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IP Crammer 2011: The Good, The Bad & The Ugly of Intellectual Property in Kenya

Afro Leo a.k.a the Lion that tweets has let the cat out of the bag about this year’s IP Crammer which I assume will be similar to a previous one he attended.

Anyways, his roar to African IP observers and commentators in regard to the IP Crammer was loud and clear:

“What are the top IP stories on the continent this year?”

Well, speaking specifically of Kenya’s IP space, it’s been a mixed bag of good and bad news.

The Good

Good #1: The Anti-Counterfeit Agency (ACA)’s work in IP enforcement
According to the Kenya Association of Manufacturers (KAM), counterfeiting is costing the East Africa Community over Kshs 40 Billion in tax revenues whereas in Kenya, the public sector looses approximately Kshs. 19 Billion and the private sector about Kshs. 50 Billion per year.
Enter the Anti Counterfeit Agency (ACA), Kenya’s newest IP enforcement body and second in existence after the Kenya Copyright Board (KeCoBo).

The ACA was clearly intended to be a versatile overarching statutory body bringing together all the major government players dealing with matters of counterfeiting and piracy in one way or another within their respective mandates. However, it must be remembered that the ACA itself is a novel concept. There is no country in the world that has a specific government agency which solely deals with counterfeiting and piracy. Therefore since it’s inception, the ACA has been quietly studying best practices from around the world on IP enforcement as well as trying to engage with the private sector players to get their involvement, feedback and support. The ACA has particularly benefitted from observing firsthand the multi-agency approach to IP enforcement that exists in the US between the Departments of State, Justice and Commerce as well as Customs and Border Control.

The result is that ACA is now working hard to emulate this interagency approach to IP here in Kenya. Its Board Members encompasses officials from the Copyright Office, the Industrial Property Office, the Attorney General’s Office, Customs Department, Standards Bureau among others. This year, the ACA has been very active on IP enforcement conducting numerous strategic well-coordinated raids and sting operations throughout the country busting huge counterfeit rings. One of their most recent raids took place on Friday last week during which it seized over 20, 000 pieces of counterfeit Nokia products intended to be distributed and sold in the Kenyan market. This major bust was successfully planned and executed with the aid of the Kenya Bureau of Standards and the Kenya Police.

Furthermore, as I indicated in a previous blog, the ACA has been working closely with the Communications Commission of Kenya to switch off all counterfeit phones operating within mobile networks in Kenya by December 31st 2011.

With more funding and personnel, the ACA is poised to become a model of IP enforcement not just in the region but in the world.

PS: The current Executive Director of the ACA is on twitter: “@smallowah”

Good #2: Increase in awareness about intellectual property laws among digital content creators

Kenyans have become very conscious of their intellectual property rights and are eager to recieve credible information on how to best protect and commercialise their digital content. Several interesting associations have allowed digital IP creators in Kenya to come together and address their shared concerns about plagiarism, copyright infringement and intellectual property theft:

- iHubNairobi (*iHub): They have been exceptionally active in the area of facilitating IP awareness in Kenya. They started with a forum on Creative Commons with Mr. Kihanya (one of the guys advocating for CC Kenya), then several months later, a forum on industrial property with Dr. Mutai (Managing Director of KIPI and Registrar of Trademarks), a forum on copyright with Dr. Ouma (Executive Director of KeCoBo) and a series of forums on IP for start-ups, entrepreneurs and developers with Dr. Rutenberg (a visiting IP expert from the US).
In addition, *iHub has supported other associations like POWO and BAKE in their IP-oriented endeavours.

- Poets and Writers Online (POWO): a forum for Poets and Writers that seeks to encourage Kenyan Creative writers to exploit the various opportunities presented by their internet for promotion of their writing.
As part of its ritual monthly forums, POWO devoted the month of July to addressing copyright and intellectual property issues at a forum where various IP experts were invited to share their IP knowledge and listen to the experiences of the POWO participants.

- Bloggers Association of Kenya (BAKE): a recently constituted association which seeks to bring together bloggers throughout Kenya. It is believed that BAKE could eventually become a powerful platform to lobby for the intellectual property rights of its members whose original works are often vulnerable to unauthorised commercial uses by mainstream media and corporates.

Good #3: The court ruling in Anne Nang’unda Kukali v Mary A. Ogola & University of Nairobi [2010] eKLR

Although the court decision was handed down in late 2010, the case was reported in early 2011 and I believe it is a balanced IP friendly ruling of the High Court. (Full case here)
In this case, the applicant moved to court to prevent the second respondent from conferring on the first respondent the degree of Master of Arts in Project Planning and Management on the grounds that the first respondent had plagiarised the applicant’s work.
The evidence adduced convinced the court that the applicant had indeed submitted a similar work to the alleged infringing work 2 years prior to the first respondent’s submission. Although, the first respondent admitted to have seen the applicant’s work, the former alleged that on the advice of the 2nd respondent the draft containing the applicant’s work was withdraw and a fresh work was then produced and re-submitted. The court correctly noted that there was no evidence adduced to prove that the infringing work was indeed withdrawn as alleged by the 1st respondent.
The court was therefore satisfied that the applicant was indeed likely to suffer substantial loss due to violation of intellectual property rights if the first respondent was allowed to use the applicants original work in her degree course approval.

The Bad

Appropriation of the Maasai Shuka by French Fashion House Louis Vuitton

A couple of months ago, Louis Vuitton unveiled their new Menswear 2011/2 Spring-Summer Collection where vibrant ‘maasai’ colors of the ‘shuka’ are the main feature. This story revived a long-standing discourse on whether Kenya through its IP Offices and other government agencies is doing enough to protect our national IP assets. There was a section of discontented Kenyans who immediately compared this situation to the Kiondo and Kikoy cases where they also felt that Kenya’s IP assets were misappropriated.
I offered an opinion on this raging debate issue here.
What earned this IP story a slot in the “Bad” category is two-fold: firstly, it is now clear that a lot of kenyans, even the educated ones, had not previously understood the basic reasoning behind the Kiondo and Kikoy cases and appeared to be perpetuating the falsehood that Kenya’s Kiondo and Kikoy had been “stolen”. Therefore more education is needed on IP not just to explain how IP works but also to encourage IP holders to commercialise and exploit their resources for their benefit. Secondly, this story brought into sharp focus two important missing legislations that would help in dealing with similar issues namely, a law on geographical indications (GI) and a law on traditional knowledge (TK). As it turns out, the government is fully occupied with our one year old Constitution and all the important constitutionally-mandated subsidiary legislations yet to be enacted therefore I’m afraid the agenda for the GI and TK Bills will be pushed well into next year.

The Ugly

Revocation of MCSK’s license and the ensuing legal battle

At 27 years old, Kenya has one of the oldest Collective Management Societies on the African continent in the Music Copyright Society of Kenya (MCSK). However, in terms of the Act, all Collective Management Organisations (CMOs) including MCSK must obtain a license from KeCoBO every year in order to collect license fees and distribute royalties on behalf of their specific rights holders.
However once a license is granted by KeCoBo to a CMO, the license can be revoked by KeCoBo on various grounds including failure to function adequately as a collecting society, not acting in accordance with its memorandum and articles of association or in the best interests of its members, alteration of its rules so that it no longer complies with the requirements for granting of a licence or refusal or failure to comply with any of the provisions of the Copyright Act.
With this in mind, KeCoBo, via Official Gazette Notice 5093 of May 6 2011, deregistered MCSK as a collecting society for music composers, authors and publishers with effect from April 1 2011.
Its main concerns with the society were its alleged non-remittance of royalties to musicians and the fact that it spent most of its revenue on administration. It is noted that the society’s expenses stood at Shs137 million in the year ending in June 2010, against revenues of Sh185 million, leaving it with a surplus of Shs48 million – approximately 25% of its collected fees are channelled to musicians. (Read the story here)

Things took a turn for the ugly when MCSK, still defiant after KeCoBo’s move, rushed to court to challenge the Board’s decision in the matter i.e. they applied for judicial review (JR). Another awkward twist came in the Orders granted by the court presided over by Justice Gacheche. The leave granted to MCSK to file it’s JR application also meant that the implementation or enforcement of the Board’s decision purporting to revoke the society’s licence would be stayed until October 27 2011. Second, the leave also operates as a stay against the gazette notice purporting to deregister MCSK as a collective society until October 27 2011.

This MCSK/KeCoBo tussle has left a trail of destruction most notably it led to the voiding of a historic Joint Licensing Agreement reached earlier in the year aimed at harmonising license fees collections for the three main categories of music copyright holders in Kenya: music producers (represented by KAMP), performers (represented by PRSK) and authors/composers of music (represented by MCSK).

All that is left is to hope that the MCSK matter is resolved conclusively and that KeCoBo tightens it’s licensing and supervisory functions of CMOs to avoid future cases.

In sum, it’s indeed been a bittersweet year for IP in Kenya. And now, the floor is open to my fellow Kenyan IP enthusiasts in case there are certain news-worthy aspects of Kenya’s IP space that I may have omitted, ignored or otherwise been unaware of.

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