Social Media and Emerging Legal Issues – African Perspectives

For the past two years the topic of intellectual property (IP) issues in social media has been dear to this blogger. However it is clear that the emerging legal issues relating to social media are much wider than IP law concerns and impact numerous other branches of law including but not limited to criminal law, constitutional law, law of evidence, defamation law (which is an integral part of media law), consumer protection law, employment and labour laws, competition law, administrative law, education law and ICT law among others.

This holistic approach to the study of the intersections between social media and the law is what this blogger aims to accomplish in collaboration with his host institution @StrathCIPIT. Through the CIPIT blog, this blogger will begin focusing on the various legal issues brought about by social media and other forms of new media. So far, we have already discussed here and here social media in relation to the laws of succession and defamation respectively.

In this connection, this blogger is eager to read a recent book authored by two female South African attorneys, Emma Sadleir and Tamsyn de Beer which deals with the myriad of legal issues that arise in the context of social media (featured in the video at the header of this blogpost). Here is an excerpt from this new book titled: “Don’t Film Yourself Having Sex and Other Legal Advice For the Age of Social Media”:-

“Picture the scene: you finish reading this book and, feeling inspired to exercise a bit of online reputation management, you google your name. Up pops a link to your Facebook page, your Twitter account, and your LinkedIn profile.

You feel chuffed, because you’ve never uploaded anything remotely objectionable and look super professional and sober in your profile picture. You self-five yourself for being responsible and awesome.

Your parents would be so proud.

But then you see that the next four pages of the Google search results are filled with links to a video of you and your ex-boyfriend having sex, all over porn-sharing sites, with your full name and the name of your employer tagged.

You never consented to being filmed, and you are (obviously) mortified. Desperate to not have the matter revealed to the world in public court documents, your only option to escape this nightmare is to change your name.

We wish that this were some horror story that we made up to scare you, but sadly, it’s not. This happened. In South Africa.”

The “revenge porn” case highlighted in the above excerpt appears to be at the core of this book which is dedicated, “To Miss K. The law failed you.” However a recent article in the Washington Post (available here) argues that copyright law in the US has become one of the best defences against revenge porn.

1926m7h0c883sjpg

Going the copyright route means that the victim of revenge porn would file a takedown notice requiring the website concerned to immediately take down all infringing image(s) and/or video(s) pursuant to the Digital Millennium Copyright Act (DMCA). However, even with the copyright route, there’s a catch as the article explains:-

“The copyright approach is not foolproof, unfortunately: While large corporations like Reddit respond to them quickly, irreverent upstarts like Hunter Moore’s infamous Is Anyone Up may ignore takedown notices or, worse, publicize the victim’s image further in an attempt to shut her up. (Victims then have to contract lawyers for expensive, indeterminable lawsuits.) Copyright only applies when the victim took the photo herself.”

In this regard, it may be argued that the minimum legal parameters for social media use are largely under-developed in Africa. Law-makers, courts and administrative bodies appear to be applying the same analogue rules and principles in the digital realm, without due regard to the specificities and intricacies of new media, and social media in particular. Therefore there is a need for careful study and review of our existing laws to ensure that they adequately regulate conduct on social media.

Social Media and the Law of Defamation in Kenya: Some Lessons from South Africa

dead beat kenya facebook page

“In today’s world, the most effective, efficient and immediate way of conveying one’s ideas and thoughts is via the internet. At the same time the internet reaches out to millions of people instantaneously. The possibility of defamatory postings on the internet would therefore pose a significant risk to the reputational integrity of individuals.” – Chetty J. at para 28.

This blogger has come across the recent judgment of M v. B [2014] ZAKZPHC 49 in which M was seeking confirmation of an interim order that B remove all defamatory statements from her facebook page and refrain from in any way making, publishing and/or distributing defamatory statements about M. A copy of the judgment is available here.

Chetty J. sitting in the High Court confirmed the first part of the interim order relating to the removal of the offending statement but declined to confirm the second part of the order which refrained B from in any way making, publishing and/or distributing defamatory statements about M. However, the court ordered B to pay the legal costs of M’s Pietermaritzburg High Court application.

This blogpost discusses the court’s findings in this case and other similar cases relating to defamation via facebook. It is against this South African backdrop that we consider the on-going debate around the “Dead Beat Kenya” Facebook page in Kenya and the possible outcome of defamation suits filed against the administrator of the page.

In the present case, M and B are the parents of a 5-year-old daughter, born out of wedlock, who lives with the mother, B. However the father, M, a Durban businessman, has contact with his daughter every alternate weekend from Friday afternoon until Sunday afternoon. During one such weekend, M admitted that his daughter and him visited the house of a friend, and ended up staying over. During the course of the evening, other friends gathered at the house eventually resulting in M’s daughter sharing a bed with an adult female, who is a pre-primary school teacher, and someone known to M’s daughter as she had babysat her on previous occasions. M safely returned his daughter to B on Sunday.

In the week that followed, M claims that he received calls from several friends drawing his attention to a posting by B on Facebook, under the heading “DEBATE”. The posting reads as follows:

“DEBATE: your ex has your daughter (5) for the weekend and is sleeping at a mates house. They all (about six adults) go jolling and your ex’s drunk, 50 yr old girl “friend” ends up sleeping with your daughter cause he doesn’t want his girl “friend” sleeping in a single bed she can share the double bed with his/your daughter! How would you feel?”

At the time of the above post, B had 592 “Facebook friends” and a number of the respondent’s ‘friends’ responded to her posting and were critical of M’s behaviour. M also alleges that B further contributed towards the debate by making subsequent postings in reply on this posting.

M regarded these facebook posts as defamatory and detrimental to his business reputation and engaged attorneys, who wrote to B clarifying that during the weekend in which M had access to their daughter, at no time therein was their child placed in any danger, nor was her safety compromised in any way. M’s attorneys then called upon the B to remove the offending postings from her Facebook page by the close of business, failing which they threatened litigation.

B claims to have complied with the attorney’s notice however at the time when the application for urgent relief was launched, M contended that the “remnants” of that debate lingered on the respondent’s Facebook wall. In particular, B made several postings directed at her own brother SB who it would appear, did not take kindly to the insinuations of neglect aimed at M:

“This is my FB page which I can get opinions on matters close to my heart, if you don’t like it then go read someone else’s and defriend me!”

“I have Every right to know who ends up looking after / sleeping with my daughter. Completely different situation [SB] get real please. Looking after a child during school hours or afternoon is different to a night time, when alcohol and drugs are involved!!”

Given the reference to the use of drugs, M contended that he had a prima facie right to approach the Court to ensure that his reputation was not further harmed and that he should not be subjected to defamatory statements being posted by B. M considered the postings to be harmful to him as a father, but also that it could have a detrimental impact on his business reputation and character.

In confirming the first part of the interim orders in favour of M, the court found as follows:-

“Other than a denial that the postings were defamatory, the respondent does not make out any argument of the public interest in respect of the statements attributed to the applicant. I am satisfied that the applicant was entitled to approach the Court on an urgent basis at the time that he did.”

This judgment confirms an earlier South African case, H v. W, which dealt with defamation on facebook.

The second part of the interim orders in the present case was more contentious as M sought confirmation of an order against B from publishing or distributing any defamatory statements about M beyond the social network platforms to printed media or any other form of publication. In essence, M contended that the Court should have regard to B’s prior conduct, and in light thereof, this order was necessary in order to protect his reputation into the future. The court disagreed on three main grounds.

Firstly, the court was not convinced that the order sought could be likened to the protection orders provided under the South African Domestic Violence Act despite the domestic relationship between M and B. Secondly, the court rejected M’s argument that by granting the order, it would be an easier task for the applicant to approach the Court on the basis of contempt rather than having to traverse the entire background or history of his relationship with the respondent.

In this connection, the court agreed with B that there was no basis at common law for a Court to curtail B in respect of material which is not as yet known to the Court, nor has it been presented or published. As such, the Court is asked to speculate on what could constitute a defamatory statement, uttered or published by B against M. In the court’s view, even if the statement in the future by B is defamatory of M, it is equally so that not every defamatory statement is per se actionable in that B may have a good defence to its publication, such as legal duty, qualified privilege, fair comment on facts that are true and in matters of public interest as well as in circumstances where it is reasonably necessary for and relevant to the defence of one’s character or reputation.

Finally, the court rightly considered the right to freedom of expression enshrined in Section 16 of the South African Constitution, although the parties had not made any arguments based on section 16. In this regard, the court found that the order sought by M would be a drastic limitation and restraint on the B’s freedom of expression.

In the Kenyan context, media outlets have been abuzz with reports (see for instance here and here) about a facebook group called “Dead Beat Kenya” that names and shames absentee parents who fail to support their children. Jackson Njeru, the founder and the administrator of the page, claims that before he posts anything on the page he asks the person making the accusation to provide evidence such as a birth certificate or any communication between the two parties. He also calls the accused and gives them a chance to defend themselves.

In the regard, Njeru states:

“We call both parties. It’s a challenge to verify (…) But I remind people that they’ll be sued for defamation if they make false accusations.”

As we know, defamation is the act of harming the reputation of another by making a false statement to a third person. A statement is defamatory of the person of whom it is published if it tends to lower him/her in the estimation of right thinking members of society generally or if it exposes him/her to public hatred, contempt or ridicule or if it causes him to be shunned or avoided. Therefore under Kenyan law, a plaintiff in a defamation case must prove that the words were spoken/written; that those words refer to him/her; that those words are false; that the words are defamatory or libellous and that he/she suffered injury as a result, that is, his/her reputation was injured as a result.
Publication in the sense of defamation means that the defamatory statement was communicated to someone other than the person defamed, which could easily include the facebook posts made on the Dead Beat Kenya page.

The tort of defamation has specific defences available to a defendant. These include justification, truth, privilege and fair comment. The burden of proof shifts to a defendant to prove any of these defences in line with the phrase “he who alleges must prove”. The defendant must prove that the defamatory matter is substantially true for the defence of justification. For a defendant to rely on qualified privilege he/she must prove that the subject matter and its context was in advance of public interest or that the words were a fair comment on a matter.

From a constitutional perspective, it is clear that any law of defamation is a restriction on freedom of speech in the interest of other rights worthy of protection. Therefore, in cases of defamation, courts are called upon to strike a balance between the protection of the right to dignity, right to privacy and the right of freedom of expression.

We will wait to see how this “Dead Beat Kenya” case plays out in the weeks and months ahead.

“They Copied My Concept”: Ruling in Dedan Maina Warui & another v. Safaricom case

“It could be said that Copyright seeks to protect the author’s actual expression and not the ideas, and it does not therefore forbid independent creation. As such, the claim that the two parties in this suit had an idea on tele-healthcare, but which they expressed differently is not untenable in law.” – Gikonyo J. at page 7.

In a recent ruling by the High Court in the case of Dedan Maina Warui & another v Safaricom Limited [2014] eKLR, a medical doctor was denied a temporary injunction and an order of delivery up with respect to a health-related product launched by Safaricom. A copy of the ruling is available here.

Dr. Dedan Maina Warui claims that Safaricom infringed its copyright in a concept styled under the name “Med Dispenser” which the doctor pitched to the leading mobile network operator’s Enterprise Business Unit on or about March 2011. To prove ownership of the copyright in the concept, the doctor presented a certificate of registration No. CR 000712 dated 8th March, 2011 whereby the Med Dispenser was registered as a Literary Work number KCB 0712 by the Kenya Copyright Board. The literary work in question is a concept paper containing the work flow, methodology or the process in which the med dispenser innovation would work once deduced into a software program.

AAR Safaricom Health Presence October 2012

Safaricom admitted that it did give some initial consideration to the Warui’s proposal, but however made a decision to proceed with a separate proposal which involved a partnership with AAR and Cisco Systems Inc. (Cisco’s system is featured in video featured above) to launch the Tele-health product which was developed without any reference to the Warui’s innovation or ideas. Safaricom claims that the electronic medical prescription concept upon which it’s “Health Presence” product is built, has been in use in other jurisdiction, namely India, since May 2010 and was therefore not an original idea of Warui as claimed.

The learned Gikonyo J. appears to have rendered a fair ruling in this case avoiding the error made by his brother Havelock J. in the case of Faulu Kenya Deposit Taking Microfinance Limited v Safaricom Limited [2012]eKLR where the latter stated that a concept paper does not fall within any of the existing categories of copyright works (See our analysis of Havelock and his ruling here).

In October 2011, a media report published here by our good friends over at CIO East Africa announces that Cisco, Deaf Aid and Safaricom formally piloted the first Cisco HealthPresence clinic in Kenya. The article reads in part:

“This first implementation of Cisco’s HealthPresence solution in Kenya demonstrated how technology can transform the delivery of healthcare to underserved, remote, and rural areas. Bandwidth connectivity was provided by Safaricom, the leading provider of converged communication solutions in Kenya.”

Tele-medicine The Standard October 23 2012

In the same month, Warui claims he saw the above article titled: “Tele-medicine: Treating patients from a distance” published by the Standard newspaper on October 23, 2012. The article reads in part:

“Safaricom Health Presence is a product that will use tele-presence to deliver health services to patients, with the doctor giving instructions to the patients or nurse, on what to do, and what medicine to prescribe. (…) Speaking at the launch of the product, Safaricom CEO, Bob Collymore noted that the adoption of tele-medicine would help address the gnawing question of the skewed doctor to patient ratio. He [Collymore] noted: ‘With this technology, all a doctor needs is a computer or a tablet to treat a patient. The product aims at widening reach of quality healthcare in the country’.”

Warui further claims that Safaricom made a business presentation in January 2013 on its “Health Presence Solution” to the Pharmaceutical Society of Kenya. In light of these two claims, Warui alleges that these products by Safaricom were based on his work which formed the core of his proposal registered as a literary work with KECOBO.

While the court rightly agrees with Warui that his concept paper was copyrightable, the ruling is cautious to note that from the evidence adduced by Warui, it is not clear which exclusive rights in the Concept Paper Warui is alleging to have been breached by Safaricom. Therefore the court makes the correct judgment call by stating as follows:-

“…In the absence of oral evidence which can be tested by way of cross examination, it would be difficult to ascertain whether the Defendant [Safaricom] has infringed on any intellectual property rights of the Plaintiff [Warui] in the Med Dispenser innovation by introducing the Safaricom Health Care Presence platform in conjunction with Cisco Limited. From the material before the Court, the Plaintiffs did not quite navigate the mix in this matter arising from the circumstances of the case, and thus, did not establish a prima facie case with a probability of success. The upshot is that the application before the court fails. However, the suit should be set down for hearing on a priority basis so that the substantive issues which are of great significance in the field of intellectual property law are resolved once and for all.”

Social Media and the Law of Succession: A Kenyan Scenario

social media life

This blogger recently came across a touching tribute (see here) to a fellow Kenyan blogger, Idd Salim, who passed away one year ago this month. Although he is fondly remembered for his hard-hitting blog articles on the technology and telecommunications industries in Kenya, these articles are no longer available because his blog domain has since expired: http://www.iddsalim.com/blog/

From an intellectual property (IP) perspective, this blogger is clear that all Idd Salim’s literary and artistic works online would remain protected under copyright until the year 2064. However there is a more fundamental question, which this blogpost asks namely, how should succession lawyers in Kenya advise their clients on their ‘digital assets’ when they die?

What ‘digital assets’? Any accounts that you open online, including email, social networking, photo-sharing, as well as websites and domain names you own.

The law of succession (governed principally by the Law of Succession Act Cap 160 Laws of Kenya ) is the branch of law dealing with inheritance i.e. the transmission of ownership of property from the dead to the living or the transfer of property rights from the dead to the living which is founded on the fact that a dead person cannot possibly own property because he or she cannot enjoy the rights and benefits accruing from property. Therefore following the death of the owner of property, rights over such property have got to be passed on to those who survive him or her.

But what it appears that “online” property? With so many of us emailing, blogging, tweeting, facebooking, eBaying and otherwise living online, it is clear that a huge portion of ourselves resides on the web. The fact is the average person has a handful of websites and email addresses to their name, not to mention domain names, LinkedIn, Flickr and other online accounts.

In cases of testate succession, the deceased has made written arrangements for the disposal of his property, in a will or a testament. Therefore the only necessary addition is to ensure that account names, usernames and corresponding passwords are provided along with instructions on the administration of these online accounts.

In the case of real and personal property, administration entails essentially the collection and preservation of all the assets, interests and benefits which make up the Estate of a dead person. Where the administrator or personal representative is appointed by the court, s/he is known as an administrator but where he is appointed under a will, s/he is called the Executor.

In the case of social media, the digital administrator/executor would take over the accounts of the deceased in order to execute the latter’s wishes on what accounts stay open, get transferred to someone else or get deleted forever.

In the case of intestate succession where a social media user dies without having made a will or having made a will that is invalid, the principle remains the same but different rules may apply. In Kenya, the rules of intestacy determine that only blood relations of the deceased person are entitled to inherit as opposed to testate succession where anybody can inherit.

Therefore the online executor(s) in the case of intestacy must sit down and come up with a list of all the websites and online accounts owned by the deceased. In the case of domain names, the digital executor will have to decide whether or not the domain(s) will be renewed and how will associated costs be financed. When the executor decides that certain or all social media accounts should be permanently deleted, there are specific rules and policies that would be applicable. Most social media accounts require that the executor submits proof of death, most likely in the form of a death certificate issued by the relevant national authorities.

Image Rights and Neighbouring Rights in the Workplace: High Court Case of Sikuku v. Uganda Baati

Circled: Sikuku, maybe.

Circled: Sikuku, maybe.

“The persons who created and did the video shooting or who employed the person who carried out the work of shooting the photos and video is/are the authors or author of the works. The exact relationship between an author and a person having neighbouring rights has to be clear and not hazy. A photographer who films activity in a market might not require permission of everybody in the market to publish or use the works.” – Madrama J. at page 15.

This blogger has come across a recent High Court decision of Sikuku v. Uganda Baati HCCS No. 0298 of 2012 before the very able Honourable Justice Mr. Christopher Madrama, whose decisions we have previously discussed here and here. A copy of the present judgment is available here. Sikuku, a long-time employee of Uganda Baati claimed that the latter was unfairly benefiting from the use of his images in Uganda Baati advertisements presented in both photographic and audio-visual forms to the public. Sikuku sought an order for the payment of Uganda shillings 150,000,000/= as “usage fees” from Uganda Baati. Sikuku contended that his employer had infringed his rights under the Uganda Copyright and Neighbouring Rights Act as well as the Constitution of Uganda. The court dismissed Sikuku’s entire case against Uganda Baati. The learned Madrama J. found that Sikuku does not qualify to have neighbouring rights as protected by the Copyright and Neighbouring Rights Act 2006. Further, the court found that Sikuku has not proved unlawful interference with his constitutional right of privacy under article 27 by Uganda Baati.

This blogpost discusses the Uganda High Court’s treatment of the intersecting issues of image/privacy rights, and neighbouring rights as they arose in the Sikuku case. Ultimately, this blogpost finds that this case is instructive for participants both behind and infront of the camera lens.

It is not disputed that Sikuku appears in photos used in Uganda Baati’s in-house SAFAL magazine and the Contractors Year Planner. It is also not disputed that Sikuku appears on audiovisual adverts commissioned by Uganda Baati which were broadcast on several television stations including WBS and NTV. However the court had to determine whether or not these “appearances” amounted to “performances” as defined in copyright law and by extension, whether Sikuku fell within the definition of a “performer”.

A “performer” under section 2 of the Uganda Copyright and Neighbouring Rights Act is defined to include an:

“actor or actress, singer, musician, dancer or other person who act, sing, deliver, declaim, play in, interpret, or otherwise perform literary or artistic works or expressions of folklore.”

Madrama J. in his judgment states that Sikuku cannot be a “performer” under the Act. His reasoning is thus:-

“The evidence demonstrates that the Plaintiff [Sikuku] was going about his business when he was filmed and photographed. He was not required to pose for the photograph or for the filming though they had been given new uniforms for the occasion. He was filmed and photographed in the ordinary course of his performance as a worker. (…) From the definition under the Copyright and Neighbouring Rights Act the Plaintiff is not an actor because he was filmed and photographed in the ordinary course of his work as an Employee of the Defendant. (…) the Plaintiff is not a performer whose action was deliberate so as to be a necessary ingredient of the works complained about and which ought to be paid in terms of performance fees (…) It is debatable whether the advertisement prominently portrays the Plaintiff’s photo or actually displays the Defendant’s products together and incidentally with the workers engaged in the work of production of the products using the machinery. The plaintiff is not at all the major or main feature of the advertisement. (…) The Plaintiff is not an artist and he was not bringing special skills so as to properly present the Defendant’s products. He was merely going about his business when he was filmed.”

On this point, this blogger concurs with the judge’s careful consideration of the definition of “performer”. Sikuku’s role in the audio-visual work cannot be likened to that of an extra in a movie or other production. While it is clear that Sikuku may fall within the category of “other person who acts, sings, delivers, declaims, plays in, interprets, or otherwise performs”, the missing part appears to be the subject matter of the “performance”. In the case of an extra, there is a script and an assigned role given to each “performer” such as “workman #1 operating heavy machine”, which would appear in the movie credits at the end of the movie.

On the issue of image/privacy rights, the court provides a useful analysis of the privacy clause in the Constitution of Uganda, which closely mirrors the privacy article in Kenya. In finding that there was no infringement of privacy rights, the court correctly reasoned as follows:-

“The court should consider whether photos of Employees taken in the course of their employment showing them at work cannot be used by the Employer for purposes of advertisement without consent or payment of consideration. The plaintiff should demonstrate that the filming or photo was taken in a private moment such us when eating or resting. Such a conclusion should be based on the terms of the contract. In the absence of the terms of any contract excluding an Employer from publishing photos and audio visual works of products including members of staff in a factory carrying out their work, the Plaintiff has no case presented before the court. As far as the rights to privacy is concerned, someone who works in a factory as contained in exhibit P1 and P2 cannot claim a right to privacy. The factory is owned by the Defendant and the Defendant can bring in people at any time to inspect the factory thereby excluding the rights to privacy.”

High Court Indicts Kenya Copyright Board for Abuse of Court Process

high flyer series cover std 6 math

“It is obvious to me that where the issue of copyright is contested, the Police, the DPP and the Copyright Board cannot convert themselves into the High Court, settle that issue and declare that the 1st Petitioner has violated any part of the Copyright Act. Their actions are premature, malicious and unlawful and that is what is called abuse of Court process to settle personal scores and this Court cannot sit idly and watch them do so.” – Lenaola J., at para 48.

The above passage is taken from a recent High Court judgment delivered in the case of Peter Gichuki Mwangi & 2 others v Copyright Board of Kenya & 3 others [2014] eKLR. A copy of this judgment is available here. In this case, the copyright (and trade mark) subject matter in dispute was several popular school books published under the title “High Flyer Series”. As the story goes, Peter Gichuki Mwangi (1st Petitioner) and Anthony Kiai (4th Respondent) were once business partners and together they run the publishing house responsible for the books, High Flyer Publishers Ltd. Upon disagreements arising between the two partners, Kiai moved to court for determination of the issue of copyright ownership in the on-going case of HCCC No. 45 of 2011 and unsuccessfully sought injunctive orders from the court pending the hearing and determination of that case. In addition, the court declined to grant Kiai’s prayer for Anton Piller orders. In the instant case, Lenaola J. notes that it was only after failing to obtain the above orders and others, including specifically the Anton Piller orders to search the premises and seize evidence without warning, that Kiai enlisted the support of the Kenya Copyright Board (KECOBO) in storming certain premises where Mwangi was publishing some of the books whose copyright remains contested. Another noteworthy point is that prior to these enforcement actions by KECOBO, the case HCCC 107 of 2013 had already been filed relating to the same disputed copyright works and it was pending determination.

In light of the above, the court held that whereas KECOBO and the DPP have certain statutory and Constitutional mandates which they are lawfully entitled to exercise in the context of the law, the actions taken against Mwangi and the other Petitioners were an abuse of Court process. The learned court also held that since the issue of breach of copyright is still being contested in the High Court, that issue should be settled before a decision whether any party may be guilty of such breach can be addressed. Therefore the court made the following order:-

“An order do issue that the 1st Respondent [KECOBO] and 2nd Respondent [DPP]’s decision to charge the Petitioners in Criminal Cases Nos. 224, 225 and 295 of 2013 together with any charges presented to the 3rd Respondent be stayed pending the final determination of HCCC No. 45 of 2011 as to the lawful or legal owner of the copyright in relation to HIGH FLYER SERIES.”

Comment:

This judgment epitomizes the transformation currently taking place within the Judiciary of Kenya (highlighted elsewhere by this blogger). While the judicial branch respects that state organs have a certain amount of discretion in the exercise of their statutory and constitutional duties, this discretion should not be exercised arbitrarily, oppressively or contrary to public policy. In the present case, the court is convinced that ‘it is an abuse of criminal process for a person to launch criminal proceedings against the other, in civil matters which are genuinely disputed on substantial grounds by that other person and the civil dispute cannot be reasonably ventilated and decided with a fair finality in the criminal process.’

In its hard-hitting judgment, the court notes:

“Instead of pursuing an appeal against those orders [in HCCC 45 of 2013] or seeking a review thereof or pursuing the civil suit to conclusion, the 4th Respondent [Kiai] enlisted the help of the Copyright Board of Kenya and the Kenya Police to achieve that which he had failed to achieve at the High Court. The result of his efforts was the arrest of the Petitioners [Mwangi and others] and their arraignment in Court. One of the policies jealously guarded by the Courts is the need to ensure that there is no abuse of court process to harass, intimidate and coerce another party to settle a purely civil matter.”

In recent years, the criminal enforcement of copyright infringement both at the instance of either KECOBO and/or collecting societies has become a controversial issue with members of the public complaining of harassment, corruption and malice (See a recent report here). In the present case, KECOBO relied on Section 193A of the Criminal Procedure Code which provides that “the fact that any matter in issue in any criminal proceedings is also in directly or substantially in issue in any civil proceedings shall not be a ground for any stay, prohibition or delay of the criminal proceedings.” However, along comes the learned Lenaola J. who appreciates the existence of this express provision of the Criminal Code but still finds fault in KECOBO’s enforcement action. The court has not set an important precedent that any exercise of discretion in the performance of statutory and/or constitutional functions by KECOBO is subject to review by the High Court.

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

KENYA-CONSTITUTION-KIBAKI

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

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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

Hear-No-Evil-See-No-Evil-Speak-No-Evil

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!]

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