Revenue Service and Copyright Office: Strange bedfellows?

Over the past couple of years, one of the most problematic provisions in the Copyright Act has been, without doubt, section 36, which reads, in part:

“36.

(1) A manufacturer or producer of sound and audio-visual works or recordings shall apply
to the Board. for the authentication of copyright works.

(2) The Board shall authenticate copyright works according to all required documents
furnished to it by the applicant for that purpose and shall issue an approval certificate in the prescribed form to the applicant for authority to purchase an authentication device from the Kenya
Revenue Authority
.

(3) A manufacturer or producer of sound recordings or audio-visual works shall purchase
such authentication device from the Kenya Revenue Authority as may be required to cover the
number of copyright works he intends to sell or distribute.”

10 years since the drafting and enactment of the Copyright Act, section 36 has not been implemented as envisaged with the Kenya Copyright Board (KeCoBo) handling the issuance of the authentication stickers without any involvement from Kenya Revenue Authority (KRA). KeCoBo launched the authentication stickers in 2010 and called it “Anti-Piracy Security Device (APSD)”. This APSD is composed of both a hologram and barcode stickers, sold together by KeCoBo. Earlier this year, IPKenya discussed the APSD here.

KeCoBo has in the past argued that there are two angles to having a voluntary registration system accompanied with authentication of copyright works through the APSD: 1) revenue collection; 2) deterrent against piracy. However the reality is that KeCoBo lacks the resources and infrastructure to ensure that the APSD is available for purchase throughout the country. In addition, the non-involvement of KRA as provided for in the Act has resulted in a number of court cases filed against KeCoBo for acting ultra vires and in breach of the statutory provisions.

The rationale behind section 36 was based on Ghana’s Copyright Office which chose the national internal revenue service to be in charge of issuing authentication stickers to be affixed on all copyright works being sold. The internal revenue service KRA would therefore be best placed to issue these stickers because it was considered that KRA has the necessary infrastructure already in place including offices countrywide as well as measures for security, storage and distribution.

Another compelling factor behind KRA’s consent to be part of the copyright administration process was that it would allow it to levy tax on the audio-visual and musical copyright industries. This sector largely operates in the informal sector of the economy, which is largely untaxed. The added advantage of KRA is also that its Customs Department works at the national borders and can enforce authentication of all imported copyright works coming into the country.

In light of this, KeCoBo will be forced in the very near future to approach KRA and come up with either a Memorandum of Understanding (MoA) or an Agent-Principal Agreement so as to give full effect to section 36. Regardless of what name or shape this agreement takes, it is clear that KRA will solely be responsible for issuing the APSD in all its branches countrywide, collecting the proceeds from the sales of the APSD and accounting for the same to KeCoBo. However, it is almost certain that KRA will levy tax from the proceeds of the APSD sales since those monies are not considered as ‘exchequer revenue’ and also for purposes of covering its costs involved in collection.

KeCoBo on its part would remain the enforcement authority and therefore would have to expand its enforcement actions countrywide to ensure that the APSD is being purchased and affixed on each copyright work being sold, in line with the Act.

It is worth mentioning that KeCoBo has, at several times this year, undertaken to use a portion of the proceeds from the sale of the APSD to set up an “Artists’ Fund” which would be used to conduct awareness campaigns and provide some financial assistance to copyright holders in Kenya. Therefore a meaningful partnership with KRA would ensure that KeCoBo is able to collect enough money to set up this fund as well as run its other operations as mandated by the Act.

Agence France Presse (AFP) sues Kenyan newspaper for copyright infringement

The December Issue of the Nairobi Law Monthly reports that international news agency Agence France Presse (AFP) has sued Nairobi Star Publications Ltd., publishers of The Star newpaper for infringement of copyright.

AFP alleges that the Star has published five articles without its permission and has refused to admit liability despite demand and notice of intention to sue having been issued. The news agency has instructed Oraro & Company Advocates to seek an inquiry of damages and an account of profits made by The Star on the copyrighted materials. AFP wants The Star to be restrained from copying its literary work for its website and claims that “unless restrained by a court order, the newspaper threatens and intends to continue and repeat the acts of infringement complained of”

As many are aware, AFP has entered into subscription agreements with several websites and licensed media houses all over the world allowing them access to real-time news stories but under clear conditions. There is no evidence of any such arrangement or agreement relating to the use of AFP’s stories with The Star.

IPKenya will be following up on this matter at the Milimani Commercial Court and will report back soon.

Uganda: A Trademark Tale of Two Chinese TECNO Mobile Phones

TECNO TELECOM LIMITED v KIGALO INVESTMENTS LTD (MISCELLANEOUS CAUSE NO.0017 OF 2011) [2011] UGCommC 112

In a recent case before Lady Justice Hellen Obura sitting in the Commercial Division of the High Court of Uganda at Kampala, Tecno Telecom Ltd. (the applicant) applied under sections 45 and 46 of the Trademarks Act 2010 to have the trademark “TECNO” registered by Kigalo Investments (the respondent) in Uganda removed from the register on grounds of proof of prior registration in a country of origin, and/or for non-use of the trademark.

The crux of the applicant’s case is that the trademark registered by the respondent was similar and identical to the trademark first registered by the applicant in Hong Kong in all aspects as it was in respect of goods in class 9 inclusive of phones and other electronic goods which constitute the main item of manufacture in China and exports to Uganda. Furthermore, the applicant adduced evidence showing that TECNO phones had been in the Ugandan market prior to registration of the mark by the respondent and so that registration was an infringement on the applicant’s right to use the trademark in Uganda.

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