High Court of Kenya Dismisses Copyright Infringement Case Against Oxford University Press

In a ruling dated 15th June, 2012 in the case of Njeri Wangari & Another v. Oxford University Press (E.A) Ltd. [2012] eKLR, Judge A. Mabeya dismissed an application for summary judgment in a clear case of copyright infringement filed by an author and her publisher. Read the full ruling here.

The facts of this case were as follows: Njeri Wangari (who some of you may know as “@KenyanPoet” on twitter) is an accomplished author, poet, performer and blogger. Oxford University Press East Africa Ltd. is a leading educational publisher in the Eastern and Central Africa region. It is a branch of the International Division of Oxford University Press.

In May 2010, Oxford published a book titled “Counterpoint and Other Poems” which contained KenyanPoet’s poem titled “Their Eyes” which she had published in an anthology titled: “Mines and Mind Fields: My Spoken Words”, through her publisher, Nsemia Inc. KenyanPoet alleged that the copying of her poem was unauthorised and amounted to copyright infringement therefore she asked the court to award her damages for loss of income together with the loss of income by her publishers. Oxford, on its part, contended that when it published its work in 2010, it was not aware of KenyanPoet’s publication and furthermore it was not aware of the assignment of the latter to Nsemia.

The Court found that Oxford had no defence against the KenyanPoet’s claim of compensation arising from copyright infringement of her poem but held that it could not enter judgment in favour of KenyanPoet. According to the Court, KenyanPoet’s publisher Nsemia had failed to establish that there was assignment of copyright pursuant to section 33 of the Copyright Act. Therefore since the claims of both KenyanPoet and Nsemia were “intertwined”, Nsemia’s lack of locus standi in the copyright suit meant that the entire application for summary judgment had to be dismissed.

Comment

IPKenya spoke to KenyanPoet and she clarified certain issues surrounding the case:

“Oxford University Press (E.A) Ltd got hold of my poem through my blog. This was despite indicating at the bottom of the poem that all copyrights were reserved with the copyright sign. I had also given my names and email address in case anyone wanted to get in touch with me.”

“Oxford University Press (E.A) Ltd claimed that I only signed a contract with my publisher after the poem had been lifted thus my publisher could not claim loss of income. This was not true as I signed a contract with the publisher in 2009 though the book came out in 2010. Oxford’s anthology was published in 2010 as well.”

IPKenya is surprised by this ruling and questions the learned judge’s over-reliance on the apparent lack of an assignment agreement between Nsemia and KenyanPoet to deprive the latter any form of compensation for the unauthorised commercial use of her copyright work. Sadly the net effect of this ruling is that, in a classic case of David versus Goliath, Oxford University Press (Goliath) has gotten away with blatant copyright infringement without paying any compensation for copyright infringement to KenyanPoet (David). It is hoped that the ultimate judgment in this matter will clearly canvass the issues raised above.

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The Challenge for Creative Commons in Kenya

For the past 2 days Creative Commons has had their first ever Regional Convening in Africa taking place in Entebbe, Uganda.

As we are all aware, Creative Commons (CC) Corporation stewards a set of standardised copyright licenses to provide simple, standardised alternatives to the “all rights reserved” paradigm of traditional copyright. In an earlier post, IPKenya has cited Creative Commons as a possible licensing option for creators posting their works online in Kenya.

With that said, IPKenya has chosen to focus on CC because CC requires a certain level of copyright consciousness within the environment it operates for CC to play its intended role. Therefore while Kenya works towards creating an environment where traditional copyright and CC can coexist and function side by side, most creators of copyright works, in the interim, will have only two choices: share with no restrictions or not share at all online. The reason for this is two fold: firstly, the current lack of a robust system for traditional copyright enforcement and administration and secondly the problem of attitudes and/or culture.

With regard to the first problem, it must be stated from the outset that KECOBO is working hard to implement and enforce the provisions of the Copyright Act. But Kenya still continues to suffer from a total lack of awareness of copyright among its people and poor government enforcement of copyright and related rights throughout the country. There are those Kenyans who do not understand what copyright is and what copyright licensing is about. Then there are those Kenyans who know something about copyright but simply choose to break copyright laws because they know that no enforcement agency will come after them. In such an environment where does one even begin to contemplate the success of CC?

With regard to the second problem, experience continues to show that the new copy-paste way of life among Kenyans leads many to misappropriate and misuse online copyright works regardless of whether the copyright owner’s site reads: “All Rights Reserved” or “Some Rights Reserved”. In fact in Kenya, plagiarism and copyright infringement are so rampant, creators of copyright works in Kenya have learnt the hard way to post materials online at their own risk. Therefore there is need to foster a new culture of respect for intellectual property and in particular an appreciation of the economic and moral rights belonging to copyright owners.

The challenge is therefore to create an environment where traditional copyright and CC can work hand in hand. As long as copyright infringement in Kenya continues to go unreported and unpunished, the general public will continue to misappropriate and misuse the copyright works of others even more so in the digital environment.

Here are a few thoughts:

1. Digital content creators must find ways of coming up with technological protection measures that reduce copying of their work. The production and dissemination of these TPMs to copyright owners could then be subsidised by the Government.

2. KECOBO must strengthen its arbitration/mediation role so as to deal with rising cases of online piracy, plagiarism and copyright infringement and set out deterrent measures including stiff fines and other penalties for infringers.

3. Digital content creators and KECOBO must agree on a system of reporting copyright infringement in a manner that allows KECOBO to effectively play the role of arbiter and balance the interests of both the copyright holders and the copyright users.

4. The mandate of the newly established Competent Authority under the Copyright Act must be expanded to allow it to hear matters relating to copyright ownership disputes.

Last but not least

5. KECOBO must continue and intensify its efforts to create awareness and educate members of the public on basic copyright rules and principles. Digital content creators must assist KECOBO in this endeavour by forming groups that promote the dissemination of information and advice on copyright and related rights.

IPKenya argues that Kenya as a knowledge economy must reach a certain optimal level in terms of its use of the traditional copyright system before Creative Commons can truly begin to flourish among all copyright creators and users beyond just librarians, archivists, curators and governments.

Kenya Welcomes Conclusion of WIPO Beijing Treaty for Audiovisual Performers

 

Yesterday, in a historic Diplomatic Conference held in the Chinese capital Beijing, member states of the World Intellectual Property Organisation (WIPO) adopted a new Treaty in the area of copyright and related rights.

As WIPO explains, this Beijing Treaty on Audiovisual Performances (BTAP) will strengthen the economic rights of film actors and other performers and could provide extra income from their work. It will potentially enable performers to share proceeds with producers for revenues generated internationally by audiovisual productions. It will also grant performers moral rights to prevent lack of attribution or distortion of their performances. Importantly, the new treaty will strengthen the precarious position of performers in the audiovisual industry by providing a clearer international legal framework for their protection. For the first time it will provide performers with protection in the digital environment. The treaty will also contribute to safeguarding the rights of performers against the unauthorized use of their performances in audiovisual media, such as television, film and video.

 

 

You will notice in the youtube clip above that Dr. Marisella Ouma, CEO of Kenya Copyright Board, who represented the Kenya delegation in Beijing, shares her thoughts on the conclusion of BTAP and states that:

“This diplomatic conference has been a major breakthrough for the copyright industries especially in relation to audio visual works. It is also a milestone in relation to WIPO in regard to its norm-setting activities considering that the last treaty was done 16 years ago. And it actually gives us hope in relation to the norm-setting activities more so in relation to issues such as broadcasting as well as the issues of exceptions and limitations and any other international issues that might arise in this multi-cultural and borderless society.”

 

The adopted text of Beijing Treaty on Audiovisual Performances in all official WIPO languages is available here.

 

Meanwhile, back in Nairobi, IPKenya caught up with Mrs. Angela Ndambuki, the General Manager of the Performers Rights Society of Kenya (PRISK) and sought her thoughts on the recently adopted Beijing Treaty.

This is what she had to say:

“The Beijing Treaty is welcomed with much anticipation and the Performers Rights Society of Kenya (PRISK) in particular is pleased to have the International protection for audiovisual performers. The treaty provides for both moral rights; rights to be identified as the performer and prevent distortion of the performance and economic rights such as broadcasting and communication to the public which PRISK is mandated to administer.

It is now more than ever that Kenya needs to step up in terms of having presence in the audiovisual international scene to be able to benefit from the protection. At the moment we find that Nigerian movies are mostly shown hence now Policies touching on Audiovisual works and local/ Kenyan content should be lobbied and enforced to include a reasonable minimum percentage to enable our local performers to benefit.

Meanwhile the amendment proposals to the Kenya Copyright Act are in line with the Beijing Treaty. The provision of equitable remuneration not only touches on use of sound recordings but also for audiovisual works. This is good news to actors and other performers taking part in audiovisual works as it means that now they can enjoy additional remuneration for the use of their fixed performances for a period of 50 years after publication of the works.

It is my understanding that Kenya intends to ratify the Beijing Treaty. We now wait for the assent of the amendments to the Copyright Act and put proper structures in place to administer these rights. PRISK is determined to ensure that there is proper administration of these rights. We shall work with the Kenya Copyright Board (KECOBO) to raise awareness on these rights and also with other stakeholders such as the Kenya Film Commission to ensure policies are in line with the minimum standards provided in the Treaty.”

Constitutional Review and Intellectual Property Rights: Zambia’s Bold Step Forward

IPKenya recently found time to peruse the First Draft Constitution of the Republic of Zambia, published on 30th April 2012 by the Technical Committee on Drafting the Zambian Constitution.

Read the full draft Constitution here.

News reports indicate that Zambia is in the process of reviewing its Constitution and that Zambians have been given a deadline of 20 July 2012 to engage with this 272-paged draft Constitution and submit comments to Technical Committee.

IPKenya has come across the following provision in the draft Constitution:

Language and Culture.

Art. 63

4) The State shall-
(…)
(b) recognise the role of science, technology and indigenous technology in the development of the Nation; and
(c) support, promote and protect the intellectual property rights of the owner, or the people of Zambia.

5) Parliament shall enact legislation to-

(a) ensure that communities receive compensation or royalties for the use of their biological knowledge, medicinal plants and cultural heritage; and
(b) recognise and protect the ownership of indigenous seeds and plant varieties, their genetic and diverse characteristics. (…)

Comment

“To promote the progress of science and the useful arts, by securing for limited times and authors and inventors the exclusive right to their respective writings and discoveries.” – Article 1, Section 8 of the American Constitution.

IPKenya strongly believes the current process of constitutional review in Zambia affords our Southern neighbours a unique opportunity to examine in what ways socio-economic development may be constitutionally facilitated. Intellectual Property (IP) protection has achieved increasing recognition as a necessary pre-requisite to innovation-led economic growth.

Today, land, as real property, plays less significant role in development and global competitiveness. Therefore, ICT like software, the internet and e-commerce; new materials like fibre optics and super conductors and biotechnology and environmentally sound technologies are the key contributors to development.

It was this realisation that led Kenya in its new Constitution promulgated in August 2010 to recognise and expressly protect IP, innovation and technology transfer. For the first time in Kenya’s history, IP norms have been constitutionalised. Zambia seems to be heading in this very direction and in fact some of the above provisions appear to have been lifted almost verbatim from Articles 11(2), 40 (4), 69(1) (c) and (e) of the Kenyan Constitution.

IPKenya recalls when the draft Kenyan Constitution was being debated, a site called Techdirt published an article: “Why Kenya’s Attempt To Put Intellectual Property Rights In Its Constitution Is A Mistake”. Fortunately, most Kenyans did not buy into Techdirt’s outlandish arguments that entrenching IP rights into the Constitution amounted to protectionism. In contrast, IPKenya would encourage Zambia to ensure that intellectual property rights remain in its constitutional drafts until their new supreme law is finally promulgated.

In particular, IPKenya believes that the wording of the Article 63(4)(c) of the draft Constitution is significant in that it recognises that IP can be owned either by an individual or jointly by the people of Zambia:

“The State shall support, promote and protect the intellectual property rights of the owner, or the people of Zambia.” (my emphasis)

This provision, if passed into law, will be the basis upon which local creators and inventors can ensure their IP rights are respected and protected.

It will also assist Zambians in dealing with misappropriation and misuse of traditional knowledge and associated genetic resources, particularly in agricultural, environmental and pharmaceutical biotechnology.

Will the mere recognition of intellectual property rights in Zambia’s Final Constitution be an end in itself? IPKenya says no! There will be need for the government, the private sector and all interested parties to do more towards the realisation of the full economic potential in intellectual property. In this connection, IPKenya recalls sharing his thoughts on the controversial article: “You Lazy (Intellectual) African Scum!” which was focussed on Zambia but could easily be related to many other African countries. Throughout Africa, works of intellectual property are constantly created and invented but what is lacking is a robust legal and institutional framework to provide awareness, protection and enforcement IP rights.

Recently, Afro Leo highlighted a disturbing judgment by the Zambian Supreme Court in the case of DH Brothers Industries (Pty) Limited v Olivine Industries (Pty) Limited, which purported to deny trademark owners rights to unregistered marks contrary to the Zambian Trade Marks Act.

If Article 63 of the draft Zambia Constitution were to be passed, IPKenya argues that such a court decision could be successfully challenged as being unconstitutional.

In the months ahead, the long road to legal and institutional reforms for Zambia hang in the balance as Zambians craft a new constitutional dispensation which will hopefully usher in a new dawn for intellectual property rights in the Southern African country.

Intellectual Property and Sports in Kenya: Copyright Protection of Image Rights?

IPKenya recently attended a seminar on Intellectual Property and Sports in Kenya co-organised by the Kenya Industrial Office KIPI and the Kenya Copyright Office KECOBO held in Nairobi. During the two-day seminar, several distinguished speakers from academia, legal practice and sports engaged us in a variety of interesting topics including: marketing, merchandising and licensing agreements and building successful sponsorship programmes, media and broadcasting rights, signal piracy, digital content and social media, sports contracts and key clauses to look out for, administration and enforcement of IP rights in sports and finally building an effective IP rights strategy in sports.

There was a lot of robust debate and discussions on these issues but there was one particular topic that IPKenya feels deserves special mention and examination. This is the intersection between intellectual property and image rights in sports.

Consider the recent case of Kenyan footballer Dennis Oliech who claimed his image rights had been violated and quit the national team, Harambee Stars.

The above photograph of Dennis Oliech, McDonald Mariga and Bob Mugalia celebrating after Stars scored their winning goal against Angola in a 2012 Africa Cup of Nations qualifier at Nyayo National Stadium.
This photo was altered slightly then used by East Africa Breweries Ltd (EABL), the current sponsor of Harambee Stars, in advertisements throughout Kenya including several road-side billboards.

AJ Auxerre striker Dennis Oliech, Parma midfielder Macdonald Mariga and locally based Sofapaka FC player Bob Mugalia demanded to be paid by EABL for using their images to run promotions for the team.
EABL declined and relied on the KES 110 million sponsorship deal with the Harambee Stars Management Board. Clause 9 of the agreement stated that the sponsor shall have the right “to use the images of members of the Harambee Stars team for promotional and advertising activities”

It was not in dispute that EABL had a group agreement with the entire Harambee Stars Team in respect of image rights, but can this agreement be relied on where certain players are singled out their images used in advertisements? In the present case, is EABL right to argue that the three players pictured represent the entire team so as to preclude EABL from entering into separate agreements for image rights with each of the three players? The players argued that EABL should have been required to seek their consent individually before using their image. In the absence of such consent being sought, EABL is in breach of their image rights and must pay them compensation.

The issue that arose during this discussion was that there is no single source of law that recognises image rights. The closest recognition is in the Copyright Act which defines artistic works to include photographs and recognises a photographer or a third party (in the case of a commissioned work) as the copyright owner.

IPKenya was however persuaded that the easiest way to provide for statutory recognition of image rights was to amend the Copyright Act. In this regard, the Argentinian Act is worth consideration.

Argentina’s Law No. 11.723 of September 28, 1933
states as follows:

“Article 31.
The photographic portrait of a person may not be commercialized without the express consent of the person portrayed and, where that person is deceased, of his spouse and sons or direct descendants thereof or, failing that, the father or mother. In the absence of the spouse, sons, father or mother, or the direct descendants of the sons, publication shall be free.
The person who has given his consent may withdraw it but must provide compensation for any damages caused.
Publication of a portrait shall be free where it is for scientific, didactic and general cultural purposes, or relates to facts or events of public interest or which have been developed in public.”

Despite of the above proposal, an overwhelming number of speakers and participants at the Seminar opted for a sui-generis law to protect image rights.

IPKenya wonder which way Kenya will go: sui-generis protection or amending the existing Copyright Act to provide protection of image rights?

The floor is yours.

Draft National Music Policy – Your Comments are Welcome

IPKenya has received the draft National Music Policy prepared under the Ministry of Gender, Sports, Culture and Social Services.

The full Draft policy is available here. Please read it, spread the word and submit your comments here. Deadline is this Friday, 15 June 2012. Hurry!

Quick comments:

For the record, IPKenya is not against the Policy per se. All are encouraged to engage with this policy document and form their own independent views and opinions on it. IPKenya is merely playing devil’s advocate, as always.

“Music Education and Training”

Under this heading in the draft policy, there is a bullet that reads “Facilitating the Patenting of Kenyan music materials and works of art.”
Several questions come to mind: 1) does the term “Kenyan music materials” mean local/indigenous musical instruments or sheet music of Kenyan origin and creation; 2) Why patent? They’re already in the public domain. Patents and the music industry just don’t mix. (pun attempted). This section needs to be revisited.

“Documentation and Archiving”

A feelgood provision but almost likely to be impossible due to lack of resources. Digitising Kenya’s music (both past and present) for documentation, preservation and dissemination will truly be a mammoth task. IPKenya suggests that more government funds be directed to the Kenya Copyright Board which is already building a digital repository of all copyright works registered in Kenya including music. Reportoires gathered from the three music CMOs should also be pooled with that of KECOBO.

“Media and Advertising”

The gist of this heading appears to be promoting Kenyan content (especially music), use of Kenyan talent and expertise in public including broadcasts and in public institutions.
This is a positive initiative but must be backed up with amendments to the Communication Act and other relevant media laws to provide for incentives to promoters of local content as well as stiff penalties for defaulters.

“The Music Industry”

Under this heading, the focus on the development of a vibrant and productive Music Industry. IPKenya concedes that the administration of music matters in the country is also scattered across various Government bodies without any clear jurisdictional boundaries. However regulation of the music industry should be largely industry driven through self-regulation with state regulation coming in at the level of law making and policy formulation and implementation.
In this regard, IPKenya notes the absence of a Musicians’ Union in Kenya which could draw inspiration from successful unions in Kenya including the Kenya National Union of Teachers (KNUT), Central Organisation for Trade Unions (COTU) and more recently the Kenya Medical Practitioners, Pharmacists and Dentists Union (KMPDU).

Overall, this Policy proposes that a body to be named The Music Commission of Kenya be created to implement this policy. IPKenya suspects that the drafters of this policy may have been inspired by jurisdictions such as New Zealand where a similar structure is in place. One wonders how effective such a structure will be in Kenya where government agencies such as KECOBO are overstretched, underfunded, understaffed and have their hands full with administration of copyright and related rights in music among other works.