Strathmore to Host World Intellectual Property Day 2014 Events in Kenya

world ip day 2014 poster

Strathmore University’s Centre for Intellectual Property and Information Technology Law (CIPIT) has been at the centre of Kenya’s preparations for this year’s World Intellectual Property (WIP) Day celebrations on 26th April 2014. This blogger has previously discussed here the significance of this year’s WIP Day for Kenya. The programme for the day is available here. The celebrations will run from 8.30 a.m to 5.00 p.m and will involve three concurrent events, namely the IP Pavilion, the IP Workshop and the IP Moot Competition. To top it off, there will be a public screening of the award-winning film, “The Prestige”.

The IP Pavilion will be a tented area for exhibitors to carry out public outreach. Attendees of the WIP Day events will have time to visit The Pavilion and meet the various exhibitors.

The IP Workshop will delve into the theme of WIP Day 2014, which is “Movies – A Global Passion.” Speakers will include representatives from the Kenya Copyright Board, Department of Film Services, Kenya Film Commission, Kenya Film Classifications Board, Kenya Film & Television Professionals Association, and experienced Intellectual Property Lawyers in the creative industry.
Venue: Main Auditorium.
Tentative program:
9.45 – 10.45 am: Intellectual Property Rights in Film
10.45 – 11.00 am: Presentation on Copyright and Film Industry
11.30 – 1.00 pm: Discussion Forum on the Dissection of the Film Industry in Kenya

The IP Moot Competition will provide a platform for exposing law students to Intellectual Property Rights, and is the first of its kind anywhere in Kenya. The IP Moot Competition questions and rules are available here.
CIPIT has registered 18 teams from 9 law schools. The Chief Justice of the Supreme Court of Kenya will be closing the event and handing out prizes.
Venue: morning activities to be in assigned classrooms, afternoon activities in Main Auditorium.
Tentative program:
9.45 – 1.00 pm: Initial Round
1.00 – 2.00 pm: Lunch
2.00 – 3.15 pm: Semi-final Round
3.30 – 4.30 pm: Final Round
4.30 – 5.00 pm: Closing and Presentation of Prizes

CIPIT is confident that there will be a good turnout for the WIP Day events, including media coverage, participation by Kenya’s two national IP offices, KIPI and KECOBO, as well as a visit from the Chief Justice of the Supreme Court of Kenya.

This blogger salutes CIPIT, IP Checkin, Kikao IP and the entire organizing committee and looks forward to a memorable WIP Day 2014.

Why Private Copying Law and Practice in Kenya is Unconstitutional

50 bob movies by wamathai dot com

Private copying can be defined as the act of making any copy for non-commercial purposes by a natural person for his/her own use. Kenya’s Copyright Act defines it as the making of a single copy for the personal and private use of the person making the copy. Although the right of reproduction under copyright law is exclusive, Kenya is among many jurisdictions worldwide that limit the application of the reproduction right to activities that can be qualified as private copying, the reasoning being that it is practically impossible to grant permission to large numbers of individuals, or to monitor the use consequently made of it. It follows that private copying is allowed under the condition that a fair compensation is paid to the authors and other rights holders for loss of revenues or harm caused to the rights holder whose work had been copied. Private copying levy (or the audio blank tape levy as it known in Kenya) is currently the only efficient mechanism which allows creators to be compensated for widespread copying of their works for private/domestic use. It therefore follows that the blank tape levy would be applicable to blank CDs, tapes, cassettes, DVDs, VCDs, USB Disks, MiniDiscs, Memory Cards, Mobile Phones among others. It is yet to be operationalised in Kenya despite being provided for under section 28(3),(4),(5) and (6) of the Copyright Act.

In December 2013, this blogger discussed here that one of the proposed amendments to the Statute Law (Miscellaneous Amendments) Bill, 2013 related to the provisions of audio blank tape levying provided under Section 28(5) of the Copyright Act. The effect of this proposed amendment was that the blank tape levy be collected by KECOBO and then distributed to the registered CMO representing the owners of sound recordings, currently known as the Kenya Association of Music Producers (KAMP). However, this blogger argues that this section 28 (in both its current and proposed form) is unconstitutional and ought to be fundamentally amended so as to address the economic rights of all rights holders.

The WIPO International Survey on Private Copying Law and Practice 2012 explains that where private copying remunerations are gathered by collective management organisations (CMOs), these societies are appointed by the government or by rights holders. According to the Survey, these CMOs must be representative of each variety of rights holders namely the authors, performing artists and producers. In some jurisdictions, a distinct CMO exists dealing solely with private copying levy and the board of such a CMO is comprised of the various rights holders’ representatives.

From all the 30 countries selected for the Survey, it is clear that there are two main categories of rights holders who benefit from the royalties collected for private copying: copyright holders and the related rights holders. The copyright holders appear to take the lion’s share of the collections with countries like Switzerland and Canada recording an authors’ share of 58%. All in all, the share for copyright holders appears never to be less than 30%.

Meanwhile, back in Kenya, the related rights CMO representing sound producers (KAMP) has recently published a public notice on it’s official website which reads in part:-

“The Kenya Association of Music Producers and Performers Rights Society of Kenya Stakeholders Meeting on Blank Media Levy concluded by setting an unopposed tariff of 6% of import price at the point of sale on the aforementioned equipment. KAMP and PRISK by virtue of Sections 28 (5) and 30 (8) will commence collections May of 2014.”

According to section 28(4) of the Act, the royalty payable for private copying can only be set in one of two ways: through agreement with stakeholders or by the (non-existent) competent authority. The question which therefore must be asked is which one of the two ways was used and what was the rationale behind the percentage figure of 6% purportedly agreed upon pursuant to the Act.

Assuming that the conditions of section 28(4) of the Act have been met, it would follow that the audio blank tape levy would only be applicable to KAMP and not PRiSK. This is because the section refers only to audio recording equipment and audio blank tape and not video. In addition, according to the WIPO Survey, the only jurisdiction with a tariff of 6% (of the import price) is Lithuania and this tariff covers both copyright and related rights holders, as illustrated in the table above.

However there is a fundamental question which remains unanswered, namely: is the current private copying levy provision under section 28 constitutional? The blogger argues that the answer must be no. In all the countries studied in the WIPO Survey above, copyright holders were allocated a substantial share of collections from the respective private copying levies. However, the Kenyan Act only refers to owners of sound recording. It is therefore possible to argue that section 28(3),(4),(5) and (6) are unconstitutional for two cardinal reasons, namely the discrimination of rights holders contrary to Article 27 of the Constitution and the deprivation of property contrary to Article 40 of the Constitution.

Taking Intellectual Property Rights Seriously: Penny Galore Ltd. vs. Amani Women’s Group

grey-kura-necklace-by-goop-dot-comEarlier this week, Amani Women’s Group posted a blog article here after receiving a Cease and Desist Demand Notice from Penny Galore Ltd. In the explicit Demand Notice, Amani is accused of infringing Penny Galore’s rights under both copyright and the law of passing-off with respect to the latter’s handmade necklace branded and marketed widely as the Kura Necklace. According to Penny Galore’s counsel, Coulson Harney, the necklace is “made up of bone quills that are creatively decorated around a ring necklace which is joined by a hook and comes in various colours such as grey, cream and black”.

Penny Galore alleges that Amani has substantially copied and/or reproduced the Kura Necklace Grey and that Amani are selling this infringing work at its shops to individuals and/or independent traders. Therefore Penny demands that Amani immediately stops all dealings with its alleged infringing necklace and that all pieces of the disputed Amani neckace must be destroyed. In addition, the Demand Notice requires that Amani provides a written promise not to infringe on Penny Galore’s rights in the Kura Necklace. Of course, Penny Galore’s counsel has threatened to sue Amani if the latter does not comply with the Demand Notice.

Comment:

This blogger submits that this is an important lesson on protection of one’s intellectual property rights. From the little information that is publicly available, there is no doubt that Penny Galore has and continues to invest heavily in commercialising its products and its brand, both of which are protected under the intellectual property (IP) system. The sole fact that Penny Galore has engaged the services of (high-end) IP counsel in this matter demonstrates that it is willing to invest in protecting the IP rights subsisting its various products that have been made available to the public.

On the other hand, it is clear that Amani enjoys equal IP protection as Penny Galore with respect to its unique creations. Therefore, Amani can and should rely on the IP system to defend any unfounded claims made against its products by anyone, including Penny Galore.

Based on Penny Galore’s demand notice and Amani’s website alone, it is impossible for any third party, including this blogger, to ascertain what the alleged infringing necklace looks like and whether there is an objective similarity between the above necklace and the Kura Necklace. However, most IP commentators would agree that necklaces, in their material form, are the subject of copyright protection as artistic works defined in section 2(1) of the Copyright Act.

A good illustration of the required standard of proof for copyright infringement in an artistic work may be found in the case of Macmillan Kenya Publishers v Mount Kenya Sundries Ltd Civil Suit No. 2503 of 1995. In this case, Macmillan Kenya Publishers claimed its rights under copyright has been infringed with respect to its maps “Kenya Tourists Map”. Macmillan argued that the “Kenya Travellers’ Map” by Mount Kenya Sundries Limited was similar to the Macmillan’s maps save for some changes made in certain aspects of the maps’ details.

The court ruled in favour of Macmillan and stated as follows:-

As was pointed out in Alternative Media Ltd vs Safaricom Ltd (2005) 2 KLR 253, infringement of copyright arises not because the Defendant’s work resembles the Plaintiff’s, but because the Defendant had copied all or a substantial part of the Plaintiff’s work. In the case before me, the Plaintiff has submitted evidence which I find to be both sufficient and credible, that its maps (PEx 6 and PEx 7), were copied by the Defendant in the production of the Defendant’s map (PEx 8), and I find the Defendant fully liable for the infringement of the Plaintiff’s copyright.

The above-cited Alternative Media case is the leading case in relation to copyright infringement of artistic works. In that case, the court found that Safaricom had infringed Alternative Media’s rights under copyright with respect to artistic works created by the latter. These works of art were used by Safaricom on it’s 250 Shillings Scratch Cards without Alternative Media’s authority.

Regarding the law of passing-off, the central enquiry is whether the public is likely to be confused into believing that Amani’s necklaces are, or are connected with, those of Penny Galore. The underlying rationale behind passing off is to ensure that competitors within the same market do not engage in any acts aimed at interfering with the goodwill between each business and its customers.

Therefore although Penny Galore appears not to have registered its necklaces, the provisions of section 5 of the Trade Marks Act are clear that:-

“No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark, but nothing in this act shall be deemed to affect rights of action against any person for passing off goods.”

In the case of Githunguri Dairy Farmers Cooperative Society Limited v. Uplands Diaries Limited 2009 eKLR, the court found that the features and design of Uplands’ milk packaging were strikingly similar to Githunguri’s Fresha Milk packaging and that the latter’s market survey confirmed that there is confusion in the market.

In arriving at this ruling, the court stated as follows with respect to passing-off:-

The principles to bear in mind when considering a claim under the tort of passing off, is the plaintiff must prove reputation of good will connected with the goods which are known by the buyers by distinctive get up or feature. Secondly, the plaintiff must prove the defendant either intentionally or not, misrepresented to the public leading them to believe that the defendant’s goods are the plaintiffs. The plaintiff has also to prove that they have suffered damages because of the erroneous believe caused by the defendants’ misrepresentation.

The above principles may be useful to Amani as they craft a response to Penny Galore’s Demand Notice.

In light of the above, this blogger looks forward to seeing Amani’s comprehensive evidence showing that the Kura Necklace falls part of the traditional cultural expressions of African and Kenyan communities, as Amani appears to have suggested in its blog article. In the meantime, this blogger is not convinced by Amani’s attempts to portray its dispute with Penny Galore as “bullying” or a case of David versus Goliath.

It is indeed disappointing for Amani to resort to comments such as:

“Kenya is 50 years old and its seems we are still under control of people wanting to make money on the backs of poor wananchi, its not fair … Or may it is just if you have money and success, you think you are entitled to step on whoever you please while you try to make yourself richer”

All businesses, large and small alike, must be alive to possible IP issues in their operations and develop effective IP strategies. Perhaps this is an important lesson not just for Amani but other businesses in the creative and innovation sectors.

Intellectual Property and Anti-Homosexuality Law Collide: The Case of David Robinson vs. Red Pepper Uganda

red pepper uganda top homosexuals named

In a recent article in the New York Times here, it is alleged that Ugandan tabloid newspaper Red Pepper infringed the copyright of Denver David Robinson, the photographer behind the photographic project titled: “We Are Here: LGBTI in Uganda” which was published by The Advocate, an American L.G.B.T. magazine here.

From an intellectual property (IP) perspective, this blogger aims to discuss Robinson’s claim against Red Pepper and the extent to which the provisions of fair use under Ugandan copyright law would be applicable. In addition, this blogger will also consider the moral rights issues that may arise in this case.

Read the full article here.

Lessons for Kenya: South African Copyright Tribunal Sets Aside License Tariff for Use of Sound Recordings

PicknPay

It is recommended that a tariff to be set by the tribunal should neither be too high nor too low, but a tariff which the owners of the royalty will realise profits on the one hand and the consumers will purchase voluntarily. It is hard, in my view, to satisfy the preferences of either party. It has already been indicated that I am not tasked to judge as to which case is superior in law but to set a tariff that may be said to be reasonable. – Foschini Retail Group (Pty) (Ltd) and 9 (Nine) Others v South African Music Performance Rights Association (0003/2009) [2013] ZAGPPHC 304 at Paragraph 76.

Recently this blogger reported a major victory for Kenya’s related rights collective management organisations (CMOs) when the court upheld their statutory mandate to license for the communication to the public right (See here). It is clear that the majority of these disputes between the related rights CMOs and users arise because the latter contest the license fees charged by these CMOs. The genesis of this contestation stems from the users’ perceived “double taxation” of paying both a copyright CMO on the one hand and the related rights CMOs on the other hand.

In this regard, this blogger has argued on several occasions (see here, here and here) that the Competent Authority must be immediately operationalised to deal with the rising cases of CMO-user disputes. Meanwhile, in South Africa, the Copyright Tribunal (equivalent to the Competent Authority under the Kenya Copyright Act) has recently issued a landmark judgment in which it set aside the license tariff for retailers as fixed by the South African Music Performance Rights Association (SAMPRA) holding that the tariff was not reasonable and proceeded to set a tariff to be applied by SAMPRA. In addition, the Copyright Tribunal ordered SAMPRA to pay the the retailers’ costs of referring the matter to the Tribunal.

For Kenya, this judgment is of great importance as the tariff determined by the Copyright Tribunal in South Africa is significant lower than that of the concerned related right CMO in Kenya. Therefore this blogger submits that there is a need for a review of all tariffs set by related rights CMOs using the methodology of the South African Copyright Tribunal.

In the present case, the retailers, namely Foschini Retail Group (Pty) (Ltd), Pepkor Retail Limited Stores, Just Kor Fashion Group (Pty) (Ltd), Mr Price Group Limited, Pick ‘n Pay Retailers (Pty) (Ltd), Truworths Limited, New Clicks SA (Pty) (Ltd), Dunns Stores, Metrotoy (Pty) (Ltd) and Young Designers Emporium (Pty) (Ltd) contended that SAMPRA had unilaterally set a tariff, and that it basically adopted a take-it-or-leave-it approach, when demanding payment. The retailers claimed that the tariff was inflated and without economic justification. They said that they had tried to negotiate with SAMPRA, but that the parties had been unable to reach agreement, hence they referred the matter to the Copyright Tribunal for determination.

As many know, the South African Music Performance Rights Association (SAMPRA) is a national, non-governmental, organization that licenses to third parties specific copyrights that vest in record companies that are members of the Recording Industry of South Africa (RiSA). It is therefore clear that SAMPRA’s equivalent in Kenya is the Kenya Association of Music Producers (KAMP).

In response to the retailers’ contentions, SAMPRA claimed that its tariff was reasonable. It stated that its tariff was bench-marked with international best practice, with reference to the UK, Australia and Canada being mentioned. SAMPRA’s tariff was based on the square meterage of the ‘audible area’, in other words those parts of the store where the music can be heard even if they are inaccessible to customers. Therefore according to SAMPRA’s tariff, the annual fee for a store of 51 to 100 square metres was ZAR 1000.00, whereas the annual fee for a store of 201- 300 square metres was ZAR 2000.00.

The Tribunal agreed with the retailers that the SAMPRA’s tariff was too high, even compared with lower tariffs in developing countries such as Australia. The Tribunal also agreed with the retailers that SAMPRA’s take-it-or-leave-it approach in setting its tariff was wrong both under the Copyright Act and the Collecting Society Regulations. In this connection, the Tribunal found that it would not be in the interest of justice to “cut and paste” the international practice without engaging the market forces prevailing in South Africa.

Therefore the Tribunal was of the view that tariff to be set must be a tariff that “optimizes public welfare”, in other words “a tariff that is neither too high nor too low, by which the service providers would realize profits, whereas the consumers would purchase voluntarily”. The Tribunal therefore set a tariff which, for example, saw the annual cost for shops of 50 to 100 square metres drop down to ZAR 389.00, whereas the annual fee for shops of 200- 300 square metres was set at ZAR 620.00.

As alluded to above, the tariff set by the Tribunal does not compare favourably with KAMP’s tariff here in Kenya. According to KAMP’s recent tariffs available here, the annual cost for shops of 50 to 100 square metres is currently set at KES 6500.00 which is approximately ZAR 650.00. In other words, a Kenyan shop half the size of a South African shop pays twice as more in license fees per year.

In light of the above, this blogger submits that there is a pressing need for the relevant government agencies to intervene and regulate the license tariffs, terms and conditions imposed by CMOs in Kenya to protect the public interest.

Defence of Prior Use of Anterior Mark Under Trade Mark Law

INFINITY TM TYRES

Under both the Kenyan and South African Trademark Acts, there are several provisions which limit the right to the use of a trade mark granted by registration. For purposes of this blogpost, let us consider the provision of section 10 of the Kenya Trade Mark Act and its equivalent section 36 in South Africa’s Trade Marks Act. This provision, referred to in Kenya’s Act as the Saving for vested rights, creates a defence against trade mark infringement claim by a trade mark owner.

In a recent South African case of Etraction (Pty) Ltd v Tyrecor (Pty) Ltd (16926/11,16926A/11) [2014] ZAWCHC, a dispute arose over the trade mark INFINITY registered by Etraction in Class 12 in respect of “vehicle components and accessories; tyres, wheels, rims”. Etraction was therefore seeking an interdict to restrain Tyrecor from infringing its trade mark.

In its defence, Tyrecor argued that its predecessor in title had commenced using the trade mark prior to Etraction applying for registration of INFINITY in its own name. In this regard, the court accepted that the aim of the statutory defence relied upon by by Tyrecor was to “preserve common law rights that are antecedent to the rights of the registered proprietor”.

After reviewing the submissions of the parties, the court found that Tyrecor could not be restrained from using INFINITY since it had made continuous use of INFINITY since July 2006 and before the Etraction’s application for registration was accepted on 15th April 2008.

Comment:

In order to discharge the onus of proving an earlier right under Section 10 of the Kenya Trade Marks Act, it must be demonstrated that the use of a trade mark would amount to passing off or infringement of another earlier right. This reasoning has been cited with approval in the case between Trans-National Bank Limited vs Equity Bank Limited where Trans-National opposed Equity’s application for registration of “fanikisha” before former Registrar of Trade Marks, Prof. Odek. A copy of the Registrar’s decision is available here.

In the “fanikisha” case, the Registrar interprets Section 10 of the Act to the effect that an anterior mark is:

(i) an earlier mark having an earlier application date taking any priority into account or
(ii) an earlier registered mark or
(iii) if unregistered, an earlier mark that exists by virtue of continous use under Section 5 of the Act or
(iv) is an earlier well known trademark.

In the case of where the anterior mark is unregistered, the Etraction case is significant as it demonstrates that the availability (or lack thereof) of an action for passing-off is an important determinant of whether reliance can be placed on the defence. In the present case, Tyrecor successfully argued that Etraction’s abandonment of the possibility of a passing-off action strongly indicated that Etraction recognised that it had no exclusive right to INFINITY prior to its application for registration.

Another important finding from the Etraction v. Tyrecor case is in relation to the “predecessor in title” option in the defence. In the present case, Tyrecor claimed that it was the successor of an entity known as Falck Trading (Pty) Limited, a company which it took over in 2009. However, Tyrecor did not adduce any formal documents or agreements before the court relating to the take-over of the business. Nonetheless, Tyrecor claimed that the take-over was done verbally due to the common shareholders and directors of both the predecessor and successor.

Despite the absence of documentation relating to the transfer of business from Falck to Tyrecor, the court held that Tyrecor is still entitled to the defence of anterior use. The court stated, as follows:

I am persuaded that there was a transfer or an assignment of rights and obligations between the predecessor and successor in relation to the import and sale in INFINITY branded tyres. That [Tyrecor] appears not to have a written contract in its possession or that relevant provisions of the Companies Act have not been complied with, does not vitiate such a transfer of rights and the [Tyrecor] faces sanctions embodied in the Companies Act. However, it does not in my view affect the [Tyrecor]’s defence available in terms of Sections 36 of the Act.

The Lupita Factor as Kenya Prepares to Celebrate World Intellectual Property Day 2014

world ip day 2014 movies a global passion

The theme selected by the World Intellectual Property Organisation (WIPO) for this year’s World Intellectual Property (WIP) Day celebrations, “Movies – a Global Passion”, could not be a better fit for Kenya. From an intellectual property (IP) perspective, there appears to be a renewed focus on the audio-visual industry (television and film) in Kenya, culminating in the introduction of section 30A which introduced the right to equitable remuneration for use of audio-visual works (see my comments on section 30A here, here, here and here). More recently, Kenya successfully negotiated and signed the WIPO Beijing Treaty on Audiovisual Performances (See my comments on Kenya and the Beijing Treaty here).

lupita by thewiredotcom

Enter: Kenyan Actress Lupita Nyong’o. Earlier this week, Kenya joined the rest of the world in celebrating Lupita’s Oscar win for Best Actress in a Supporting Role. Lupita’s sterling performance as an abused servant in the movie “12 Years A Slave” undoubtedly put Kenya on the global stage and the 31 year old actress becomes the first Kenyan to win an Academy Award.

Read the full article here.