Copyright Infringement, Fair Use and Public Interest Exception: High Court Decision of Angella Katatumba v. Anti-Corruption Coalition of Uganda

Recently, the High Court in Uganda delivered an important judgment in the case of Angella Katatumba v. Anti-Corruption Coalition of Uganda Civil Suit No. 307 of 2011. A copy of this judgment is available here. In this case, Katatumba approached the Court for general, aggravated, exemplary, punitive damages against Anti-Corruption Coalition of Uganda (ACCU), a non-governmental organisation, for copyright infringement of her song: “Let’s Go Green” (featured above). The IP-savvy Hon. Mr. Justice C. Madrama presided over this matter and found in favour of Katatumba and awarded the singer an award of general damages in the sum of Twenty Five Million Uganda shillings (Ushs 25,000,000/=), aggravated damages of Thirty Million Uganda shillings (Ushs 30,000,000/=), an award of interest at 8% per annum from the date of judgment till payment in full and the costs of the suit.

This blogger believes that this judgment in Uganda is significant for Kenya and other common law copyright jurisdictions as it addresses several important aspects of civil actions for copyright infringement, including copyright ownership, evidentiary matters and fair use/fair dealing defences.

In any copyright infringement case, there are three vital elements that must be established, namely access, substantiality and copyrightability. In case of access, both parties agreed in the pre-trial conference that the song in question “Let’s Go Green” had been released in the market as both audio and audiovisual material marketed in hardcopy as well as soft versions on YouTube as well as other soft media.

With regard to substantiality, it was agreed by the parties at the pre-trial stage that in or around May/April 2011, in a campaign against the destruction of Namanve Forest, ACCU caused to be made on various FM stations in Uganda advertisements in which a portion of the song in question “Let’s Go Green” was used. Substantiality is an important doctrine in copyright infringement. In such cases, the question to be asked is whether the part infringed forms a substantial part of the copyrighted work. Whether the part taken is substantial largely depends on its quality as well as quantity. On this ground, ACCU’s counsel argued that there was no reproduction or imitation of the song in audio format and that the portion of the song that was used was within fair use permissions of the Uganda Copyright and Neighbouring Rights Act 2006 therefore the portion used by ACCU was “negligible” and “unsubstantial”. However, the court disagreed and held as follows:-

“I have duly listened to the exhibited CD containing both the song “let’s go green” and the advertisement jingle. It is quite clear that the structure of the song is the same. It starts with the “let’s go green” song and an appeal for people to take action on the environment (…) Finally it is indicated in the advertisement jingle that the message was brought by the Anti Corruption Coalition Uganda (the Defendant). It ends with the Plaintiff’s song “let’s go green”. While the verbal messages are being given, the music keeps on playing in the background the whole time. What happened is that the volume was only tuned down to make the message audible and then increased again to end with the song “let’s go green”. The Plaintiff’s song “let’s go green” was used for the entire advertisement.”

The final limb of the infringement test, copyrightability, was the most interesting in this case due to a fatal error made by ACCU’s counsel and this blogger’s friend, Paul Asiimwe of SIPI Law. Authorship is at the heart of copyright since it is the author that expends sufficient on making the work to give it an original character and reduces the work to material form. In the present case, the fatal error made by ACCU was to agree at the pre-trial stage that Katatumba was the composer; producer and copyright holder of the musical production/recording entitled “Let’s Go Green”. Therefore the agreed issues for trial were simply: 1) Whether the Defendant infringed the Plaintiff’s copyright? 2) Whether the Defendant’s actions fall within the fair use exception? and; 3) Whether the Plaintiff is entitled to the remedies sought?

This fatal error on the part of ACCU becomes clear when ACCU counsel makes seemingly persuasive submissions that the song in question could either be a work of joint authorship or a commissioned work. In the course of ACCU’s submissions, it is clear that the song in question is actually a collaboration between two authors namely Jocelyn Keko (alias “Keko”) and Angella Katatumba. Therefore had this issue been raised at the pre-trial stage by ACCU, the court would have been forced to determine whether Katatumba has adduced sufficient proof that Keko had assigned all her rights in the song to Katatumba. In the absence of this proof of assignment, ACCU would have been able to argue convincingly that Katatumba lacks locus standi to sue for infringement as she is not the sole author/owner of the work in question. Secondly, in the course of the trial, it was revealed that the British Council in 2010 commissioned the song in question and that Katatumba was paid Uganda shillings 7,800,000/=. Katatumba stated this both in her examination in chief which is in writing as well as during cross-examination. No details of the “commissioning” was elicited during cross-examination. In the re-examination she testified that she was paid by the British Council and made it clear that they were “just endorsing and they did not purchase rights”. Again, had this issue of commissioned work been pursued by ACCU at the pre-trial stage, it would have become an issue for determination by the court in making its judgment.

In this case, it appears that ACCU chose to base its entire defence on the principle of fair dealing.
The principle of fair dealing in copyright is specified, rule-based and statutory in nature. In Kenya, the fair dealing provisions are in sections 26-29 of the Copyright Act, which covers, inter alia, instances where the work is used for private, academic purposes; criticism or review, reporting current events etc. In Uganda, the fair dealing provisions are in section 15 (1) of the Copyright and Neighbouring Rights Act. Of particular interest is the treatment by Madrama J. of “public interest” as a possible defence against copyright infringement. The learned judge rightly observes as follows:

“(…) what should be published should amount to criticism of the work and not a use of the work for another collateral interest such as propagating a campaign for conserving forests as in the Defendant’s case. This is because the Plaintiff’s work is not in issue and it is not the purpose of the Defendant to inform the public about the Plaintiff’s work. Illustrations of public interest cases include publication involving the disclosure of criminal conduct or misconduct generally of the copyright owner. It involves review or criticism of the work and how much of the work can be used fairly depends on the circumstances of each case.”

Generally speaking, the public interest exception allows copyright protection to be denied on the grounds that a particular work undermines the public interest. Therefore where this exception is raised in cases of infringement, the court will not grant any remedies to the copyright owner. For instance, some have argued that in the locus classicus Feist v. Rural Telephone, the white pages were not copyrightable partly because the public interest demanded that it be published and made available by the state agency.

Constitutionalisation of Intellectual Property in Africa: Some Experiences from Kenya

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This month’s edition of the World Intellectual Property Organization (WIPO) publication “WIPO Magazine” contains an article on Egypt and Tunisia’s new constitutions which ‘recognize the importance of the knowledge economy and intellectual property (IP) rights’. This article by one Ahmed Abdel-Latif titled: “Egypt and Tunisia Underscore the Importance of IP” reads in part:

“For the first time, the constitutions of these two countries provide for the protection of IPRs although in different ways. In both constitutions, the wording is succinct: the Egyptian Constitution stipulates that the “State shall protect all types of intellectual property in all fields” (Article 69) and the Tunisian Constitution indicates that “intellectual property is guaranteed” (Article 41).”

In addition, the article notes that ‘both constitutions contain a number of clauses on the protection of culture, health, and heritage which can influence both the interpretation and implementation of the IP rights clauses’.

With regard to the “challenge of implementation” of the IP rights clauses in the two constitutions, the article astutely points out that:-

“(…) ultimately the manner in which these clauses are implemented through national laws and judicial decisions will be critical in ensuring that a balanced approach to IP protection is adopted; one which takes into account the level of development of each country and one which is supportive of their respective public policy objectives.”

At this juncture, it may be instructive for this blogger to share some views on Kenya’s experiences thus far with constitutionalised IP protection since it begun in 2010. The pre-2010 Constitution of Kenya did not capture concerns on innovation and IP. In that Constitution, sections 70 and 75 capturing the Bill of Rights provided substantive property guarantees limited to real property as opposed to technological innovations, cultural innovations and IP. However in 2010, there was a paradigm shift which resulted in the promulgation of a new Constitution. This new social contract expressly protects IP, innovation and technology transfer. For the first time in Kenya’s history, IP norms were constitutionalised. First, Article 260 (c) includes IP in the definition of “property”. Secondly, Article 40 (5) obliges the State to support, promote and protect the intellectual property rights of the people of Kenya. In the same breath, Article 69(1) (c) and (e) mandates the State to protect and enhance intellectual property, traditional or indigenous knowledge of biodiversity and the genetic resources of the communities and protect genetic resources and biological diversity.

Under Article 11(1), the Constitution recognises culture as the foundation of the nation and as the cumulative civilization of the Kenyan people and nation. And mandates the state to promote all forms of national and cultural expression through literature, the arts, traditional celebrations, science, communication, information, mass media, publications, libraries and other cultural heritage; recognise the role of science and indigenous technologies in the development of the nation; and promote the intellectual property rights of the people of Kenya.

Parliament is also mandated to enact a law to ensure that communities receive compensation or royalties for the use of their cultures and cultural heritage. This legislation should also be passed which recognise and protects the ownership of indigenous seeds and plant varieties, their genetic and diverse characteristics and their use by the communities of Kenya.

So far, it appears that the judicial branch of government has risen to the challenge of implementation of the constitutional IP provisions, with due deference to the executive branch aptly represented by the Kenya Industrial Property Institute (KIPI), Kenya Copyright Board (KECOBO) and the Anti-Counterfeit Authority (ACA). Notable court decisions directly related to constitutional IP protection include the Patricia Asero case (previously discussed here, here and here), the Digital Migration case (previously discussed here and here – this matter is currently before the apex court, Supreme Court of Kenya), the Sanitam case of 2012 (previously discussed here).

Away from the courts, KECOBO and KIPI are leading an inter-ministerial taskforce on Traditional Knowledge, Traditional Cultural Expressions and Genetic Resources. This taskforce has already finalised work on a draft Bill on the protection of TK and TCE (previously discussed here and here). In the meantime, several state agencies dealing with IP have held consultative forums to develop a National IP Policy (previously discussed here). Still within the Executive, the Ministry of Sports, Culture and the Arts has established a multi-stakeholder committee to finalise work on a draft National Music Policy (previously discussed here and here). It is hoped that the forthcoming merger of KIPI, KECOBO and ACA (previously discussed here, here and here) will increase the Executive’s capacity to spearhead the implementation of the various constitutional provisions relating to IP.

All in all, the road from adaptation to full realisation of constitutionally guaranteed IP protection is long, arduous and involves several levels of engagement.

Management of Copyright and Related Rights in the Audio-Visual Sector in Africa: Way Forward for Kenya

LupitaNyongoblue1Banner via afropunkdotcom

This month, WIPO has released a new report titled: “Study on Collective Negotiation of Rights and Collective Management of Rights in the Audiovisual Sector” prepared by one Tarja Koskinen-Olsson. This study will be presented at the Fourteenth Session of the World Intellectual Property Organization (WIPO) Committee on Development and Intellectual Property set to take place in Geneva from November 10 to 14, 2014. This study is part of the WIPO Development Agenda Project on “Strengthening and Development of the Audiovisual Sector in Burkina Faso and Certain African Countries”. As part of this project, WIPO and the Kenya Copyright Board (KECOBO) facilitated a training session held in Nairobi earlier this year (See details here).

This blogpost discusses the conclusions and recommendations from the study with a focus on the findings related to Kenya. In the Kenyan context, this blogposts discusses three necessary recommendations to strengthen the audio-visual sector, namely the establishment of a collective management organisation (CMO) for audio-visual works, copyright law reform and finally, the recurring twin issues of copyright enforcement and awareness.

The WIPO study concentrates on three target countries; Burkina Faso, Senegal and Kenya. Burkina and Senegal are both so called civil law countries with a “droit d’auteur” concept and tradition. While Kenya is a common law country with an Anglo-Saxon tradition. However, in all three target countries, the study notes that exclusive exploitation rights are in the hands of producers. In principle, the study suggests that this structure provides legal certainty and enables the producers to effectively seek financing for their productions and to market their works, both nationally and internationally.

In Kenya, the point of departure is the Copyright Act, which lists audiovisual works as one of the works eligible for copyright protection. The interpretation section of the Act provides that “author, in relation to audio-visual works, means the person by whom the arrangements for the making of the film were made”. Based on this provision, it appears that copyright would customarily be vested with the producer of the audio-visual work who would be deemed to be the author of the audiovisual work and thus enjoy the bundle of exclusive rights set out in Section 26 of the Act.

However the study notes that exploitation of copyright rights for financing of audiovisual works is limited and licensing of major users of audiovisual works does not take place as broadcasters and other major users can draw benefit from statutory licenses or fair dealing provisions included in the laws of the target countries. In the Kenyan context, the study highlights section 26(j) of the Act, a fair dealing provision that protects broadcasting organisations who use audiovisual works that are already published. This section provides that a rights holder does not control the broadcasting of a literary, musical or artistic work or audiovisual work already lawfully made accessible to the public with which no licensing body is concerned. Broadcasters thus have a possibility to show published audiovisual works freely, where there is no CMO functioning in the audiovisual industry. Therefore it is only when rights holders mandate a CMO to manage their broadcasting rights in their audio-visual works that broadcasters will need to ask for their permission, i.e. get a license from the CMO.

Currently there is no CMO in Kenya functions in the field of audiovisual works. However if a company limited by guarantee for the collective management of audiovisual rights would be set up, the number of rights holders it would potentially represent is a central issue. However from as early as 2011, KECOBO, the body that accredits and regulates CMOs, has expressed its willingness to set up a CMO “for the audio visual works which will collect for the rental and use of audio visual works such as films on behalf of the rights holders”, as quoted from Issue 2 of its Newsletter available here.

With regard to awareness creation, the study notes the lack of appreciation for the role that contracts can play in the relationship between creative collaborators and financing partners in audio-visual sector and how contractual rights could be enforced and exercised. Currently, the study notes that contracts are in many cases non-existent, which as such is a hurdle for the audiovisual industry to become more professional. In this regard, KECOBO has done its best to empower stakeholders: see Issue 6 of its Newsletter dedicated to protection of audio-visual performances available here.

In the area of law reform, Kenya has not ratified the WIPO Internet Treaties (WIPO Copyright Treaty (WCT) and WIPO Performances and Phonograms Treaty (WPPT)) and as a result the study notes that “communication to the public/making available right is unclear under the current law” which constrains to full enjoyment of digital rights management. Therefore the study rightly recommends the granting of digital rights as provided under the WIPO Internet treaties (WCT and WPPT) as they would benefit stakeholders in the audiovisual industries and enable effective use of IP rights in the network environment.

Another area of law reform is the private copying levy which is contained in the Act but only deals with sound recordings. In this regard, this blogger has previously discussed here proposed amendments to the Copyright Act to include private copying remuneration for audiovisual works. The collection and distribution of private copying remuneration in Kenya is an interesting new area of collective copyright management, as this blogger has previously discussed here.

With regards to enforcement efforts, the study notes that piracy is undermining the DVD/VCD market, despite the implementation of copyright authentication through the anti-piracy security device. This notwithstanding, the study notes that the Kenyan audiovisual sector has started to realize the potential of global markets. Locally, Kenyan works have had little opportunities as national broadcasters have preferred popular foreign content. This scenario is likely to change with the setting up of the new Communications Authority of Kenya, whose mandate will include the enforcement of local content quotas for broadcasters in the country. Meanwhile, it is interesting to note that online consumption of films is progressively penetrating the Kenyan market as high-speed internet connections become more available, for instance, “Buni TV”, “MoMoviez” and others.

Reply to CIO East Africa: How to Fact-Check Intellectual Property Articles

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This blogger has come across a recent article by CIO East Africa titled “Weak IP laws hurting aspiring IT billionaires” written by one Alex Owiti. The article, available here, contains several unsubstantiated claims, grave errors of fact and serious misrepresentations of substantive intellectual property law. Through twitter, several attempts were made by the Kenya Industrial Property Institute (KIPI), Kenya Copyright Board (KECOBO) and former KIPI CEO Dr. Kibet Mutai to enlighten the poor writer but the latter refused to admit his mistakes.

It is hoped that this blogpost will help our friends at CIO East Africa do a better job of editing all the articles they receive on IP matters. Since we are using Alex Owiti’s article as an example, we will be forced to reproduce it (in italics) in order to highlight the inaccurate statements made in the article. For purposes of this exercise, our comments will be in brackets [] and in bold.

Here goes:-

“Weak IP laws hurting aspiring IT billionaires”

[This is the title of the article. However, after reading the article, the reader realises that the following basic questions are not answered: 1) How are the IP laws weak? 2) If the laws are indeed weak, how are these weak laws hurting 'IT billionaires'?]

“The fact that we don’t have millionaire or billionaire IT innovators and app developers in Kenya or even across Africa is confirmation of our weak intellectual property (IP) laws.” [Firstly, can it really be assumed that Kenya doesn’t have millionaire or billionaire IT innovators and app developers in Kenya? What about Onfon Media, and others or don’t those count? The article does not bother to explain or clarify. Secondly, assuming the first point was true, how does this relate to IP law specifically? We have three main IP laws in Kenya: Copyright Act, Trade Marks Act and Industrial Property Act, which of these laws is weak? What is weak about all or any of them specifically? Again, the article does not explain or clarify.]

“Europe, US, China and South Korea mint billions of dollars as a result of patents yet in Kenya, our app developers and IT nerds languish in abject dream of poverty because of inability to patent their innovations thus being taken advantage of by companies or organizations that purport to support innovation.” [Firstly, it is important to note that the nationals (both persons and companies) of US, China and South Korea are the primary beneficiaries of patent protection. The issue of GDP contribution is secondary. Secondly, the inability of Kenyans to patent their innovations cannot be attributed to the IP laws. The writer’s argument here is tantamount to saying that the failure of a farmer to acquire a title deed to a piece of land can be attributed to a weak land laws. As Dr. Rutenberg explains here, the minimal number of issued patents is not due to a lack of innovation or entrepreneurship in Kenya. Instead, it is due to a lack of patent expertise in the private sector, and a lack of funds available to hire expensive patent drafting services from firms in Europe, South Africa, or India. Without access to proper patent drafting, it is difficult for the Kenyan patent office to find applications that are suitable for granting as patents, and the ability of local inventors to obtain patents is severely diminished. Subsequently, without patents, the ability of local inventors to attract foreign investment and partnerships, and to build companies that are based on intellectual property (IP) assets, are also severely diminished. This current state of play cannot be attributed to 'weak IP laws' as the article wrongly suggest.]

“Talking about patents, Kenya has shamelessly lost some patents to foreign counties and can never claim them because of very weak laws. In 2007, some activists were aggravated and went up in arms to complain after losing the Kiondo basket trademark to Japan and even the popular Kikoi fabric design was at risk of being patented by a British company. The Kikoi patent actually went away.” [This paragraph is not only factually incorrect, it is also dangerously misleading. The kiondo and the kikoy are incapable of being patented. This is because the kiondo and kikoy fail to meet the 3-step patentability test in law. The kiondo matter involving Japan has been discussed previously here. In KIPI's seminal article "Kiondo Idea Theft: An Intellectual Property Myth", it is clearly explained that the product kiondo having been in the public domain together with the original way of weaving it, a different way of arriving at the same, which is industrially applicable would qualify for a process patent protection. It is only the kiondos which are proven to be woven through that protected method that infringe the process patent in Japan. Therefore, the myth perpetuated by the article that the kiondo is protected in Japan as a product patent to the exclusion of Kenya is totally false. The kikoy matter involving the United Kingdom has been discussed at length here. In KECOBO's Copyright Newsletter Issue no. 4, it is explained that had the application in the UK Patent Office gone through, most Kenyan’s would not have been able to sell the kikoy under that name. Therefore, it is irresponsible for CIO East Africa and the writer to continue perpetuating falsehoods, myths and inaccuracies yet all this information can be verified from KIPI offices, KECOBO offices or from any IP experts within Kenya.]

“I would like to believe that Kenya’s Industrial Research and Development Institute (KIRDI) has failed miserably in protecting Kenya’s economic projects that identifies with its innovation. And this is the same thing that is happening in the ICT industry when young graduates walk home with pocket change after sweating it out in labs to come up with apps.” [How does KIRDI protect “Kenya’s economic projects that identifies with its innovation”? A simple internet search reveals that KIRDI is the National Industrial Research, Technology and Innovation Institution under the Ministry of Industrialization and Enterprise Development. Therefore it is factually inaccurate for the article to falsely accuse KIRDI of failing to protect Kenya's economic projects yet KIRDI has no such role or mandate in law. KIRDI was established as a multidisciplinary Institution to conduct Research and Development in Industrial and Allied Technologies.]

“Ideas are worth billions of shillings and unless the government takes the issues of copyrights, patents and trademarks seriously, our own innovators will die poor and so is the economy.” [The article has not demonstrated how the government has failed to take IP issues seriously. Are we talking about Parliament, the Executive and/or the Judiciary? Each of these arms of government have a role to play with regard to IP in Kenya. The writer does not both to explore these issues.]

“I believe that the World Intellectual Property Rights body – WIPO – recognizes most of the global patents, trademarks and copyrights that have followed proper legal procedures as well as international standards. This calls for the government – through KIRDI and Kenya Industrial Property Institute (KIPI) with the respective ministries – to focus on fortifying the laws on copyrights, patents and trademarks to enable the young innovative minds create wealth and empower the economy.” [The article falsely refers to KIRDI instead of referring to the Kenya Copyright Board (KECOBO). In addition, the “fortifying” of IP laws is not done by parastatals, it is a legislative function. In this regard, KIPI and KECOBO’s role is largely advisory. If the article claims that KIPI and KECOBO have failed to advise Parliament, where is the proof for this? What areas of the IP laws require fortifying? The article fails to answer these basic questions.]

“Expansion of the Intellectual Property Right laws is therefore critical to ensure the creators of innovations enjoy full benefits for their ideas. In Europe, America and according to Wikipedia, the increase in terms of protection is particularly seen in relation to copyright, which has recently been the subject of serial extensions. With no need for registration or copyright notices, this is thought to have led to an increase in orphan works (copyrighted works for which the copyright owner cannot be contacted), a problem that has been noticed and addressed by governmental bodies around the world.” [This entire section has been copy-pasted word for word from Wikipedia and has no direct application in the Kenyan context. In Kenya, the current duration of copyright is the entire lifetime of the author plus 50 years. Why should Kenya consider expanding this period? The article fails to explain this.]

“Also with respect to copyright, the American film industry helped to change the social construct of intellectual property via its trade organization, the Motion Picture Association of America (MPAA). In amicus briefs in important cases, in lobbying before Congress, and in its statements to the public, the MPAA has advocated strong protection of intellectual-property rights.” [This entire section has been copy-pasted word for word from Wikipedia and ought to have been put in the Kenyan context. Recently the Media Owners’ Association has been advocating for the protection of their IP rights in the digital migration cases (see our commentary and analysis here) which is currently before the Supreme Court.]

“Such expansions of laws by our parliament will end the suits we see in our courtrooms regarding copyright infringement. Let us protect and appreciate the innovations that give us identify in the global village.” [This concluding paragraph is not supported by the body of the article. The article does not explain the connection between "expansion of laws" and law suits regarding copyright infringement. As far as we know, the "expansion of laws" only serves to grant copyright owners a longer duration to enjoy copyright protection. This longer duration does not stop others from filing suits for copyright infringement!]

Shamalla v KECOBO: Balancing the Protection of Intellectual Property and Environmental Rights

This blogger has come across a twitter exchange involving one Jennifer Shamalla and the Kenya Copyright Board (KECOBO). Screen shots of the exchange have been posted below. Shamalla complains that Ozone Lounge and Bar in Valley Arcade within Nairobi plays “incredibly loud music” and that its patrons “engage in obnoxious behavior in total disregard of the environment as they scream and shout along with the music thus keeping the residents of the Valley Arcade area awake”. According to Shamalla, these actions by Ozone and its patrons “are a direct infringement on the constitutional right to a clean and healthy environment as provided for under Article 42 of the Constitution.” Therefore, Shamalla argues that KECOBO is vicariously liable for contravening the residents’ rights to a clean and healthy environment by licensing and supervising collective management organizations (CMOs) who issue licenses to Ozone. As a result, Shamalla has written to KECOBO (in a letter signed and dated August 11, 2014) demanding that KECOBO ensures that the CMOs withdraw any licenses issued to Ozone with immediate effect.

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By bringing this issue to light, this blogpost will comment on Shamalla’s argument and the issues arising from the above matter. This blogpost concludes that while Shamalla’s argument appears to be largely misplaced, the questions surrounding KECOBO’s statutory function to supervise CMOs cannot be ignored and perhaps ought to be addressed conclusively.

Many will not dispute World Health Organisation (WHO) reports and studies which have demonstrated that noise and excessive vibrations are a direct contribution to stress as a cause of sleep disturbance which is a direct contribution to fatigue, noise-induced hearing loss and high blood pressure, among other health effects.

Be it as it may, can KECOBO and/or the CMOs’ be held liable for the actions of Ozone and its patrons?

This blogger submits that Shamalla’s argument is premised on the assumption that by licensing Ozone, CMOs have authorised, sanctioned and/or condoned the alleged violations of environmental rights by Ozone and its patrons. Therefore, KECOBO (as the licensor and supervisor of CMOs) is liable for the violations allegedly caused by the issuance of these licenses by CMOs. This assumption couldn’t be further from the truth. In addition, this blogger opines that if Shamalla’s argument were to be adopted by KECOBO, it would result in the violation of one constitutional right (Article 40 on protection of the right to property) in order to uphold another right (Article 42 on Environment).

The Kenya Copyright Act No. 12 of 2001 establishes KECOBO, whose mandate is the overall administration of copyright and related rights in Kenya. Section 5(b) of the Act provides that KECOBO shall license and supervise the activities of collective management organisations as provided for under Part VI of the Act, which deals with collective administration of copyright. Section 46(1) of the Act makes it mandatory for any person or association of persons seeking to commence or carry on the business of a CMO to obtain a certificate of registration granted under the Act. Section 46(2) provides that the applications for CMO registration must be accompanied with the prescribed fees and that once the application is approved, KECOBO shall declare the applicant as a CMO for all relevant copyright owners or for such classes of relevant copyright owners.

Once KECOBO issues the license to CMOs to operate, KECOBO is required to supervise the activities of CMOs to ensure that the latter comply with the Act. One of the the most controversial activities by CMOs is the collection of royalty payments from members of the public who use copyright works for commercial purposes. A brilliant explanation of licensing by performing rights CMOs can be found in the recent video clip at the beginning of this post from our good friends at the Southern Africa Music Rights Organisation (SAMRO).

In the Kenyan context, the licensing activities of CMOs have been challenged on numerous occasions as infringing on several constitutional rights including equality and freedom from discrimination (Art. 27), human dignity (Art. 28), freedom and security of the person (Art. 29), privacy (Art. 31), among others. However these constitutional challenges relate almost entirely to the manner in which the licensing process is carried out, including collection of license fees. It is important to note that CMOs issue licenses on behalf of various rights holders to users so that they may exploit the exclusive rights provided under section 26(1) and that these licenses are consistent with section 33(1) of the Act. In this connection, the recent case of Nairobi Pacific Hotel Ltd v. Kenya Association of Music Producers & another (see our discussion here) clearly explains that the public performance license issued by MCSK is separate and distinct from the communication to the public license issued jointly by KAMP and PRiSK.

In light of the above, Shamalla’s argument fails to clearly explain how the licensing activities by the CMOs directly infringe the Valley Arcade residents’ rights to a clean and healthy environment. It follows then that the connection between the CMOs’ licenses to Ozone and the alleged noise pollution by Ozone is extremely remote, at best. Remoteness aside, Shamalla’s argument also fails to account for the loss of income in the form of royalties due to rights holders, if the licenses issued to Ozone were to be withdrawn by CMOs. In this regard, it is important to remember that the license fees collected by CMOs from users such as bars and restaurants form the bulk of royalties earned by rights holders. Article 40 protects the CMO members’ right to royalties from use of their work. However, this right is not absolute and can be limited in accordance with Article 24 of the Constitution. Enshrined within Article 40 is a positive obligation on the State (which includes KECOBO) to support, promote and protect the intellectual property rights of the people of Kenya (which includes CMOs and their Kenyan members). Therefore Shamalla’s argument does not demonstrate why the rights under Article 40 must be limited in favour of those under Article 42, if indeed there is a conflict between these two constitutionally-guaranteed rights.

British Photographer, Indonesian Macaque, American Website: Copyright Ownership Dispute Over Monkey Selfies

From the above clip of British wildlife photographer David J Slater, it is clear that Slater is strongly considering taking legal action against Wikimedia for copyright infringement in the now infamous “monkey selfie” photographs.

In the clip, Slater explains how the photographs came about by saying:

After a three day exploration of a forest in North Sulawesi, Indonesia, the monkeys followed me around, I followed them around, they got too used to me, eventually they started grooming me, touching me – it was an amazing experience. I still wanted that one shot, that one shot full in the face, just for my self satisfaction and to give it to an agent and therefore I could promote the conservation issue. But it wasnt going to happen not unless they took the photograph themselves. And I did that by setting it up on a tripod with a cable release, walking a few metres away, allow them to come in watch their own reflections, play with the camera, play with the cable release and bingo, they took their own shot.

Wikimedia, the US-based organisation behind Wikipedia, has refused Slater’s repeated requests to remove one of the monkey selfie photographs which is used online without Slater’s permission, claiming that because the monkey pressed the shutter button no one owns the copyright. Wikimedia is reported as saying:

We take these requests very seriously, and we thoroughly researched both sides of the claim (….) When a work’s copyright cannot vest in a human, it falls into the public domain. We believe that to be the case here.

Macaque-Selfie-2

If Slater decides to take legal action against Wikimedia, he has the option of suing under the copyright laws of the United States, United Kingdom or Indonesia. The central issue for determination would be whether Slater can claim authorship and/or ownership of the monkey selfies? A quick perusal of US Copyright law appears to automatically rule out any copyright claim by a non-human author. According to the rules published by the US Copyright Office:

503.03 Works not capable of supporting a copyright claim.

Claims to copyright in the following works cannot be registered in the Copyright Office:

503.03(a) Works-not originated by a human author.

In order to be entitled to copyright registration, a work must be the product of human authorship. Works produced by mechanical processes or random selection without any contribution by a human author are not registrable.

Under both United Kingdom and Indonesian copyright laws, the definition of an author refers solely to “a person” therefore non-human authorship is not possible. In the Kenyan context, this blogger has discussed the question of non-human copyright authorship here and here.

Nonetheless, as an amateur photographer (see here), this blogger appreciates the enormous amount of time, skill and effort expended by Slater which resulted in the monkey selfie photographs. Therefore, this blogger argues that, by affording some copyright protection to Slater, the courts would be greatly incentivising him and other photographers to carry on the arduous task of photography.

One possible middle-ground solution which ensures that Slater is incentivised for his undeniable role in the monkey selfie photographs is joint authorship. According to the US Copyright Act 17 U.S.C. § 201(a): “Copyright in a work protected under this title vests initially in the author or authors of the work. The authors of a joint work are co[o]wners of copyright in the work.” Further, Section 101 provides that “[a] ‘joint work’ is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole”.

Therefore, in the present case, the court could find that the monkey selfies were works of joint authorship between the macaque monkey and Slater. This would then allow Slater to exercise economic rights over the works of joint authorship between human and non-human authors.

Gwer v. KEMRI Case: Researchers Awarded 30 Million Shillings for Infringement of Intellectual Property Rights

KEMRI-Wellcome Trust Research Programme KWTRP

In the recent case of Dr. Samson Gwer & 5 others v. Kenya Medical Research Institute (KEMRI) & 2 others Petition No. 21 of 2013, the Industrial Court at Nairobi found that KEMRI-Wellcome Trust Research Programme (KWTRP) had violated the constitutional rights to intellectual property of six Kenyan research doctors and ordered KEMRI to pay each of the doctors a sum of 5 million shillings as compensation. A copy of the court’s judgment is available here.

After an in-depth review of this case from an intellectual property (IP) perspective, this blogger concludes that this case sets an important precedent for the State’s obligations to protect the right to property under Article 40 of the Constitution of Kenya.

The researchers alleged that the respondents “routinely violated the Petitioners’ right under Article 40(1) of the Constitution by taking away the Petitioners’ right to intellectual property resulting in the Respondents, its servants, employees and students taking credit for the work and scientific innovation of the Petitioners by:

(i) (a) disregard syndrome; (b) Mathew Effect (Discovery credit inadvertently reassigned from the original discoverer for a better known researcher)

(ii) disapproval by the Respondent of the Petitioners and other local scientists innovations or work to apply for grants;

(iii) misappropriation of the work of local scientists to benefit expatriate scientists

(iv) frequent unfair administrative action

(v) Inability to veto adverse decisions by the scientific team leader

(vi) redeployment and chastisement through mail from the Director of KEMRI on the account of raising these grievances.

As a result the Petitioners submitted that the cumulative effect was to forever stifle the progress by Kenyan researchers and to impede their autonomy and dream of Kenyanising scientific innovations.

Therefore the petitioners sought the following reliefs, inter alia, a declaration that the Respondent’s conduct, acts and/or omissions are unlawful, illegal and/or unfair and the same violates Article 40 of the Constitution as well as an order that the Petitioners are entitled to compensation for the above alleged violation of the Constitution.

With regard to allegation (i) on the ‘disregard syndrome’, the petitioners submitted that the most rampant scientific misconduct by the Respondents against the Petitioners was plagiarism, a behaviour the latter termed as ‘citation amnesia’, ‘disregard syndrome’ and ‘bibliographic negligence’ on the part of the Respondents.

In this connection, the Petitioners alleged that the Respondents “arm-twisted the Petitioners to give up their intellectual property rights and cede their passwords to research and innovation” and that “the contracts of employment do not entitle KEMRI to the intellectual property of the Petitioners and the appropriation outlined is unlawful.”

The Respondents flatly denied these allegations arguing that there was not an iota of evidence before the court to substantiate the petitioners’ claims.

In its determination, the learned court noted that whereas KEMRI as an employer is a public institution, the funding under the KEMRI Wellcome Trust Research Programme emaned from external donors. These external donors attached specific terms and conditions to the grant and administration of the Wellcome Trust Research Programme which terms and conditions became subject of grievances by the Petitioners. However the Court found in favour of the Petitioners and stated thus at paragraph 82:

“The 1st Respondent as a state employer is bound by the Constitution to protect the right of the Petitioner and not allow a policy that appropriates their intellectual property as has been ably demonstrated by the Petitioners herein contrary to Article 40(1) of the Constitution.”

Therefore the court ordered that each of the Petitioners is entitled to compensation for the said constitutional violation in the sum of KES 5 Million within thirty days of the judgment date, including interest at Court rates from the judgment date to payment in full. Further the court ordered that the Petitioners are entitled to access all the outcomes of their scientific research and to the credit and benefit attached to the outcomes under Articles 35 and 40 of the Constitution. KEMRI was also ordered to pay the costs of the Petition.

Comments:

From the above, it is submitted that the petitioner’s case for scientific misconduct and denial of intellectual property (IP) rights by KEMRI raises a number of important issues. Furthermore, the learned court’s determination that the petitioner had ably made a case for infringement of the constitutional right to property under Article 40 is quite significant as it reinforces a dangerous precedent set by the Court of Appeal on constitutional enforcement of IP rights.

To begin, the petitioners’ case is problematic as it does not disclose which specific intellectual property rights have been infringed by KEMRI. This case is further complicated by the petitioners’ conflation of plagiarism and alleged IP infringement. As previously discussed by this blogger here and here, copyright infringement may also amount to plagiarism but plagiarism can never amount to copyright infringement. However the petitioners appear to have successfully misled the court to make a finding that KEMRI’s scientific misconduct of plagiarism amounts to infringement of the petitioners’ intellectual property rights as enshrined in the Bill of Rights.

This leads us to consider the impact of the court’s IP-related findings in this case. The present judgment in the Gwer v KEMRI case appears to be in line with the recent Court of Appeal decision in the digital migration case where the majority of the appellate judges found that the alleged infringement of intellectual property rights could be the subject of a constitutional Petition. However as this blogger has argued here, the reasoning by the Court of Appeal on IP (and seemingly adopted in the Gwer case) was flawed.

Therefore on this issue of constitutional enforcement of IP rights, this blogger respectfully submits that the earlier decisions by the learned Majanja J. in the High Court cases of Sanitam Services (EA) Ltd v Tamia Ltd Petition No. 305 of 2012 and Royal Media Services Ltd & 2 others v Attorney General & 8 others [2013] appear to be more cogent and correct in law compared with the findings in the present judgment and that of Court of Appeal in the digital migration case.

As a parting shot, this blogger notes that one unintended consequence of this emerging jurisprudence of constitutional enforcement of IP rights particularly in the employment context is that ex-employees such as Samson Ngengi (See our analysis of Ngengi v. KRA here) have an added avenue to obtain damages and compensation from public sector ex-employers in IP-related disputes. This blogger is informed that arbitration proceedings in the Ngengi’s case are still on-going.

IP Kenya Named in Managing IP Top 50 Most Influential People in Intellectual Property 2014

ipkenya

“This is the 12th year we have compiled a list of the 50 most influential people in IP worldwide. Over that time, ideas about influence have changed. It’s no longer the case that IP law and policy is determined by self-important officials sitting in the centres of power, and academics preaching to small audiences. Today, everyone from business leaders to consumers has views on IP use and limits; many people make those views heard loudly; and some of them lead to actual change in laws and commercial strategies.” – Managing Intellectual Property (MIP), July 21st 2014.

This blogger is pleased to learn that the international magazine, Managing Intellectual Property has listed the IP Kenya blog, authored by yours truly, among the Top 50 Most Influential People in Intellectual Property Worldwide. This blogger is extremely proud and honoured to be recognised for his contribution to the ever-changing IP landscape in Kenya and throughout Africa. As the only African in this year’s #MIP50 list, the IP Kenya blog is delighted to be identified among some of the giants on the IP social media scene such as: @patentlyo, @jamie_love, @copyrightgirl, @Ipkat, @ipwatchdog, @DrRimmer and @FOSSpatents.

Here is what MIP had to say about the IP Kenya blog in 2014 Top 50 list:-

“It often seems hard to find out what’s going on in IP in Africa. Thank heavens, then, for IP Kenya (coordinated by Victor Nzomo). Despite a dearth of case and deal information, the twitter account brings interesting updates on a daily basis, with blog posts every few days, covering topics as diverse as copyright policy, traditional knowledge and famous trade marks as well as linking to articles on interesting disputes. As IP becomes more visible throughout the continent, sites such as this will become more important.”

This fantastic endorsement by MIP is yet another reason for this blogger to keep blogging, sharing and interacting virtually on IP related matters for years to come!

Thank you to IP Kenya readers, commenters, subscribers, followers and supporters.

A Case for the Inclusion of the Artist’s Resale Right in Kenyan Law

Angelus

“Artists do not live on thin air. And because they enrich the world with their art, they should be protected. So it is fair that those who trade in their works pay them a share of what they earn. That is the purpose of the resale right: to share all forms of enrichment.” – Ousmane Sow, Senegal.

Artisans and visual artists of Kenya, unite! With the anticipated amendments to the Kenya Copyright Act in line with the forthcoming establishment of the Intellectual Property Office of Kenya, this is the opportune time for owners and authors of artistic works to actively lobby the Government of Kenya for the inclusion of the artist’s resale right (often referred to by its French name, “droit de suite”) in the Act. In at least 70 countries around the world, artist resale rights legislation exists which enable artists to receive a small percentage (usually between 0,25 and 5%) of the value of sales of their work in the secondary market (i.e. sales that occur after the first sale of the work in the primary market through, for example, a gallery). In Africa, the artist’s resale right exists only in two countries namely Burkina Faso and Senegal.

The artist’s resale right can either be integrated into existing legislation (as is the case with most EU countries) or functions as standalone or sui generis legislation (eg. the UK and Australia). The resale royalty addresses the relative disadvantage that visual artists have (by comparison to other art forms) on account of the ‘once-off’ or singular nature of visual artworks, and the limited ability of visual artists to benefit from the subsequent success of their work in the marketplace after the first sale has taken place. The first resale right law was enacted in France in 1920. The need for the right became clear when a collector made a significant amount of money from the sale of Jean-François Millet’s painting “The Angelus,” (pictured above) while the artist’s family was living in extreme poverty.

From a Kenyan perspective, it is important to note that the resale right is provided for under Article 14 of the Berne Convention. This Article creates a Droit de Suite right for artists and writers of original art and manuscripts subject to existence of the provision in national legislation and country of claim (reciprocity). Since Kenya has signed and ratified the Berne Convention, the Berne Convention now forms part of the laws of Kenya pursuant to Article 2(6) of the Constitution. In this regard, KECOBO, in the recent issue no. 12 of its Newsletter stated as follows:

At the moment there is no provision for resale right in the Kenyan law. However the inclusion of resale right in Kenya is part of the amendments deemed necessary by KECOBO as part of the reforms and updates of the Copyright Act, 2001. Initially, the management of the resale right shall be by individual artist though ultimately the Board envisions the creation of a collecting society in this area along the lines of the UK.

In the case of copyright in music, literature and other art forms, royalties are accrued to artists by virtue of the volume of sales of multiple copies of that work (in the form of books, CDs, monetised downloads, etc). In the case of the visual arts, value is generated through single, high-value sales, and potentially through a small number of high-value resales. The resale royalty enables artist to receive a moderated economic benefit from the latter. As with copyright royalties, resale royalties are in all instances collected by rights management organisations in the countries in which this right exists. Unlike several existing proposals discussed here, a crafts and visual arts collecting society would definitely be a welcomed addition to the copyright collective management ecosystem in Kenya. This collecting society would be able to administer the resale right as well as license for various forms of reproductions, distributions, renting or lending, communications to the public and making available to the public of artistic works.

In light of the above, it would be worthwhile to investigate the size, strength and nature of Kenya’s secondary art market so as to arrive at an appropriate tariff for the artist’s resale right.

Update on Kenya’s Draft National Music Policy

Kenya at 50

Recently, it was reported that the Cabinet Secretary in the Ministry of Sports, Culture and the Arts, Dr. Hassan Wario has appointed a 10-person committee to finalise work on Kenya’s National Music Policy. This Music Policy Committee will be chaired by the Director of Administration at the Ministry, Mr Wenslas Ong’ayo and comprises two representatives from the related rights collective management organisations (CMOs) namely Suzanne Gachukia (KAMP Board Member) and Angela Ndambuki (PRiSK CEO). Interestingly, there are no representatives from the Music Copyright Society of Kenya (MCSK) not to mention the apparent lack of broad-based stakeholder representation in the committee’s membership. In addition the appointments appear to contravene the two-thirds gender principle in the Constitution.

This committee is mandated with streamlining the entire music industry, reviewing the legal and institutional framework and also recommending implementation plans through the formulation of a robust National Music Policy. We have previously discussed an earlier draft of the policy here. This draft has since been revised and an updated version of the draft policy is available here. This blogpost offers some thoughts on the draft policy for the consideration of the newly appointed Committee.

A general observation that cuts across the entire draft policy is the issue of distribution of functions between the National Government and the County Governments as set out in the Fourth Schedule of the Constitution. In this connection, the policy at numerous sections does not appear to distinguish between the functions of these two levels of Government vis-à-vis the music industry in Kenya.

The Policy Statements on page 6 impose an obligation on the government to promote all forms of cultural expressions. However no reference is made to Article 11 of the Constitution which deals with Culture. The draft policy fails to address the critical issues related to the implementation of Article 11 by all arms of government, in particular the Legislature. According to the Fifth Schedule of the Constitution, the Legislature has until August 2015 to enact legislation in respect of culture. This legislation will have a considerable impact on the music industry therefore this matter ought to be included in the draft policy including appropriate mechanisms for review and consultations with regard to the legislation once enacted.

The Policy Statements on page 11 call for the government to create an enabling environment for the music industry to thrive through the enforcement of the Copyright Act. However it may also crucial for the policy to enumerate some of the key areas of interest for the music industry within the Copyright Act and how these areas can be positively reviewed and strengthened. The same policy statement refers to the introduction of a banderole, which already exists in Kenya and is administered by the Kenya Copyright Board (KECOBO).

The Policy Statements on page 18 refer to the infamous quota of “60% of Kenyan music content” to be enforced against all media owners, however a central definitional issue has not been addressed by the draft policy, namely “what is Kenyan content?” The same policy statement also imposes an obligation on the government to reinforce existing laws and regulations in regard to payment of royalties by the broadcasting houses. This statement would require some elaboration since the Copyright Act and Kenya Information and Communications Act already contain adequate provisions to regulate broadcasting content matters.

The rights of music consumers appear to have been largely ignored by the draft music policy despite the recognition of these rights under Article 46 of the Constitution and the Kenya Consumer Protection Act of 2012. In addition, consumers of music have expressed numerous concerns about the multiplicity of licenses provided under the existing legal framework for collective management of copyright and related rights in Kenya.

Finally Chapter Five of the draft policy proposes the enactment of a piece of legislation on the music industry in Kenya and the establishment of a statutory body known as National Music Board.

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