A Kenyan Perspective of South Africa’s Draft National Policy on Intellectual Property

South_africa_parliament1

As many IP enthusiasts may have heard, South Africa has recently published a Draft National Policy on Intellectual Property (IP) (hereafter the Policy). Within the Kenyan context, this blogger has previously questioned the need for a national IP policy particularly in light of the recognition given to IP in the Constitution. However, for the purposes of this post, the policy provides a good basis for a comparative analysis of the state of IP in both South Africa and Kenya as well as possible recommendations to strengthen IP laws.

In the area of patents, Kenya’s IP office undertakes both formal and substantive examinations of patent applications whereas in South Africa, the Policy recommends the establishment of a substantive of a substantive search and examination of patents to address issue of “weak” vs “strong” patents. The policy’s recommendation to amend South African patent law to include pre-and post-opposition would also be instructive to Kenya.

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Publicly Funded Intellectual Property: Why Kenya Needs a Bayh-Dole Law and Lessons from South Africa

science kenya hiv

“Every Kenyan is an inventor.” – Anon.

With the enactment of the Science, Technology and Innovation (ST&I) Act 2013 (discussed by this blogger here), it is imperative that the central government legislates on the management of intellectual property (IP) emanating from publicly financed research and development (R&D). Such legislation would ensure that IP from publicly funded R&D is commercialized for the benefit of all Kenyans in line with the State’s IP mandate under Article 40(5) of the Constitution. This is also consistent with an increasing awareness in Kenya of IP as an instrument for wealth creation.

In the context of publicly funded research, institutions such as universities can be encouraged through an enabling legal framework to protect and commercialise the fruits of their research. Such a legal framework would, among other things, clearly delineate the rights and obligations of the public funders and the researchers. In support of such legislation, this blogger submits that Kenya’s IP legal framework must reflect a manifest desire to transition from a resources-based economy to a knowledge-driven economy.

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QOTD: Do You Own the Rights to Artistic Works Purchased at the Maasai Market?

 

maasai-market-by-bulinya

The “Maasai market” (not represented here) is an open-air market where shoppers can find curios, paintings, drawings, clothes and fabrics with Kenyan prints, jewellery and wood-carvings, hand-made by local artisans. The venue for the Maasai Market rotates between different shopping centres and other locations within Nairobi. For tourists and locals alike, the prices at Maasai Market are very negotiable subject to one’s bargaining prowess and ability to haggle down to the last cent. No receipts are issued for purchases made at the Maasai Market nor should a purchaser expect any warranties or guarantees on items sold at the Maasai Market.

This leads us to our question of the day (QOTD) which is:

If someone buys a painting from an art gallery the Maasai market, do they simultaneously buy the copyright and all rights under that copyright? Can the artist subsequently make copies or postcards of the painting that he/she sold? Can the buyer make postcards of the painting and sell them?

From the explanations above, it is clear that all works sold at Maasai market are subject to copyright protection mainly under the category of artistic works. Further, it must be assumed that these artistic works are sold either by the authors themselves, authorised agents or representatives of the authors.

One possible answer to the QOTD would be in the affirmative on condition that the purchaser waits fifty years after the end of the year in which the author of the artistic work dies. In the event that the identity of the author is unknown (which may be the case with Maasai market works), the purchaser would have to wait 50 years from the end of the year in which the artistic work was first created/published.

However, this blogger submits that there is a better answer to the QOTD. In the context of a Maasai market purchase, it appears that that there is no clear assignment of copyright and exclusive license to carry out any of acts controlled by copyright, including reproduction, adaptation and making of derivative works i.e. post cards. This is because section 33(3) of the Copyright Act provides that such assignment of copyright and exclusive license must be in writing signed by or on behalf of the assignor or licensor of the Maasai market work, as the case may be.

Nonetheless, this blogger argues that the purchaser of a Maasai market work enjoys a non-exclusive license to do any act the doing of which is controlled by copyright. According to section 33(4) of the Act, this non-exclusive license need not be in writing and may be oral or inferred from conduct. The Act however provides that such non-exclusive license may be revocable at any time unless granted by contract.

Therefore, for any IP lawyer, the solution to the uncertainty in ownership of rights to Maasai market works may be resolved by simply having something in writing along the lines of:

“I,……the Author hereby irrevocably assigns, conveys and otherwise transfers to…… the Assignee, and its respective successors, licensees, and assigns, worldwide, all right, title and interest in and to the works, and all proprietary rights therein, including, without limitation, all copyrights, trademarks, patents, design rights, trade secret rights, economic rights, and all contract and licensing rights, and all claims and causes of action with respect to any of the foregoing, whether now known, or hereafter to become known.”

This may be food for thought next time you’re strolling past the Maasai market and something catches your eye.

Intellectual Property and Public Events: Rights of Organisers, Participants and Third Parties

amateur photographer

I am hesitant to believe the Defendants’ argument on the issue of intellectual property rights to the event since the traditional common law view that has prevailed is that it is difficult to attach ‘any precise meaning to the phrase “property in a spectacle”. A spectacle in this case refers to an event. A “spectacle” cannot, therefore, be “owned” in any ordinary sense of that word. – Mabeya J. in AMCIL v Joseph Mathenge Mugo & ABMCIL HCCC 242 of 2013 at paragraph 29.

In the recent case of Africa Management Communication International Limited v. Joseph Mathenge Mugo & Access Business Management Conferencing International Ltd. HCCC 242 of 2013 (hereafter the HR Symposium case), Justice Mabeya held that there are no intellectual property (IP) rights in a spectacle or event dubbed “Human Resource Symposium”. In holding that there is no IP in a spectacle, Justice Mabeya cited the Australian case of Victoria Park Racing and Recreation Grounds Co. Ltd v. Taylor (1937) (hereafter the Taylor case) where Latham CJ stated that: “The law of copyright does not operate to give any person an exclusive right to state or to describe particular facts. A person cannot by first announcing that a man fell off a bus or that a particular horse won a race prevent other people from stating those facts.”

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Amalgamation of Collecting Societies, Compulsory Licensing and the Role of the Copyright Tribunal

Currently, copyright and related rights licensing within the music industry generates approximately Kshs 308 million in total. From this total income, MCSK takes home over 80% with the remaining 20% shared between the related rights CMOs: KAMP and PRiSK. If you ask any of the CEOs of these three CMOs (pictured above), they will tell you that collecting just over a quarter million in license fees is barely scratching the surface of the millions of shillings in uncollected royalty payments. However, the singular challenge in collecting these missing millions has been the division among the three CMOs.

KECOBO, the government regulator of CMOs, has midwifed several failed attempts to structure a joint partnership between these three CMOs with the most notable attempt in April 2011 with the support of the Norwegian Copyright Development Association (NORCODE). The bone of contention appears to have been whether the three parties ought to be treated as equal partners in the joint revenue collection venture. At the time, this blogger was an observer and recalls that MCSK seemed particularly opposed to the idea of “a partnership among equals” for several valid reasons.

Out of this failed attempt, the seed of partnership appeared to have been sown between the related rights CMOs – KAMP and PRiSK. In July 2011, the Boards of KAMP and PRiSK agreed to start a joint collection exercise for revenue from Communication to the Public Stream of Revenue on a commission basis. Two years, KAMP and PRiSK are now carrying out joint royalty collections countrywide. The two CMOs are also sharing offices and other resources including staff which has drastically reduced their operation costs allowing them to have more income for royalty distribution to their respective members.
The related rights CMOs also appear to have been the biggest beneficiaries of the 2012 amendments to the Copyright Act which introduced the right to equitable remuneration under section 30A.

Section 30A introduces compulsory licensing into Kenya’s copyright law. This section requires that all users must pay producers (through KAMP) and performers (through PRiSK) where a sound recording or its reproduction is published or used in broadcasting, communication to the public or public performance. Furthermore, the user is required to pay performers (through PRiSK) where a fixation of a performance or its reproduction is published or or used in broadcasting, communication to the public or public performance.

It is for this very reason that this blogger has been particularly harsh on KECOBO for not ensuring that the Copyright Tribunal is up and running. This Copyright Tribunal is vested with powers under the Copyright Act to hear and determine matters brought by users relating to CMO tariffs and other license conditions. In the meantime, the average user of music in Kenya must contend with two sets of royalty invoices, one from MCSK and another KAMP and PRiSK. This prevailing situation has resulted in increased hostility and resistance from users who feel overburdened and thus refuse to pay license fees all together.

In addition to pushing for the setting up of the Copyright Tribunal, this blogger submits that KECOBO should actively encourage the amalgamation of the collecting societies operating within the music industry for the sake of the overburden users of music in Kenya. One viable option for KECOBO would be to amend the Copyright Act to allow for the voluntary amalgamation of two or more registered CMOs. Such an amendment would allow for several CMOs to form one single CMO while remaining registered companies limited by guarantee. This proposal is inspired by section 71 of Uganda’s Copyright and Neighbouring Rights Act of 2006 which reads as follows:-

71. Voluntary amalgamation of societies

(1) Any two or more registered societies may, with the prior approval of the Registrar, amalgamate into a single society.

(2) An amalgamation referred to in subsection (1) shall not take place unless—
(a) a general meeting of each of the societies has been called;
(b) each member of the society has had a clear notice of fifteen days of the meeting; and
(c) a preliminary resolution has been passed by a two-thirds majority of the members present at the meeting for the amalgamation.

(3) An amalgamation of registered societies into one society under this section may be effected without dissolution of the societies concerned or a division of the assets and liabilities of the amalgamated societies and a resolution of the society passed for the amalgamation shall be sufficient for the transfer of the assets and liabilities of the amalgamated societies to the new society.

This proposed amendment to Kenya’s Copyright Act would send a strong and clear message to the user that KECOBO supports the growing public sentiment against a multiplicity of registered CMOs levying fees for the same or similar works. Such a legal provision would also enable members to put pressure on their respective CMOs to amalgamate and create a one-stop shop for licensing of their rights and distribution of royalties.

Benefit Sharing Deal for San & Khoi Communities Should Inspire the Maasai

Tom Lalampaa and Prince William

The Atlantic published an article titled: “The Maasai People Take Back Their Brand” in which it highlights the efforts of UK-based non-profit Light Years IP in helping the Maasai “trademark its customs and name and claim a share of profits” made from the use of its name by European companies such as Land Rover and Louis Vuitton. Readers of this blog will no doubt confirm that this misleading article by the Atlantic appears to have gone viral and has been widely shared, re-posted, tweeted and retweeted. (See previous stories on the “Maasai brand” by the Guardian and BBC.)

While the Atlantic article continued to flood the internet, the news24 network in South Africa issued a press release announcing that a benefit-sharing agreement was signed between Cape Kingdom Nutraceuticals, the South African San Council (SASC) and the National Khoisan Council (NKC). Michael Stander, Managing Director of Cape Kingdom Nutraceuticals – a Cape Town-based company that acquires and processes the buchu plant in South Africa – is quoted as having said that:

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