Judge Erred on Intellectual Property in Faulu Kenya vs Safaricom M-Shwari Case

JONATHAN BOWEN JB HAVELOCK DN

This blogger, in an earlier post, had expressed optimism and hope in Mr. Justice JB Havelock’s ability to preside over this high-stakes intellectual property (IP) case with clarity and wisdom.

Recently this hope has been somewhat dashed by what can only be termed as a gross and unfortunate oversight by Judge JB Havelock in a ruling he made on 20th December, 2012.

A copy of this ruling is available here.

At paragraph 12, the learned judge claims that he “really cannot see that the plaintiff’s concept paper.. qualifies” as per the interpretation section the Copyright Act, which defines inter alia the various categories of copyright works. Havelock even goes further to reproduce the entire definition of “literary work” under the Act and yet shockingly admits:

Try as I may, I do not seem to be able to fit the Plaintiff’s said concept paper into any of these categories…

Reading this section of the ruling, one is left wondering why the learned judge would chose to ignore the words “works similar thereto” in the definition of literary work. It is clear that a concept paper is a literary work in the proper interpretation of the Act. In light of the above, one is left doubtful whether the judge will be able to address the elephant in the room of this case, namely the idea/expression dichotomy and the limits of IP protection for Faulu Kenya’s creation.

This blogger has since done some background research on the learned judge and discovered yet another gross misinterpretation of the Copyright Act.

In a previous life Mr. Jonathan Bowen Havelock was Partner at Havelock, Muriuki & Raval Advocates and was advising Southern Cross Safaris Limited in a matter involving Music Copyright Society of Kenya (MCSK). There were two main issues raised: 1) Does the playing of a FM radio station in a public service vehicle constitute infringement of a copyright? and 2) What is the nature and scope of MCSK’s mandate?

In an opinion to Southern Cross dated August 4th 2008, Havelock wrote:

“it is quite clear from section 26 and 27 that the copyright license is obtained by the broadcasting authority and not by the end-user. The client is, in this instance, an end-user.”

This remark is indeed appalling and misleading in that it fails to distinguish between two distinct types of commercial exploitation of musical works under copyright, namely: broadcast and communication to the public.

Section 2 of the Act reads as follows:

“communication to the public” means –
(a) a live performance; or
(b) a transmission to the public, other than a broadcast, of the images or sounds or both, of a work, performance or sound recording;” (Emphasis mine)

Section 2 of the Act also defines “broadcast” as:

“the transmission, by wire or wireless means, of sounds or images or both or the representations thereof, in such a manner as to cause such images or sounds to be received by the public and includes transmission by satellite;”

From the sections referred to by Havelock, there is a clear distinction made between private and domestic use and other uses where revenue is generated. Therefore in the case of a PSV, there can be no doubt that the use of musical works is commercial in nature. In line with the definitions above, the PSV’s exploitation of musical work is not a broadcast but rather a communication to the public or public performance. It thus follows that both the broadcast and the public performance form part of the copyright owner’s economic rights and all other users must be licensed as plainly spelled out in the Act.

On the question of MCSK’s mandate, Havelock wrote:

“..for MCSK to be able to fulfill its mandate, it would have to have entered into an agency contract with each individual performer, whose performance it seeks to protect”.

One wonders why the Havelock failed to take cognisance of the fact that musicians sign a deed of assignment with MCSK on their registration as members, which allows MCSK to control their public performance and reproduction rights in respect of their musical works as declared to the Society.

To sum up, this blogger submits that Kenya’s Judiciary must be continuously trained on all aspects of IP, not just copyright and related rights. The Judicial Training Institute must reach out not only to the governmental IP agencies but also to institutions like CIPIT who are better placed to impart on judges and magistrates both theoretical and practical knowledge of the various branches of IP and its application both locally and internationally.

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