The Creativez Meetup This Sunday – Let’s Talk Intellectual Property

IPKenya would highly recommend that all attend an important event dubbed “The Creativez Meet-up – Intellectual Property” taking place this Sunday 3rd June from 14h00 to 17h00.

Here are just a few reasons why:

1. The calibre of speakers:

Almost all the presenters are LL.M holders in Intellectual Property and have extensive experience in their respective areas of work in the copyright and industrial property branches of IP.

IPKenya has previously done a mini profile of the three female presenters: Angela, June and Sharon under the title: “Women Leaders of Copyright in Kenya”

As for the two gents:

Paul is a Legal Officer at KECOBO and a Copyright Inspector. He is also in charge of KECOBO’s social media presence through the insightful facebook updates and twitter tweets: @KenyaCopyright.

David is a man who needs no introduction. He’s been a prominent figure in Kenya’s Industrial Property scene and is currently the Assistant Chief Patent Examiner at KIPI. You may also know him as “Njuguna” on the widely read “Afro-IP” blog.

2. The wide selection of topics up for discussion:

With such an illustrious panel of speakers, no topic in intellectual property is off limits. IPKenya encourages all participants to come prepared to engage the panelists on practical issues they’ve encountered and how the IP system would be of use to them.

Of course IPKenya’s focus borders mainly on IP developments generally. Topics of particular interest include: progress on the Traditional Knowledge Bill, the Geographical Indications Bill, need for a National Policy on IP, progress on the establishment of the Copyright Tribunal, the debate over software patents in Kenya, the fight against copyright piracy, the wrangles surrounding regulation of collective management organisations in Kenya, strategic plan to operationalise Articles of the Constitution dealing with IP, among many others.

3. Networking:

If it’s your sort of thing, ofcourse!

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Hoping to see you all on Sunday at the i_Hub*. Be sure to register for the event here.

Happy Madaraka Day (in advance) everyone!

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Words for the Unwary: Intellectual Property and Political Parties in Kenya

Political parties in Kenya would be advised to take some lessons from recent happenings in Ghana and South Africa, relating to intellectual property (IP). With elections around the corner, there are a number of important issues that must be addressed by political parties to ensure that they do not fall foul of existing IP laws and procedures.

Here are IPKenya’s words to the unwary:

1. Copyright Registration of Party logos

Under both Kenyan and international law, copyright registration of a work is not the basis of the copyright. In other words, registration is not what gives a claimant copyright protection. Thus original authorship receives automatic protection without the need for formalities or registration. Therefore, copyright protection may be granted under other statutes of a specialised nature, such as the Political Parties Act with respect to party symbols or logos.
Under this Act, there is a mandatory requirement to supply the Registrar of Political Parties with certain particulars for the registration of a political party, including “name, emblem, motto and any other marks or features of the proposed political party”. The symbol of a party applying for registration is so significant that the Act prohibits the use of the symbol or emblem to communicate ethnic, gender, regional or religious particularism. Therefore it is possible to assert copyright ownership of party insignia on the basis of a political party registration certificate.

Recently, in Ghana, the former First Lady Nana Konadu Agyemang Rawlings somehow managed to register the logo of the ruling National Democratic Congress (NDC) with the Ghana Copyright Office. She has now threatened to “take back” the NDC logo alleging that the party has failed to live up to the ideals espoused by her husband, the former President Jerry Rawlings. The ownership dispute between NDC party officials and Mrs Rawlings is important in that it illustrates the limitations of copyright registration. Mrs Rawling’s claim to ownership is based on copyright registration of the logo, whereas the NDC officials claim that the NDC logo belongs to the NDC as a political party. In light of the above, prior political party registration clearly trumps the registration of copyright by Mrs Rawlings unless she can prove that she is the original author of the symbol.

Meanwhile in South Africa, the recent controversy surrounding a gallery exhibition by Brett Murray named “Hail to the Thief II” has raised interesting issues that political parties in Kenya will have to grapple with. The work in question is pictured above and depicts the logo of the ANC with an inscription “FOR SALE” and “SOLD”. The ANC has taken the matter to court claiming that “Murray’s work has not only defaced a symbol that the ANC has intellectual property right to, but is a clear sign of attack on the ANC as an organisation.”
Under copyright law, every political party enjoys moral rights in respect of their logos. Section 32 of the Kenya Copyright Act provides that political parties have the right to: “object to any distortion, mutilation or other modification of or other derogatory action in relation to, the said work which would be prejudicial to his honour or reputation.”

2. What is on the Internet is generally not free to take

Materials such as photos, videos, music, illustrations and logos that are found on the Internet (or elsewhere) are not necessarily in the public domain and cannot simply be appropriated and used without authorization.

Earlier this year, IPKenya highlighted the case of Nairobi County Gubernatorial Candidate Evans Kidero who “borrowed” a picture from the blog of local photographer Mutua Matheka for his campaign. Matheka claimed that his permission was not sought nor was any compensation paid to him. Copyright law was clearly on Matheka’s side and if he had opted to sue, Kidero and his campaign team would have coughed up significant sums as compensation.

Therefore, political party employees and officials must be careful when using materials obtained from the internet. Most websites have clear User Policies and specific Licensing requirements and modes of attribution as well as contact details of the copyright and or trademark owner(s).

3. What you create vs What you own

The simple rule is that you don’t own what you did not create. Copyright confers ownership rights in respect of all literary, musical, artistic and audio-visual works. The law vests ownership of copyrights in the creators of original works unless they are works “commissioned by a person under a contract of service” or “made in the course of the author’s employment under a contract of service.”

For political parties during campaigns, copyright ownership of things like your website design, materials published on your website, and print, radio and television ads is very important. In the case of commissioned works, where the party commissions work from a person which is not a party employee, the copyright is deemed to have been transferred to the person who commissioned the work. However, the author would have copyright in case she has specifically reserved copyright under the contract between herself and the party.

At any rate, political parties are advised to ensure that all licenses to use or assignments of the materials from the copyright owner are reduced to writing.

4. Be careful with fair dealing exceptions and limitations

The concept of fair use or fair dealing, which permits the use of copyrighted works of others under certain conditions, is frequently misunderstood.

In the case of political parties in Kenya, section 26 of the Copyright Act provides a list of several exceptions and limitations to copyright. We acknowledge that political parties will often need to use video clips, pictures and sound clips of other copyright owners as part of their own campaign ads and other materials. The Copyright Act allows such use if it is solely for the purpose of criticism or review.

The line between fair dealing and infringement is not easily defined and copyright owners may challenge certain uses of their work depending on the facts of the specific case in question.

5. No license, no play

Like many modern democracies, the hallmark of an election year is the endless amount of campaign rallies and public events. Political parties must remember that copyright law imposes certain rights and obligations on their use of music during those campaign related events.

It must be understood that recorded music embodies at least two separate works of authorship, each protected by separate copyrights: the musical composition and any accompanying lyrics (termed the “musical work”) and a particular recorded rendition of that music (termed the “sound recording”).

One recalls that as recently as last month, the Music Copyright Society Kenya (MCSK) warned that political parties holding public rallies risked prosecution if they did not obtain licenses for playing music. This license is a Public Performance license and will cost a party roughly 180,000 shillings.

Therefore, political parties must ensure that they pay up licenses fees before conducting their rallies and public events so as not to fall foul of copyright laws and deprive artists of revenue.

Safaricom and Intellectual Property Theft: Some Thoughts

The Business Daily reveals that there are currently two accusations of intellectual property theft levelled against Safaricom, Kenya’s leading mobile telephone company:

a. “Maliza Storo”: a service that enables pre-pay subscribers to access airtime on credit for a fee of 10 per cent for each request.

b. “M-Kesho”: a mobile-based platform allows customers to perform basic banking transactions.

The accusations in both cases are more or less the same. Innovators pitched these ideas as business proposals to Safaricom. Safaricom accepts the proposals. Several months later, the innovators in question see their ideas have been implemented without Safaricom seeking their consent or paying any form of compensation.

IPKenya would like to make the following three overlapping points:

1. Patentability of business methods?:

There is/was an argument that mobile phone generated innovations such as Mpesa could be protected as process patents in Kenya. However, the Industrial Act is clear in Section 21 (b) that patentable inventions do not include:
“schemes, rules or methods for doing business, performing purely mental acts or playing games”

So IPKenya wonders why Justice Musinga has referred the mPesa case to the Industrial Property Tribunal. The Tribunal’s hands are tied. It will only confine itself to the four corners of the Industrial Property Act, 2001 which will not work in favour of the innovator.

2. The role of the IP offices:

The IP offices namely KIPI and KECOBO still have a long way to go as far as awareness creation is concerned. The challenge is to demystify IP and give all members of the public basic information on how they can use the IP system to safeguard their intellectual assets. Other information that the IP offices need to pass on to the general public is on the use of non-disclosure agreements, licensing agreements and other relevant forms of contracts.
These offices must also be more pro-active in lobbying for funding for innovators, creators, inventors with great ideas and projects but lack adequate funding.
IPKenya is also concerned about the peculiar practice at KECOBO where individuals are allowed to register business proposals, concepts, TV show plots and events as literary works. These individuals register these works under the false presumption that they are obtaining a monopoly over the ideas contained in their proposed works.
Instead IPKenya argues that the IP offices should put more emphasis on the role of branding. Inventors and creators must be encouraged to brand their innovative goods and services using the trademark system. The public needs to understand that copying can only be countered by establishing goodwill and brand loyalty as the pioneer and quality benchmark in a particular market.

3. The role of the Judiciary:

IPKenya would like to believe that the courts can help put an end to a disturbing trend of Safaricom’s exploitation of the ideas of innovative Kenyans. Here we pause to recall the case of Alternative Media Ltd v Safaricom, Civil Case 263 of 2004. The plaintiff alleged that the defendant had used the plaintiff’s artwork on the defendant’s scratch cards without the plaintiff’s authority. The plaintiff claimed that the defendant had infringed the plaintiff’s copyright and asked the court for compensation and to permanently restrain the defendant from committing further infringement. The court found in favour of the plaintiff, stating that it had proved it was the owner of the copyright in the artistic works in issue and that the defendant had infringed this copyright.

However, the present cases require the courts to go beyond interpretation and to actually create new law in the area of industrial property. Although section 21 of the Industrial Property Act purports to exclude “methods of doing business” from the scope of patent protection, it is undeniable that mobile technology in Kenya particularly mobile money transfer, is/was a process that is/was novel, inventive/non-obvious and industrially applicable. In the present case, all indications are that Safaricom has been unjustly enriched from the mPesa idea and other ideas it has turned into business products without giving any form of compensation to the innovators concerned.
More fundamentally, IPKenya argues that the industrial property law must be re-examined in light of this mPesa case with the possibility of allowing grants of patents to be issued for business methods.

UPDATE: Isaac Rutenberg over at Afro IP Blog has just published an article titled: “Safaricom, mPesa and business method patents: another view” in which he disagrees with the position I have taken on business methods patents in Kenya. Kindly share with us your views on this debate.

Performers’ Rights: Positive Amendments to the Kenya Copyright Act

The Business Daily reports that the Attorney General has proposed amendments to the Kenya Copyright Act 2001 (No 12 of 2001) by inserting a new clause (30A) which now gives performers the right to claim and equitably share remuneration for sound recordings and visual works among themselves.

In a quote reported from the Kenya Gazette Supplement, AG Muigai explains that

“If a sound recording is published for commercial purposes or a reproduction of such recording is used directly for broadcast or other communication to the public performed, a single equitable remuneration for the performer and the producer of the sound recording shall be paid by the user through their respective collecting management organisation,”

Angela Ndambuki, the GM of Performers Rights Society of Kenya (PRSK) is reported to be in support of the new amendment and said as follows:

“(The new law will) put Kenya at par with international best practice and introduce this right which I would say is an advantage to all users of music as they can now play what they want to play without any restrictions as before (…) The equitable remuneration right is actually not about KAMP and the performers society but about the producers and performers as a whole.”

A full copy of the proposed amendments to Section 30 of the Copyright Act is available here.

Comment:

IPKenya believes that this is indeed a positive amendment to the Copyright Act because it finally provides that a performer of a sound recording or a visual recording is entitled to an equitable remuneration for the use of sound recordings or visual recordings. The importance of enshrining these rights to remuneration for performers cannot be overstated. The rights to remuneration which by law are shared between different categories of right holders are not transferable, contrary to the exclusive right which is continuously under pressure from the performers’ interlocutors (producers and broadcasters who want to obtain the transfer of the performers’ rights to their benefit).

Independently from what has been agreed between a performer and producer, the share between both (and also of the author in the case of private copying) must be done as legally provided and can not be contractually modified. This is a very important advantage of the rights to remuneration over exclusive rights.

As IPKenya has previously reported, the collecting societies for performers and producers of sound recordings, PRSK and KAMP respectively, have entered into a partnership whereby annual license fees for royalty payments are collected jointly. Therefore this proposed amendment is timely and provides much needed clarity in copyright and related rights administration in the country.

Licensing Digital Works and Copyright Law in Kenya

Editor’s note:
IPKenya invites you all to an IP discussion session dubbed ‘IP Check-in’ to be held at the Nairobi Innovation Hub (*iHub_) on Saturday May 12, 2012 from 11 am. The topic of software licensing and intellectual property will be discussed.

Our point of departure is that in Kenya, the definition of a ‘computer program’ under the Copyright Act envisages software to be part of literary works. A computer program is defined as follows:

a set of instructions expressed in words, codes, schemes or in any other form, which is capable, when incorporated in a medium that the computer can read, of causing a computer to perform or achieve a particular task or result.

In some jurisdictions, like the US, software has been protected under copyright and patent as well.

Licensing is one of the means by which the owner of copyright can exercise his or her economic rights. In this regard, Section 33 of Kenya’s Copyright Act states that:

33.(1) Subject to this section, copyright shall be transmissible by assignment, by licence, testamentary.disposition, or by operation of law as movable property.

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Kenyan Intellectual Property Law Practice Strikes Gold

One of Kenya’s most prominent corporate law firms, Iseme, Kamau & Maema Advocates (IKM), has been named as one of the top 1000 global law firms in trademark law practice and related intellectual property matters. The World Trademark Review 1000, which is in its second edition, is an essential guide to the world’s leading trademark professionals. The WTR 1000 recommends 1000 global law firms and attorneys considered to be the leaders in the field and delivering top-quality trademark services.

IKM is now in the WTR 1000 Gold Band.

The WTR 1000 “Gold” band is described as follows:

“Firms and individuals in the gold band are those that attract the most positive comments from sources. We have identified them as the crème de la crème; their success hinges on reputations established over lengthy periods of time, something which enables them to secure the most high-profile, big-ticket work from the most demanding of clients.”

IKM Partners: (L-R) Martin Munyu, Anne Kinyanjui, James Mburu Kamau, William Ikutha Maema, Karori Kamau


In reacting to the news, William Maema, IKM Head of IP said, “As an indigenous law firm, we are humbled, yet encouraged by the gold ranking which speaks volumes of our professional capacity to deliver world class intellectual property and related trade mark counsel to our clients”.

He further added: “Intellectual Property specialisation may well be an emerging space within the local jurisdiction and we are proud that we have retained a wealth of experience to help us guide our clients through.”

In Kenya, IKM Advocates has been named as a Gold Band law firm alongside Kaplan & Stratton Advocates.

IPKenya would like to congratulate IKM as well as the other five firms in Kenya that have been named in the Silver Band. However IPKenya is disappointed that none of these law firms are publishing articles, reports and other useful guidelines on intellectual property law and practice as it evolves in Kenya and within East Africa. Hopefully, this will change and we will begin to demystify intellectual property law for SMEs and the public at large.

IPKenya is pleased that the World Trademark Review rightly recognises Kenya as the “commercial hub of East Africa and a focal point for trademark activity in the region”. WTR 1000 also acknowledges Kenya as an attractive market for multinationals seeking to protect and enforce their trademark rights because of the quick turnaround time on trademark registrations and the increasing levels of IP specialisation in the judiciary. Furthermore the WTR notes that the Anti-counterfeit Agency – established under the Anti-counterfeiting Act – is now in operation to enforce IP laws including the rights of brand owners.

Kenya’s Top IP Lawyers to Attend International Trademark Association INTA Annual Meeting

You’ve probably heard that next week, 9,000 professionals from around the world are expected to attend the International Trademark Association (INTA) Annual Meeting in Washington, DC from May 5 to 9 2012.

Some of the topics on the agenda include international trademark issues, including developments in international trademark laws, tactics for fighting global counterfeiting and effective strategies for domain management.

Here are the IP practitioners from Kenya that have confirmed their attendance (in alphabetical order):

> Anti-Counterfeit Agency (ACA) – represented by its CEO/Executive Director
> CFL – represented by 1 of its Partners
> Coulson Harney (CH) – represented by 1 of its Partners
> Hamilton, Harrison & Mathews (HH&M) – represented by 1 of its Partners
> Iseme, Kamau & Maema (IKM) – represented by 1 of its Partners
> Kaplan & Stratton – represented by 1 of its Partners
> Muriu Mungai & Company (MMC) – represented by 3 of its Partners

IPKenya has noted an interesting item on the INTA Meeting Program scheduled for Wednesday 9th May:

RW01 Regional Update: Africa
Intermediate Level

Panelists will discuss strategies and pitfalls for using an international system and the regional trademark registration systems in Africa, Organisation Africaine de la Propriété Intellectuelle (OAPI) and African Regional Intellectual Property Organization (ARIPO) to protect your trademarks. Many African countries are members of the Madrid System. The panel will also cover current hot topics in Africa.

Moderator:

Marco Van de Merwe, Spoor & Fisher (South Africa)

Speakers:

Ephraim N. Ngwafor, Ngwafor & Partners (Cameroon)
Michael F. Sevant, Spoor & Fisher Jersey (Channel Islands)
Gift Sibanda, African Regional Industrial Property Organization (ARIPO) (Zimbabwe)

Although IPKenya will not be attending this formidable meeting of IP minds, it is hoped that the participants representing Kenya and the other African participants will truly put African Intellectual Property on the map during this Africa Session at INTA.

IPKenya trusts that Afro Leo (who most certainly will be in attendance) will blog about the issues, discussions and outcomes of this session and the INTA Annual Meeting as a whole.

For those who, like IPKenya, will not be attending INTA, you can follow the events via the INTA website (http://www.inta.org) or on twitter using the #INTADC hashtag.