 see also museums galleries and auction houses, looted objects on the art market 461–76 alternative dispute resolution 467–8 Benin Bronzes 475–6 colonial takings and diplomacy 474–6 communications and negotiations 465–8 diplomacy and repatriation 473–6 Euphronios Krater 465–8 failed negotiations 468–70 Guennol Stargazer idol dispute 468–70 Gutmann family art claims 464 hidden treasure trove 463–4 law enforcement seizures 470–73 litigation 461–4 Max Stern Estate art claims 464 mosaics looted during conflict 461–3 Parthenon Marbles 468, 476, 564 Persepolis Frieze 471–3 Persian Rhyton 473–4 private party claims for return of cultural objects 464 see also disputes and private international law, stolen works of art gamification and games, cultural heritage institutions, audience development process 427–8 Gangjee, D. 243, 245, 306 Garcia, R. 175, 184 Geiger, C. 164, 208, 221, 228, 250–51, 281, 285, 511, 513, 515 genetic resources

Index  597 intellectual property, cultural heritage and human rights relationship 303–5 and patent law see patent law and traditional knowledge and genetic resources trade secrets and unfair competition law 116–17 and traditional cultural expressions 28–9 geographical indications 236–49, 581 cultural heritage aspects 245–6 definition 242–3 handicrafts 242–3, 244–5, 248 human factors 242–4 IP or intangible cultural heritage debate 237–41 Lisbon Agreement 242 protection examples 247–8 quality schemes for agricultural products and foodstuffs 243–4 registered examples 244 sui generis legislation 243, 246 and trademarks see trademarks and geographical indications traditional cultural expressions 241–2, 244, 245–6 geographical origin requirement, patent law 85, 91, 92 Germany Anna Amalia Bibliothek digital platform 485 Benin Bronzes 475–6 bona fide purchase 518, 520–21 Copyright Act 39, 166 Copyright Administration Act and out-of-commerce works 383 Digital Library 484 German–Greek coins case 522–3 Gutmann family art claims 464 Max Stern Estate art claims 464 Nefertiti bust scans 410, 573 Patent Act 87 public domain platforms 485 stolen works of art and bona fide purchase 518 Germany, cases Koerfer v. Goldschmidt 519 Museumsfotos 39, 206, 483, 497–8 Nigeria 533–4, 539 Paperboy 222 Thumbnail I 209 Gerstenblith, P. 419, 458 Gervais, D. 28, 59, 69, 70, 90, 119, 151, 202, 216, 252, 255, 256, 259, 260, 261, 266 Ginsburg, J. 208, 253, 255 GLAMs (galleries, libraries, archives and museums) 484–5, 486, 489 see also galleries

good faith issues disputes and private international law, illegally exported works of art 531 management issues for cultural heritage institutions 417 good offices process 555 see also alternative dispute resolution Google Books 377, 379, 485–6, 487, 500 Gopalakrishnan, N. 246, 248 Gorbatyuk, A. 191–213, 580–81 Götting, H.-P. 81, 135 Gotzen, F. 53, 209 Graber, C. 57, 70, 303, 314 grace period 21, 25, 44 see also time factors graffiti see street art and graffiti, preservation and heritagisation graphic representation of trademark signs 68 Greece alternative dispute resolution to recover looted property 467–8 Corinthian bronze and Sotheby’s 476–7 Euphronios Krater 465–8 German–Greek coins case 522–3 items found in former Royal Estate of Tatoi of Attica 292–3 Parthenon Marbles 468, 476, 564 patrimony laws 459–60 republishing of the works of Nikos Kazantzakis 292 Grimmelmann, J. 255, 256, 267, 271, 272 group knowledge and time factor issues, design law 105–6 Guadamuz, A. 194, 256, 259–60, 264, 271, 428, 435–6 Guibault, L. 203, 205, 385, 396, 399, 508 Gupta, A. 74, 116 Hafstein, V. 327, 333, 344 Hague Convention 25–6, 32, 99, 342, 393, 456–7 Haight Farley, C. 59, 61, 62, 306 Hamilton, G. 199, 201 handicrafts, geographical indications 242–3, 244–5, 248 Hanisch, H. 520, 522, 523 Hansen, S. 181–2, 185 Harding, S. 304, 305, 307, 331, 333 Haring, K. 177–8, 179 Hartmann, C. 252, 253, 255, 258, 260, 262, 263, 264, 269 Heath, C. 94, 116, 316, 318, 319, 340 Helfer, L. 56, 301, 308 Hennessy, K. 394, 410, 548, 550 ‘Heritage Together’ platform 486–7

598  Research handbook on intellectual property and cultural heritage heritage-sensitive IP and marketing strategies, HIPAMS project 334–5 heritagisation, and street art see street art and graffiti, preservation and heritagisation Hettinger, E. 334, 406 Hilty, R. 89, 90, 124, 132–53, 580 HIPAMS project see public domain and intangible cultural heritage, HIPAMS project Hugenholtz, B. 203, 205, 208–9, 268 Hughes, J. 65–6, 72, 96, 334 Hughey, R. 64, 66 human factors, geographical indications 242–4 human rights classification of national cultural treasures, States’ discretion 282–7 and intellectual property see intellectual property, cultural heritage and human rights relationship Husovec, M. 199, 287 identification out-of-commerce works, cultural heritage platforms and new business models 493–4 public domain and intangible cultural heritage, HIPAMS project 335–7 rightsholders and transparency of digital content 202 illegal graffiti 183 see also street art and graffiti, preservation and heritagisation illicit disclosure of information, trade secrets and unfair competition law 121, 125 image modification, Internet, digital images and copyright 193–4 in situ preservation and perspex protection, street art and graffiti 178, 179, 181, 185 inalienable movables disputes and private international law, illegally exported works of art 530–33, 537, 540–41 disputes and private international law, stolen works of art 522–3 India Mullick v. Mullick 31 Patent Act 148–9 Traditional Knowledge Digital Library 83, 132, 146–7 individual input, participatory platforms 486–7 individual licensing cultural heritage platforms and new business models 499–500 Internet, digital images and copyright, users’ perspective 203

see also licensing individual rights, alternative dispute resolution 547–51 infinite rights assessments, IP management for cultural heritage institutions 446–7 information disclosure artist’s resale right 365 copyright, EU, out-of-commerce works 44, 46, 48 design law and intangible cultural heritage 101, 103 information fields and underlying copyright see IP management for cultural heritage institutions, information fields and underlying copyright knowledge and information access 9 trade secrets and unfair competition law 119–20, 121, 125 innovation patents, databases and prior art 151–2 trade secrets and unfair competition law 115–18 see also inventions Institut de Droit international, Basel Resolution 520, 526, 527, 536–8 institutional capacity bridging intellectual property and cultural heritage law 342–5 IP management for cultural heritage institutions 452–3 insurance issues, copyright, EU, permission to make copies 41–2 intangibles classification of national cultural treasures 284 and design law see design law and intangible cultural heritage digitisation, and alternative dispute resolution 548 geographical indications 237–9 museums of archaeological materials 393–4, 401–7 and public domain see public domain and intangible cultural heritage trade secrets and unfair competition law 115–18 see also knowledge protection integrity right and opposition to changes, EU, moral rights 53–4 intellectual property 8–9 alternative dispute resolution 547–51 ‘best practices’ to protect Indigenous knowledge, questions over 315–17, 320–23

Index  599 bridging see bridging intellectual property and cultural heritage law classification of national cultural treasures 284 cultural heritage platforms and new business models 481–3, 487, 488–500 geographical indications 237–9 intellectual property, cultural heritage and human rights relationship 295–311, 581 collection-driven approach 307 conflicts 300–307, 310 copyright exceptions 306 copyright law and transformative use doctrine 301–2 creative process focus 307 digitisation of cultural materials, effects of 306 disclosure of traditional knowledge and genetic resources used in inventions, call for 303–5 follow-on creations 301–2 human rights framework 296–300 just remuneration approach 310 moral and material interests 297 museums, libraries and archives 305–7 parodies and satires 301–2 protection of interests resulting from intellectual productions 296–8 right to property provision 297–8 right to take part in cultural life 298–9 scientific progress, right to enjoy benefits of 298, 299 three-step balancing process 307–10 traditional cultural expression 299, 300, 303 unauthorised reproduction of indigenous cultural heritage 302–5 user-generated content production 301–2 intellectual property management for cultural heritage institutions 439–54, 583 access copy concept 440 collections management systems 440–41 Covid-19 pandemic effect 440, 451 and digitisation 439–40 future-proofing against climate change disasters 440 institutional capacity and capability 452–3 legacy collections 450 licensing 442, 444, 446, 448, 449, 450 Pallante checklist 441–2, 449, 451 rights questionnaires 449–50 risk assessments 450–52 risk assessments, high risk materials 451 risk assessments, risk grid and legal counsel 452

intellectual property management for cultural heritage institutions, information fields and underlying copyright 444–9 auto-population of fields 445 cataloging of rights associated with photographic materials and artworks 442, 444, 445, 446, 447–9, 450 curatorial and archival staff and contractual limitations 445, 449, 450 customisation 445 infinite rights assessments and sub-rights assessments 446–7 rights assessments on works that are copyright-protected 445–6 streaming of collections 446 intellectual property management for cultural heritage institutions, rights assessments 440–41 acquisitions, preservation and access activities deemed priorities 449 descriptive taxonomies vs. rights taxonomies 443–4 metadata statements 442 object-based vs. archival or distinctive collections 441–2 time-based media 443 and timing 449–50 Inter-American Court of Human Rights, Mayagna (Sumo) Awas Tingni Community v. Nicaragua 120 International Council of Museums (ICOM), ICOM-WIPO Mediation Service 551, 558 International Covenant on Civil and Political Rights 300 International Covenant on Economic, Social and Cultural Rights 296, 297, 298–9, 300–301, 305, 306, 307, 308–9 international developments, public domain and intangible cultural heritage 328–30 international law classification of national cultural treasures 276–7, 281–7 cultural heritage platforms and new business models 491 design law and intangible cultural heritage 98, 99 disputes see disputes and private international law galleries and auction houses 456–8 Internet, digital images and copyright 192–3 patent law and traditional knowledge and genetic resources 76, 89–91 patents, databases and prior art 150 trademarks 59–60 international registration

600  Research handbook on intellectual property and cultural heritage design 25–6 trademarks and geographical indications 22 International Treaty on Genetic Resources for Food and Agriculture 116, 304 Internet and works of art, digital or digitised 222–3, 228–31 see also computer programs; digitisation Internet Archive 376–7 Internet, digital images and copyright 191–213, 580–81 author’s own intellectual creation standard 193–4, 200, 206 authors’ perspective 195–201 EU copyright principles 193–5 image modification 193–4 international copyright protection 192–3 licensing 195–7, 198, 200, 201, 203–5, 212 minimum term of protection 193 originality condition 193–4 rightsholders’ exclusive rights 194 threshold of protection 200, 206 unqualified authorisation to publication of images 194–5 see also AI-generated works of art and copyright Internet, digital images and copyright, cultural heritage institutions’ digital repositories 199–201 digital reproduction issues 200 moral and economic rights 200 open licensing systems 201 orphan works’ exception 199–200, 202 technological protection measures 200–201 Internet, digital images and copyright, social media 198–9 ‘notice and takedown’ systems 199 out-of-commerce status 200 resharing images 204 user agreements 198 Internet, digital images and copyright, stock images repositories 195–7, 204 free 196–7 image search engines and thumbnails 197 paid, and sublicensing 195–6 technological protection measures 196 Internet, digital images and copyright, users’ perspective 201–11 Creative Commons licenses 204–5 exceptions and limitations 207–11 image usage rights 202–11 individual licenses with rightsholder 203 licensed uses 203–5 moral rights 205 non-licensed uses, permissible 205–11

non-original reproductions of public domain works 206–7 not restricted acts 206–7 panorama exception and works of architecture and sculpture 208 parodies 210–11 private copying exception 208 quotation rights 208–10 remixes 202–3 rightsholders, identification of, and transparency of digital content 202 short term of protection for ‘simple’ or ‘documentary’ photographic works 206–7 stock images repositories 204 teaching, research, news reporting and incidental inclusion 208 user-generated/created content 202–3 inventions disclosure of traditional knowledge and genetic resources used in 303–5 inventive step requirement 77, 81, 82 inventor’s name disclosure issues 77 patents and invention protection routes 18–19 see also innovation; ‘patent’ headings Iran patrimony laws 472 Persepolis Frieze 471–3 Persian Rhyton 473–4 Iraq, destruction of heritage sites 395, 410 Ireland, copyright exception for innovation 301 Israel, Eisenmann v. Qimron (Dead Sea Scrolls) 404–5, 406, 572 Italy Blu street artist 175 bona fide purchase rule 518, 530 Code of Cultural Heritage and Landscape 570 Euphronios Krater dispute 465–8 export control provisions 529 graffiti restoration 178 illegal graffiti photographs 183 marble bust and Safani Gallery 478 patrimony laws 459, 466 stolen works of art and bona fide purchase 518 Italy, cases De Contessini 523, 530–32, 533 Ecuador c. Danusso 519, 523, 531, 532–3 Elena Quarestani v. Ministero dei Beni, delle Attività Culturali e del Turismo 290–91 Jakubowski, A. 340–57, 581–2

Index  601 Janke, T. 66, 67–8, 114, 163, 167 Janssens, M.-C. 191–213, 580–81 joint ownership issues and cultural appropriation 167 JPEG files, and reproductions of out-of-copyright works of art in the public domain 40 Judd, P. 94–5, 320 just remuneration approach 310 Jütte, B. 94–112, 580 Kadhim, N. 552–3, 562 Karapapa, S. 375–91, 515, 582 Karjala, D. 118, 332 Katyal, S. 66, 410 Keller, P. 46, 48, 50 Kennedy, R. 465, 466, 467 Kenya community competence rules 137–8 Taita Baskets Association 70 Kerr, I. 264, 265, 266 Klasen, P. 165–6 Klass, N. 482, 483, 484, 507 knowledge protection best practices see ‘best practices’ to protect Indigenous knowledge, questions over patents and sacred or special cultural value knowledge 136–7 traditional knowledge see traditional knowledge see also intangibles Kono, T. 340, 393 Koons, J. 164 Korean Journal of Traditional Knowledge database 83, 140–41, 144 Koščík, M. 94, 503, 511 Koukopoulos, Z. and D. 483, 485, 486 Kraβer, R. 134, 136, 138 Krishnamurthy, P. 90, 151 labelling, and ‘best practices’ to protect Indigenous knowledge 315 Lai, J. 70, 312–26, 581 Lakshmi Poorna, R. 83, 144 Lamping, M. 90, 133, 151 Landes, W. 59, 155 Lazzeretti, L. 434, 503 legacy collections 450 legal evaluation of appropriation see copyright law and art practice of cultural appropriation, legal evaluation of appropriation legal personhood categories, AI-generated works of art 266–7 legal status quo of cultural property 276–8 Leistner, M. 209, 315

Lemley, M. 59, 61, 121, 129 Levine, S. 155, 156, 158, 160 lex loci furti (law governing in the State of theft), and stolen works of art 522 lex originis (place where the object was stolen) illegally exported works of art 520, 536, 537, 538–9 stolen works of art 520 lex rei sitae (law where the property is situated) illegally exported works of art 531, 533, 536–41 stolen works of art 519–20, 521, 523, 524, 525, 526, 527 licensing 14–15, 16, 18, 36 ‘best practices’ to protect Indigenous knowledge, questions over 313, 314–15 copyright, EU, out-of-commerce works 44–6, 47–8, 49–50, 51 Creative Commons 204–5, 314–15, 336, 337, 499–500 cultural heritage platforms and new business models 486, 491, 492–4, 496, 499–500 EU copyright and digitisation of cultural heritage 377, 378, 380, 383, 385–6, 388–9 individual see individual licensing intellectual property management for cultural heritage institutions 442, 444, 446, 448, 449, 450 Internet, digital images and copyright 195–7, 198, 200, 201, 203–5, 212 management issues for cultural heritage institutions 422, 438 museums of archaeological materials 399, 400, 401, 409 patent law and compulsory license 77–8 videogames as digital cultural heritage 509, 511, 513, 514 works of art, digital or digitised 228–9, 232–3, 235 see also certification; registration Lisbon Agreement on Appellations of Origin and Geographical Indications 242 Lithuania, Paveldas web portal 484 Lixinski, L. 57, 167, 328, 331 loans, museums of archaeological materials 399 local community involvement see community involvement Logan, W. 303, 340 Long, D. 114, 123 looted objects see galleries and auction houses, looted objects on the art market

602  Research handbook on intellectual property and cultural heritage looting colonial past issues, and museums of archaeological materials 410–11 Lynch, B. 76, 133 McDonagh, L. 256, 258, 262, 263, 264, 267, 269, 271, 285 Macmillan, F. 94, 340, 394, 547, 548, 549 MacQueen, H. 404, 405 Madrid Protocol 22, 99 Maier, H. 488, 515 Malbon, J. 76, 90, 134, 150, 151 management issues for cultural heritage institutions 413–38, 582–3 audience and local community involvement 423–31 collections management 416–17 concept 414–16 and COVID-19 pandemic 418, 421, 422–3, 424, 425, 428, 429, 431, 434–5 cultural tourism 423–5 digital business models 434–5 digitisation of collections 421–3, 424 digitisation of collections, and copyright 422 displays and exhibitions 420 due diligence requirements 417–18 environmental certification systems 433 environmental concerns and climate change 431–3 ethical standards 417–18 licensing 422, 438 local communities’ involvement 428–9 marketing and branding 436–8 mission statements 415–16 non-fungible tokens (NFTs) and blockchain technology 435–6 objects acquired in good faith 417 and restitution/repatriation claims 417, 418–19, 420 social inclusion theory 429–31 special needs groups and social inclusion 430–31 stakeholder involvement 415 sustainability concept 414–15 management issues for cultural heritage institutions, audience development process 425–8 digital and technological tools 426–8 gamification and games 427–8 social networks and websites, use of 426–7 Margoni, T. 203, 409, 572, 573 Markellou, M. 154–69, 580 marketing strategies management issues for cultural heritage institutions 436–8

public domain and intangible cultural heritage, HIPAMS project 334–5 Marriott, A. 554, 556, 559, 563 Martinet, L. 26, 94, 95, 106, 340, 343 Matassa, F. 416, 418 Matsūra, K. 346, 353 Mavroskoti, Z. 206, 214–35, 581 mediation process 546, 551, 552–3, 556–9 Mellulis, K.-J. 134, 138 Menkel-Meadow, C. 544, 546 Merges, R. 59, 82, 135 Merryman, J. 279, 397, 521, 529 Mes, P. 134, 140, 141 metadata statements, and IP management for cultural heritage institutions 442 Mexico, Mixe people and BARTA tunic 168 Michelle, L. 404 misappropriation 3D printing of cultural heritage 568–9 copyright law and art practice of cultural appropriation 161–2 public domain and intangible cultural heritage, HIPAMS project 331–2, 337–8 of trade secrets and unfair competition law 125–7 trademarks and use of indigenous words, signs and forms (disparaging marks) 62–4 mission statements, management issues for cultural heritage institutions 415–16 monopolies, digital, and EU copyright 388–90 moral rights 9 3D printing of cultural heritage 574–5 design law and intangible cultural heritage 104–5, 110 EU see copyright, EU, moral rights illegally exported works of art 533–4 intellectual property, cultural heritage and human rights relationship 297 Internet, digital images and copyright 200, 205 museums of archaeological materials 401 street art and graffiti, preservation and heritagisation 174–5, 177 Morgera, E. 73, 132 mosaics looted during conflict, and galleries and auction houses 461–3 Munzer, S. 72, 97, 111 museums artist’s resale right 372 intellectual property, cultural heritage and human rights relationship 305–7 videogame history, museums showcasing 513–14

Index  603 see also archives; galleries and auction houses museums of archaeological materials 392–412, 582 archaeological artefacts as treasures 402–3 copyright 399, 401, 405, 408, 409 cultural nationalism and internationalism 396–8 Dead Sea Scrolls 404–5, 406, 572 decolonisation/recontextualisation exercise, effects of 397 and destruction of cultural heritage 395 digitisation role 397–8, 399, 400, 401, 407–11 heritage responsibility 394–8 intangible heritage in artefacts, treasures and public domain 401–7 licensing 399, 400, 401, 409 loans 399 looting colonial past issues 410–11 moral rights 401 moveable heritage relocation 395 museum definition and role 395–6, 402 ‘ownerless objects’ 402–3 public domain materials 401, 405–7, 408–9, 411 reconstructed archaeological artefacts 404–5 recordations and Indigenous communities 399, 401, 405–7 Sutton Hoo collection and ownership claims 400–401, 402–4 treasure trove 402–3 unpublished archival materials 405, 409 mutually agreed terms, patent law 74, 78, 85–6 Myška, M. 94, 503 Nagoya Protocol 19, 73–4, 78, 80, 84–92passim, 113, 116, 136, 145, 304 national laws copyright, EU, out-of-commerce works, collective management organisations and licensing 50 design law and intangible cultural heritage 104–5, 110 disputes and private international law, stolen works of art 525–8 EU copyright and digitisation of cultural heritage, out-of-commerce works 383–4 patents, databases and prior art 148–52 patrimony laws protecting cultural heritage 458–60, 469, 472 State subsidies and political interest 483

States’ classification discretion see classification of national cultural treasures, States’ discretion trademarks and scope of protection, trademarks 60 works of art, digital or digitised 221–3 see also individual countries national and regional galleries, libraries, archives and museums (GLAMs) 484–5, 486, 489 national treasures concept 275–6, 278–81, 282, 283, 284, 292–3, 294 Navarrete, T. 421, 424 Netherlands colonial takings and diplomacy 474–5 De Raad v OvJ (Madonna of Batz-sur-Mer) 523, 540–41 Haarlem 222 Mom 222 Zoekallehuizen.nl v. NVM 223 new business models and cultural heritage platforms see cultural heritage platforms and new business models New Zealand Haka Ka Mate Attribution Act 68, 407 Patents Act 316 Toi Iho Māori Made Mark 69–70 trademark law and Māori culture 63, 66, 68, 69–70 Treaty of Waitangi and Māori heritage 68, 406–7 Next Rembrandt project 252–3, 373, 500 Nicholas, G. 392, 398 Nigeria Benin Bronzes 475–6 Igbo mbaris 307 non-commercial purposes, copyright, EU, out-of-commerce works 44–5, 47 non-compliance consequences, patent law and disclosure requirement 86–8 non-conventional/non-traditional marks, trademarks 60 non-fungible tokens (NFTs) 40–41, 373, 435–6 non-licensed uses, permissible, Internet, digital images and copyright 205–11 non-public entities, objects owned by, and classification of national cultural treasures 284, 289 non-traditional trademarks 68 Norway Fin Eiendom AS v. Notar 222–3 Napster 222 Patent Act 85–6, 87 ‘notice and takedown’ systems, Internet and social media 199 novelty

604  Research handbook on intellectual property and cultural heritage design law and individual character standards 101–2, 103–4 prior art extension to non-publicly available traditional knowledge 149, 150–51 prior art issues and patent law 76–7, 78–9, 81–2, 83 see also originality object-based vs. archival or distinctive collections, and IP management 441–2 offensive designs and indigenous communities 104, 110 offensive mechanisms of protection, trademarks as 67–71 Oguamanam, C. 147, 306 Ogwezzy, M. 148, 246 Okediji, R. 111, 114, 121, 125, 130, 148, 312, 316–17, 320, 321, 322, 323 O’Keefe, P. 31, 32, 295, 393, 523, 529, 532 online polls, street art and graffiti, preservation and heritagisation 186–7 online sales, digital artworks and artist’s resale right 372–3 open databases, patents and prior art 144 open licensing, Creative Commons 204–5, 314–15, 336, 337, 499–500 see also licensing opt-out mechanisms copyright, EU, out-of-commerce works 46, 47–9 EU copyright and digitisation of cultural heritage 385, 388 originality copyright, EU, reproductions of out-of-copyright works of art in the public domain 40 and copyright law and art practice of cultural appropriation 156–9, 160, 162–3, 167–8 digitisation role, and museums of archaeological materials 408–10 Internet, digital images and copyright 193–4 public domain works, photography and originality 496–8 traditional craftsmanship and artist’s resale right 370–71 see also novelty orphan works copyright, EU, out-of-commerce works 43 cultural heritage institutions’ digital repositories 199–200, 202 cultural heritage platforms and new business models 490, 493, 495 videogames as digital cultural heritage, EU legal framework 509–10

see also ‘ownerless objects’ Oruç, P. 392–412, 582 out-of-commerce works cultural heritage platforms and new business models 490, 492–5 EU see copyright, EU, out-of-commerce works; EU copyright and digitisation of cultural heritage, out-of-commerce works Internet, digital images and copyright, social media 200 videogames as digital cultural heritage, EU legal framework 511, 513 ‘ownerless objects’, museums of archaeological materials 402–3 see also orphan works ownership AI-generated works of art and copyright 250–52, 254–5, 257–61 copyright, EU, out-of-commerce works 44–5, 46, 47–9 copyright, EU, permission to make copies 42 design law and intangible cultural heritage 96, 106–7 Internet, digital images and copyright 194, 202 proof, and foreign governments, claims against 476–8 see also authorship Pajares Rivas, S. 191–213, 580–81 Pallante checklist 441–2, 449, 451 Palmer, M. 545, 546, 549, 553, 554, 560 Pantalony, R. 207, 439–54, 583 Papadopoulou, M.-D. 192, 275–94, 581 Paris Convention for the Protection of Industrial Property 28, 57, 59, 99, 119, 123–4, 243, 341 parody 210–11, 301–2 participatory platforms and input by individuals 486–7 Patent Cooperation Treaty 76, 82, 91–2, 99, 133–4, 303 patent law and traditional knowledge and genetic resources 17, 18, 73–93, 580 biotechnology inventions 74–5 compulsory license 77–8 cost issues 77 databases 82–3, 84 defensive use of TK against undue patenting 80–84 duration and fixed term of protection 78 effectiveness limits 76–9 exclusivity rights against third parties, prevention of enforcement 77–8

Index  605 improper insertion of information in the prior art 78–9 international law 76 inventive step requirement 77, 81, 82 mutually agreed terms 74, 78, 85–6 novelty aspect and prior art issues 76–7, 78–9, 81–2, 83 patent application and disclosure requirement 73–4 patenting by third parties 78–80 prior informed consent 73–4, 78, 80, 84, 85–6 public accessibility 81–2 sui generis protection 79–80 technical information requirements 77 third-party patent applications 83–4 written documents and prior art evidence 82 patent law and traditional knowledge and genetic resources, disclosure requirement 73–4, 77, 84–92 and biotechnology sector 89, 90 certification 86, 92 effectiveness limits 88–92 exclusive rights, exclusion of 88 geographical limitations and territoriality principle 88 geographical origin requirement 85, 91, 92 international patent law compatibility 89–91 mandatory disclosure requirement 87–8 mutual supportiveness promotion 84–5 national differences 86 non-compliance consequences 86–8 prior informed consent and mutually agreed terms 85–6, 87 proportionality considerations 90 sanctions outside of patent law 87 use outside scope of patent law 88–9 patents disclosure of origin requirement 317 exclusive rights for a limited period of time 17, 18 invention protection routes 18–19 origins 8 patents, databases and prior art 18, 132–53, 580 confidentiality breach or information misuse by third parties 134 future direction 152–3 patent office examiners 135, 140, 143 public accessibility of information 134–5 patents, databases and prior art, prior art extension to non-publicly available traditional knowledge 147–52 biotechnology and innovation 151 effectiveness limits 149–52 innovation and dissemination issues 151–2

and international patent law compatibility 150 national law 148–52 and novelty determination 149, 150–51 restricted databases, use of, and confidentiality 149 and territoriality principle 149–50 patents, databases and prior art, traditional knowledge accessibility 136–41 communities’ involvement 136–9, 141 confidentiality concept 136–7 public knowledge, public use or offer for sale 139, 140, 141 publications 139–41 restricted access control 137 sacred or special cultural value knowledge 136–7 patents, databases and prior art, traditional knowledge databases 141–7 community traditional knowledge databases 142 database definition 141–3 external traditional knowledge databases 142 open databases 144 prior art and accessibility of third parties 143–7 registration 142 restricted databases and confidentiality 144–7 traditional knowledge registers 142–3 paternity right, copyright, EU, moral rights 52 Paterson, R. 118, 332 patrimony, national laws protecting cultural heritage 458–60, 469, 472 Pennisi, E. 421, 514 performers’ rights, public domain and intangible cultural heritage 330, 335, 336, 338 permanent collections in cultural heritage institutions 42, 44 ‘personal value’ of confidential information, and trade secrets 125 perspex protection, street art and graffiti 178, 179, 181, 185 Peru National Confidential Register 145, 149 Sumaq Sunqo potatoes 70 TK National Public Register 145–6 phonograms 217, 381, 382, 495 photography cataloging of rights associated with 447–9 copyright law and art practice of cultural appropriation 166 public domain works, cultural heritage platforms and new business models 496–8

606  Research handbook on intellectual property and cultural heritage short term of protection, Internet, digital images and copyright 206–7 street art and graffiti, preservation and heritagisation 182–5 Pietrobruno, S. 504, 510 Pigliasco, C. 548, 549, 550 Pila, J. 104, 107 platforms see cultural heritage platforms and new business models political interest bridging intellectual property and cultural heritage law 355 cultural heritage platforms and new business models 483 see also national laws Poorna, L. 83, 144 Pop Art 159 Portugal, Plant Genetic Resources Registry 80 Posey, D. 145, 392 preferential treatment, street art and graffiti, preservation and heritagisation 177–8 preservation 3D printing of cultural heritage 575–8 copyright, EU, permission to make copies 41–2 cultural heritage platforms and new business models 491 street art see street art and graffiti, preservation and heritagisation Prince, R. 165 prior art design 25 design, exisiting (prior art) and new 107–8, 109 patent law and traditional knowledge and genetic resources 76–7, 78–9, 81–2, 83 and patents see patents, databases and prior art prior informed consent ‘best practices’ to protect Indigenous knowledge 316, 317–20, 322 patent law and traditional knowledge and genetic resources 73–4, 78, 80, 84, 85–6 private copying exception, Internet, digital images and copyright 208 private international law, stolen works of art see disputes and private international law, stolen works of art private international law, illegally exported works of art see disputes and private international law, illegally exported works of art private party claims for return of cultural objects 464

production and creativity, relationship between 160–61 proportionality principle, classification of national cultural treasures 287 Prott, L. 31, 32, 295, 393, 523, 529, 532 public domain 3D printing of cultural heritage 569–70, 571, 572–5 alternative dispute resolution 548 and ‘best practices’ to protect Indigenous knowledge 313–14, 315, 319–21 copyright law and art practice of cultural appropriation 168–9 cultural heritage platforms and new business models 485–6, 495–9 design 24–5 disputes and private international law, illegally exported works of art 530 Internet, digital images and copyright 206–7 museums of archaeological materials 405–7, 408–9, 411 patent law and traditional knowledge and genetic resources 81–2 patents, databases and prior art, traditional knowledge accessibility 139, 140, 141 reproductions of out-of-copyright works of art see copyright, EU, reproductions of out-of-copyright works of art in the public domain street art and graffiti, preservation and heritagisation 175, 182 trade secrets and unfair competition law 125 works of art, digital or digitised 217–20, 224–5, 226–8, 232, 233–4 public domain and intangible cultural heritage 327–39, 581 copyright and performers’ rights 330 intangible cultural heritage definition 329–30 international developments 328–30 misappropriation, understanding of 331–2 products and processes 331–3 Western view 332–3 public domain and intangible cultural heritage, HIPAMS project 333–8 community nature of ICH and individual/ collective nature of IP rights 335 copyright and performers rights 335, 336, 338 Creative Commons licences and digital social media 336, 337 ethical codes 336–7 heritage-sensitive IP and marketing strategies 334–5 ICH identification 335–7 and misappropriation 337–8

Index  607 roots and fruits tool 335–6 public entity involvement, street art and graffiti 178–9 public goods, trademarks 59 public interest cultural heritage protection as justifiable see classification of national cultural treasures, States’ discretion, cultural heritage protection as justifiable public interest EU Orphan Works Directive 382 street art, commissioned works 185–6 public policies see national laws publications, patents, databases and prior art 139–41 quality schemes for agricultural products and foodstuffs 243–4 see also geographical indications Quintais, J. 202, 203, 511 quotation rights, Internet, digital images and copyright 208–10 Rai, S. 76, 148, 149 Rajam, N. 113–30, 580 Ramalho, A. 251, 255, 260, 261, 264, 265, 266, 267, 268, 269, 271 Rauschenberg, R., ‘combined paintings’ 159 Raustiala, K. 72, 97, 111, 304 reciprocity/where sale takes place, artist’s resale right 364–5 reconstructed archaeological artefacts 404–5 recordations, museums of archaeological materials 399, 401, 405–7 regime complexity theory, bridging intellectual property and cultural heritage law 354–5 regional galleries, libraries, archives and museums (GLAMs) 484–5, 486, 489 regional protection design 24 specialised organisations, bridging intellectual property and cultural heritage law 353–4 trademarks and geographical indications 21–2 registration ‘best practices’ to protect Indigenous knowledge, questions over 315–16 design law 107–8, 109–10 trade secrets and unfair competition law 121–2 trademarks, cultural heritage protection 61, 67–8 see also certification; licensing Reichman, J. 114, 390

Reid, J. 19, 83, 132, 137, 145, 153 ‘remakes’ of older videogames 515 remixes, Internet, digital images and copyright 202–3 removals and relocations, street art and graffiti 172–7 renewal fees and trademark duration 68–9 see also time factors Renold, M.-A. 419, 420, 552 renvoi theory, stolen works of art 525, 526–7, 528 reproductions cultural heritage platforms and new business models 492–3, 494 Internet, digital images and copyright 200 out-of-copyright works of art in the public domain, EU see copyright, EU, reproductions of out-of-copyright works of art in the public domain unauthorised, intellectual property, cultural heritage and human rights relationship 302–5 videogames as digital cultural heritage, EU legal framework 508, 511 republishing and translations, classification of national cultural treasures 292 reputation, company reputation and trademarks 59 res in transitu, stolen works of art 521 resale right see artist’s resale right research organisations, text mining and data analytics 387 resharing images, Internet and social media 204 restitution digital, museums of archaeological materials 410–11 management issues for cultural heritage institutions 417, 418–19, 420 restricted databases see under patents, databases and prior art return of cultural objects classified as national treasures 279–80 Richardson, J. 436, 438 Ricketson, S. 28, 119, 124, 208, 254, 361, 370 rights assessments, cultural heritage institutions see IP management for cultural heritage institutions, rights assessments rightsholders see ownership Riley, A. 62, 305, 306, 548, 549, 550 Rimmer, M. 56, 303, 367, 369, 370, 371 Rio Convention 318, 354–5 risk assessments, IP management for cultural heritage institutions 450–52 Roberts, S. 545, 546, 549, 553, 554, 560 Robinson, D. 303, 312

608  Research handbook on intellectual property and cultural heritage robotics, and AI-generated works of art and copyright 262–3 roots and fruits tool, HIPAMS project 335–6 Rosati, E. 194, 233, 514 Rosen, J. 214, 504 Roussos, K. 413–38, 582–3 royalties, artist’s resale right 363–4, 367, 368, 369, 370 Rudich, R. 82, 135 Ruiz Muller, M. 127, 318 sacred or special cultural value knowledge 136–7 see also knowledge protection Sainsbury, M. 26, 94, 95, 111, 112 Salib, P. 174, 179 Samuelson, P. 13, 254, 386, 390 Sanders, K. 94, 340 Sartori, A. 434, 503 Saunderson, F. 199, 201 Scafidi, S. 161, 163, 168, 307 scent marks and geographical indications 20 Schönberger, D. 250, 267, 271 Schovsbo, J. 113–30, 580 Schreiber, H. 340–57, 507, 581–2 scientific progress, right to enjoy benefits of 298, 299 seizures, looted objects on the art market 470–73 Senftleben, M. 60, 64, 65, 110, 124, 196, 197, 199, 208, 210 Shaheed, F. 298, 300, 303, 309 Sharoni, S. 63, 69, 71, 72, 161 Shehade, M. 551, 552, 555 Shin, J.-S. 83, 141 short-term patents 18–19 Shyllon, F. 340, 547, 548 Siehr, K. 519, 520, 521, 522, 523, 524, 529, 530, 532, 533, 538, 541 Sinanidou, M. 275–94, 581 Singh, N. 84, 147 Slade, A. 90, 152 Smith, L. 331, 394 social inclusion theory 429–31 social media and audience development process 426–7 Creative Commons licences and digital social media 336, 337 and Internet see Internet, digital images and copyright, social media software emulation, and videogames 508, 514–15 Solovy, E. 90, 151 Spain, Megakini.com v. Google Spain 209 special needs groups and social inclusion 430–31 stakeholder involvement alternative dispute resolution 550

copyright, EU, out-of-commerce works 49–50 cultural heritage platforms and new business models 481–3 management issues for cultural heritage institutions 415 see also third party involvement Stamatoudi, I. 1–5, 8–37, 41, 44, 55, 206, 214–35, 278, 396, 402, 413–38, 467, 490–91, 551, 553, 559–60, 561, 564, 579–84 standing to sue, stolen works of art 519 State involvement see ‘national’ headings Stik 173, 176–7 stock images repositories see Internet, digital images and copyright, stock images repositories Stokes, S. 359–74, 582 stolen works of art see disputes and private international law, stolen works of art see also works of art Stoll, P.-T. 58, 348 Straus, J. 88, 90, 91, 151 streaming of collections IP management for cultural heritage institutions 446 works of art, digital or digitised 218, 219, 225 street art and graffiti, preservation and heritagisation 170–90, 580 alteration and erasure toleration 182 artistic merit consideration 180 artistic subcultures 171 authenticity loss and conflicting rights of members of the public 181–9 commercial exploitation 171–2 commissioned works and public opinion 185–6 community aversion to graffiti and street art 185–6 demonstrations against art removals 173–4 ex situ conservation and free public access 175, 182 gallery exhibitions 174 heritagisation, opposition to 179–80 heritagisation, time factors 180 illegal destruction of artworks 172 illegal graffiti, photographs of 183 in situ preservation and perspex protection 178, 179, 181, 185 local community involvement 180 moral right of integrity to oppose removal and relocation 174–5, 177 online polls 186–7 origins 170–71

Index  609 photographic documentation as alternative tool 182–5 public entity involvement, issues with 178–9 removals for profit 175–7 removals and relocations 172–7 restoration by artists 173–4 streetscape as structural element of artworks 182 well-known artists and preferential treatment 177–8 see also works of art sub-rights assessments, IP management for cultural heritage institutions 446–7 sui generis right AI-generated works of art and copyright 267–9 bridging intellectual property and cultural heritage law 345 copyright, EU, out-of-commerce works 47 digital monopolies 389–90 geographical indications 243, 246 patent law and traditional knowledge and genetic resources 79–80 Sullivan, A. 410, 489 Sunder, M. 56, 59, 67, 72, 107, 245, 303, 312–13, 319, 321, 322–3 sustainable development bridging intellectual property and cultural heritage law 354–5 management issues for cultural heritage institutions 414–15 three-step balancing process, intellectual property, cultural heritage and human rights relationship 309 Suthersanen, U. 96, 99, 102, 103, 200, 207, 319, 342, 392–412, 509, 510, 582 Sweden, Olsson 222 Switzerland Beierwaltes and Aboutaam antiquities 477–8 bona fide purchase 518, 520–21 celestial globe and warehouse fire 558–9 Koerfer v. Goldschmidt 524 Private International Law Act 539, 540 stolen works of art and bona fide purchase 518 Tao, E. 191, 192, 198 Taric-Koch, A. 85, 88 Taubman, A. 69, 314, 315, 318, 320, 323 technological protection measures bypassing, and videogames 515–16 Internet, digital images and copyright 196, 200–201 works of art, digital or digitised, EU case law and linking 232–4

temporary or incidental copies of digitised works of art 230 Terras, M. 201, 495 territoriality principle 9 patents, databases and prior art 149–50 trademarks and geographical indications 21–2 text mining and data analytics, EU copyright and digitisation of cultural heritage 375–6, 386–8 Thikkavarapu, P. 84, 153 third party involvement alternative dispute resolution 554–5, 556–60, 561–2 cultural heritage institutions 16 design law and intangible cultural heritage 96 patent law and traditional knowledge and genetic resources 77–80, 83–4 patents, databases and prior art 134, 143–7 see also stakeholder involvement three-step balancing process, intellectual property, cultural heritage and human rights relationship 307–10 three-step test classification of national cultural treasures 288–9 works of art, digital or digitised 231 threshold of protection AI-generated works of art and copyright 260, 268, 269, 271 artist’s resale right 364, 366, 367, 368, 371 Internet, digital images and copyright 200, 206 trademarks, cultural heritage protection 67 time factors and duration cultural heritage platforms and new business models 489 design law and intangible cultural heritage 105–7 disputes and private international law, stolen works of art 524 Internet, digital images and copyright 193 IP management for cultural heritage institutions 449–50 patent law and traditional knowledge and genetic resources 78 patents and exclusive rights for a limited period of time 17, 18 trademarks, cultural heritage protection 68–9 trademarks and geographical indications 21, 25, 44 time-based media, IP management for cultural heritage institutions 443 Tkarihwaiéri Code of Ethical Conduct 117

610  Research handbook on intellectual property and cultural heritage Torremans, P. 9, 38–55, 104, 107, 235, 308, 482, 491, 495, 579 tourism, cultural 423–5 trade secrets and unfair competition law 27–8, 113–30, 580 benefit-sharing agreements 125, 126, 127 breach of confidence actions 127 commercial values and practices 122–3, 124–5, 126–7 competition, national understanding of 124 contractual obligations, issues with lack of 126–7 criteria clarification, need for 130 cultural assets 123–8 exploitative practices, addressing 129–30 free and informed consent of information dispersal, effects of 121 future direction 128–30 genetic resources, protection of 116–17 illicit disclosure of information 121, 125 indigenous mobilisation towards protection of traditional resources 129 information, nature of, and ownership 119–20 innovation and diversity in intangible cultural assets 115–18 intangible cultural assets, trade secrets use in protection 118–23 intellectual property and cultural heritage, overlaps and clashes 27–8 intercultural cooperation and understanding, promotion of 129 misappropriation of secrets 125–7 ‘personal value’ of confidential information 125 ‘public domain’ challenges 125 ‘reasonable steps’ towards protection and control of information 121–2 registers, inventories and databases, use of 121–2 secrecy categories 120–22, 130 shared confidentiality within and between communities 127–8 traditional cultural expressions, protection of 117–18 traditional knowledge 114, 115–16, 117–18, 119–20, 121, 122, 126–7, 128 and TRIPS Agreement 118–19, 122, 123, 125 undisclosed information protection 123 unjust enrichment issues 126 value transformation 125 trademarks 56–72, 579 company reputation and customer loyalty 59 conditions to gain protection 60–61

design comparison 24 exceptions 61 fair use or descriptive terms 61 and geographical indications 239 international framework 59–60 national law and scope of protection 60 non-conventional/non-traditional marks 60 public goods 59 trademark definition 60 trademark as distinctive sign 59 trademark law 58–62 and traditional cultural expression 57–8 unauthorised use of duplicate or similar mark 59 trademarks, cultural heritage protection 62–71 certification marks 69–70, 71 collective mark 69, 70–71 defensive mechanisms 62–7 and digitisation 67 distinctiveness and registration 61, 67–8 false or misleading claims as to the authenticity or origin, prevention of 65–6 graphic representation of signs 68 grounds for refusal 64–5 misappropriation and commodification of indigenous words, signs and forms (disparaging marks) 62–4 non-traditional trademarks 68 offensive mechanisms of protection 67–71 renewal fees and duration 68–9 threshold of protection 67 ‘use in commerce’ criteria 68 trademarks and geographical indications 20–23 certification marks 20 collective marks 20, 23 cultural heritage institutions 22–3 design comparison 24 distinctiveness 20, 21 duration 21 exclusive rights 21 international registration 22 refusal grounds 21 regional protection 21–2 representations 20–21 scent marks 20 territoriality 21–2 unitary protection 22 traditional craftsmanship and originality, artist’s resale right 370–71 traditional cultural expression 8, 16, 22, 23, 28–9, 33 copyright law and art practice of cultural appropriation 161, 162–3, 166, 167

Index  611 design law and intangible cultural heritage 97, 98, 107–8 geographical indications 241–2, 244, 245–6 intellectual property, cultural heritage and human rights relationship 299, 300, 303 trade secrets and unfair competition law 117–18 and trademarks 57–8 traditional knowledge and modern knowledge, distinction between 322 and patent law see patent law and traditional knowledge and genetic resources and patents see patents, databases and prior art, prior art extension to non-publicly available traditional knowledge; patents, databases and prior art, traditional knowledge accessibility trade secrets and unfair competition law 114, 115–16, 117–18, 119–20, 121, 122, 126–7, 128 see also knowledge protection transformative use doctrine 301–2 transitional knowledge and trade secrets and unfair competition law 119–20 see also knowledge protection translations 292 Trapova, A. 94–112, 580 treasure trove galleries and auction houses, looted objects on the art market 463–4 museums of archaeological materials 402–3 TRIPS Agreement see WTO TRIPS Agreement Tunis Model of Law on Copyright for Developing Countries 313, 344–5 Turkey Guennol Stargazer idol dispute 468–70 Lydian Hoard 463–4, 468 Udgaonkar, S. 19, 76, 132, 134, 141, 145 UK Artists’ Collecting Society 364, 365–6 artist’s resale right see artist’s resale right, EU Directive and UK implementation British Museum and Benin Bronzes 475–6 British Museum and Parthenon Marbles 468, 476, 564 Copyright, Designs and Patents Act 302 copyright protection and moral rights 54–5 copyright and reproductions 39 Design and Artists’ Copyright Society 364, 365–6, 367 ‘Know Your Place’ platform 486

Lakota Ghost Dance Shirt repatriation claim, Glasgow 561 London Graffiti Tunnel 179, 182 stolen works of art and bona fide purchase 518 Sutton Hoo collection and ownership claims 400–401, 402–4 Treasure Act 402–3 unpublished archival materials and copyright duration 405 UK, cases Attorney General of New Zealand v. Ortiz 529–30 Bumper Development Corporation v. Commissioner of Police of the Metropolis 519 Confetti Records, Fundamental Records & Andrew Alcee v. Warner Music 54 Creation Records Ltd v. News Group Newspapers 194 Douglas v. Hello! Ltd 125 Hyperion Records v. Sawkins 572 Iran v. Berend 525–8 John Walmsley v. Education Limited t/a Oise Cambridge 52 King of Italy v. Marquis Cosimo de Medici 529 L’Oreal v. Bellure 332 Norton v. Dashwood 33–4 Phillips v. Lamdin 33, 34 Public Relations Consultants Association 228–31 Samsung v. Apple UK 103 Winkworth v. Christie, Manson & Woods Ltd. 518, 519, 520, 526–7 UN Convention on International Settlement Agreements resulting from Mediation (Singapore Convention) 557–8 UN Convention on the Recognition and Enforcement of Foreign Arbitral Awards (New York Convention) 562 UN Declaration on the Rights of Indigenous Peoples 98, 114, 117, 300 UN Permanent Forum on Indigenous Issues 115 UN Sustainable Development Goals 309 UNESCO Convention 32, 278, 534, 551, 558 and alternative dispute resolution 551, 552 galleries and auction houses 457 Illicit Import, Export and Transfer of Ownership of Cultural Property 277 Intergovernmental Committee for Promoting the Return of Cultural Property to its Countries of Origin 551, 558

612  Research handbook on intellectual property and cultural heritage Prohibiting Illicit Import, Export and Transfer of Ownership of Cultural Property 32, 34–5, 480–81 Protection of Diversity of Cultural Expressions 300 Protection of Intangible Cultural Heritage 33, 95, 101, 113, 117, 238, 239, 300, 327, 329–30, 331–2, 338, 346, 504 Protection of Underwater Cultural Heritage 34 Protection of the World Cultural and Natural Heritage 32, 34, 95, 237 Recommendation on the Safeguarding of Traditional Culture and Folklore 237–8, 240, 345–6 unfair competition law, and trade secrets see trade secrets and unfair competition law Unidroit Convention 32, 34–5, 277, 457–8, 526, 527, 535 Universal Copyright Convention 342–3 Universal Declaration of Human Rights 282, 296, 302, 309, 480 universal digital library, move towards 376–9 unjust enrichment issues, trade secrets and unfair competition law 126 unpublished archival materials, museums of archaeological materials 405, 409 unqualified authorisation, Internet, digital images and copyright 194–5 unregistered designs, design law and intangible cultural heritage 25, 100, 103 US 5Pointz mural point 172, 178, 179–80, 183, 184 Authors Guild of America and the Hathi Trust, Orphan Works Project 377–8 Baltimore Museum, 3D scan data of public domain sculptures 573–4 Columbia University Libraries 445, 447–9, 452–3 Copyright Act 165, 306 copyright law and transformative use doctrine 301 design patents 103–4 Digital Millennium Copyright Act 516 Digital Public Library of America 443 Euphronios Krater dispute 465–8 fair use test 377, 378–9, 382 Foreign Sovereign Immunities Act 476–7 Frick Collection, New York 565, 577 Getty Conservation Institute 556 Getty Museum, cave temples of Dunhuang 566 Getty Museum and looted property 467–8 graffiti origins 170–71

illegal graffiti photographs 183 Indian Arts and Crafts Act 66 Lanham Act 60 Leahy-Smith America Invents Act 134–5 MATRIX app and preservation of digital objects 485 Moving Image Archive Preservation Program, New York University 446 National Stolen Property Act 460 Native American Graves Protection and Repatriation Act 556 New York City Landmark Preservation Commission and street art 179–80 Patent Act 82, 134 Patent and Trademark Office 65, 149 Patent and Trademark Office, turmeric patent application 81, 82, 139–40 patrimony laws 460 Redskins trademark 64, 66 Stanford University, ‘Michelangelo Project’ 3D scan data 574, 575 stolen works of art and bona fide purchase 518 Tilted Arc installation, New York 185–6 trademark law and cultural heritage 63–4 Turkey and Guennol Stargazer idol dispute 468–70 Visual Artists Rights Act 172, 174–5 Zia Pueblo people of New Mexico, illicit disclosure of information 121 US, cases Agence France Presse v. Morel v. Getty Images (US) 201 Authors Guild Inc v. Google 377, 379 Authors Guild v. Hathi Trust 377–8 Autocephalous Greek Orthodox Church of Cyprus v. Goldberg & Feldman Fine Arts Inc. 521 Autocephalous Greek-Orthodox Church v. Goldberg & Feldman Fine Arts 461–3 Barnet as Tr. of 2012 Saretta Barnet Revocable Tr. v. Ministry of Culture & Sports of the HellenicRepublic 476–7 Beierwaltes v. L’Office Federale De La Culture De La Confederation Suisse 477–8 Blackhorse v. Pro-Football 64 Bridgeman Art Library v. Corel Corp 496–7 Calder v. Bull 455 Campbell v. Acuff-Rose Music 378 Cariou v. Prince 165 Castillo v. G&M Realty 172 Close v. Sotheby’s Inc 366 Cohen v. G&M Realty 172, 180, 183

Index  613 Dastar Corp. v. Twentieth Century Fox Film Corp. 105 Dupont. v. Rolfe Christopher 121 Feist Pub. v. Rural Telephone Service 571 Feist Publications v. Rural Telephone Service Co 404 Flava Works v. Gunter 379 Green v. Biddle 455 Harjo v. ProFootball 64 Iancu v. Brunetti 64 International News Service v. Associated Press 332 Int’l Seaway Trading Corp. v. Walgreens Corp. 104 Jeanneret v. Vichey 537 Kelley v. Chicago Park Dist. 174 Kelly v. Arriba Soft Corporation 197 Kewanee Oil Co. v. Bicron Corp. 122 Key-Bar v. Curv Brands 104 Kunstsammlungen zu Weimar v. Elicofon 522, 528 Matal v. Tam 64 Menzel v. List 528 Meshwerks v. Toyota 571 Naruto v. Slater (Monkey Selfie) 194, 266 Navajo Nation v. Urban Outfitters 70 Perfect 10 v. Amazon.com 379 Phillips v. Pembroke Real Estate 174 Religious Technology Center v. Robin Scott 123 Republic of Turkey v. Metropolitan Museum of Art 463–4 Robins v. Zwirner 576 Safani Gallery v. The Italian Republic 478 Solomon R. Guggenheim Foundation v. Lubell 524, 528–9 Ticketmaster v. Microsoft 221 Tilousi v. Arizona State University 116 United States v. A 10th Century Cambodian Sandstone Sculpture 470–71 United States v. An Antique Platter of Gold 460 United States v. Hollinshead 460 United States v. McClain 460 United States v. One Tintoretto Painting 519 United States v. Schultz 460, 469 University of Connecticut v. Freedom of Information Commission 122 Vineberg v. Bissonnette 464 Washington Post v. Total News 221 ‘use in commerce’ criteria, and trademarks 68 user agreements, Internet and social media 198 user-generated/created content, Internet, digital images and copyright, users’ perspective 202–3

users digital images see Internet, digital images and copyright, users’ perspective and digitisation services and cultural heritage platforms 482–3 informed user and design law 101, 103 Valeonti, F. 200, 201, 205 Van der Linden, G. 423, 429 Vassiliadis, C. 426, 436, 438 Velioglu, E. 289, 470, 471 Venezuela, collective intellectual property rights 79 Venturini, G. 518, 520 vested rights, stolen works of art 520, 524 Vézina, B. 121, 163, 491, 500 videogames as digital cultural heritage 502–16, 583 adaptation and loss of originals 512–14 born-digital cultural heritage 443, 502, 504–5, 506, 507, 508, 510–11, 512, 514 cultural relevance and historical legacy 506, 512 ‘digital’ cultural heritage 503–4, 506 digital repositories of videogame ROMs, suggestion of 514 Europeana archive suggestion 514 expression medium of videogames 505–6 intangible cultural heritage definition 504 licensing 509, 511, 513, 514 new interpretations, creation of 515 ‘remakes’ of older games 515 Sega Mega Drive example 513 software emulation, use of 508, 514–15 videogame history, museums showcasing 513–14 videogames as digital cultural heritage, EU legal framework 506–14 copyright protection issues 507–9 copyright and reproductions 508, 511 financial value of cultural heritage 507, 509 orphan works and cultural heritage institutions 509–10 out-of-commerce works 511, 513 technological prevention measures, bypassing 515–16 virtual reality projects 500–501 see also AI-generated works of art and copyright Volken, B. 96, 107 Von Lewinski, S. 56, 162, 217, 218, 315, 316, 385 Voon, T. 249, 351 Vrdoljak, A. 342, 419, 420, 456

614  Research handbook on intellectual property and cultural heritage Waelde, C. 194, 327–39, 581 Wallace, A. 201, 207, 410, 411, 496, 497, 498, 499, 500 Wallot, M. 90, 152 Webber, P. 76, 134 Weber, M. 517–41, 583 Webster, J. 179, 187 Weidlich, S. 316, 318, 319 Wendland, W. 141, 163, 305–6 Western view multicultural societies and heritage boom 343 negotiators and biases and cultural constructions 319–20, 321 public domain and intangible cultural heritage 332–3 WHO, Bonn Guidelines on Access to Genetic Resources 116 Wikimedia Commons 486, 497 Wikimedia platforms 204–5 Wildgans, J. 480–501, 583 WIPO Arbitration and Mediation Center 555 Beijing Treaty on Audiovisual Performances 17, 29 Copyright Treaty 217 Design Law Treaty, design law and intangible cultural heritage 99 Gap Analysis on the Protection of Traditional Cultural Expressions 98 ICOM-WIPO Mediation Service 551, 558 Intergovernmental Committee on Intellectual Property and Genetic Resources 121–2, 125, 236, 240, 247, 303, 329 International Bureau 25, 26 international registration of trademarks 22 Performances and Phonograms Treaty 17, 29, 217 Practical Guide to Intellectual Property for Indigenous Peoples and Local Communities 247 traditional cultural expressions 117 and traditional knowledge 29 WIPO/UNESCO Model for the Protection of Expressions of Folklore against Illicit Exploitation 241–2, 345 Working Group on the Intellectual Property Aspects of Folklore Protection 237 Woodcock, V. 76, 134, 150 works of art AI-generated see AI-generated works of art and copyright appropriation see copyright law and art practice of cultural appropriation, appropriation art

cataloging of rights associated with photographic materials and artworks 447–9 illegally exported see disputes and private international law, illegally exported works of art looted objects on the art market see galleries and auction houses, looted objects on the art market stolen see disputes and private international law, stolen works of art see also street art and graffiti, preservation and heritagisation works of art, digital or digitised 214–35, 581 artist’s resale right 372–3 broadcasting and on-demand services 218, 225–6 communication and making available to the public right 217–20, 224–5, 226–8, 232, 233–4 computer programs and copyright databases 219 dissemination impact 216 future direction 234–5 licensing 228–9, 232–3, 235 national case law 221–3 and non-fungible tokens (NFTs) 40–41 and reasonable use of Internet 222–3 streaming 218, 219, 225 works of art, digital or digitised, EU case law and linking 223–31 browsing 228–31 C More Entertainment case 225–6 cached copies and technological process 230–31 for-profit links 227–8 framing 231–4 GS Media case 226–8 Public Relations Consultants Association case 228–31 Svensson case 206, 223–5, 227, 232, 233, 490–91 technological protection measures 232–4 temporary or incidental copies 230 three-step test for on-screen and cached copies 231 VG Bild-Kunst case 194, 197, 215–16, 232–4 World Heritage Convention 344 Wright, E. 303, 315 WTO GATT Agreement 277, 351 WTO TRIPS Agreement 75, 76, 78, 79 bridging intellectual property and cultural heritage law 353 design law and intangible cultural heritage 99

Index  615 geographical indications 242, 243 intellectual property, cultural heritage and human rights relationship 304 patent law and traditional knowledge and genetic resources 75, 76, 78, 79, 89–90, 91–2 patents, databases and prior art 133, 147, 150, 151–2 trade secrets and unfair competition law 118–19, 122, 123, 125 trademarks 59–60, 61, 68

unfair competition protection 27–8 Xanthaki, A. 97, 108, 430 Yeşiloğlu, S. 198, 199 Young, A. 174, 175, 178, 181 Yu, P. 90, 151, 295–311, 316, 319, 547–8, 581 Zimmerman, E. 261, 262, 265, 266 Zografos, D. 65, 67, 70, 71, 243, 246