Uganda: High Court Awards “Let’s Go Green” Singer 55 Million Shillings in Copyright Infringement Suit

Recently, the High Court in Uganda delivered an important judgment in the case of Angella Katatumba v. Anti-Corruption Coalition of Uganda Civil Suit No. 307 of 2011. A copy of this judgment is available here. In this case, Katatumba approached the Court for general, aggravated, exemplary, punitive damages against Anti-Corruption Coalition of Uganda (ACCU), a non-governmental organisation, for copyright infringement of her song: “Let’s Go Green” (featured above). The IP-savvy Hon. Mr. Justice C. Madrama presided over this matter and found in favour of Katatumba and awarded the singer an award of general damages in the sum of Twenty Five Million Uganda shillings (Ushs 25,000,000/=), aggravated damages of Thirty Million Uganda shillings (Ushs 30,000,000/=), an award of interest at 8% per annum from the date of judgment till payment in full and the costs of the suit.

This blogger believes that this judgment in Uganda is significant for Kenya and other common law copyright jurisdictions as it addresses several important aspects of civil actions for copyright infringement, including copyright ownership, evidentiary matters and fair use/fair dealing defences.

In any copyright infringement case, there are three vital elements that must be established, namely access, substantiality and copyrightability. In case of access, both parties agreed in the pre-trial conference that the song in question “Let’s Go Green” had been released in the market as both audio and audiovisual material marketed in hardcopy as well as soft versions on YouTube as well as other soft media.

With regard to substantiality, it was agreed by the parties at the pre-trial stage that in or around May/April 2011, in a campaign against the destruction of Namanve Forest, ACCU caused to be made on various FM stations in Uganda advertisements in which a portion of the song in question “Let’s Go Green” was used. Substantiality is an important doctrine in copyright infringement. In such cases, the question to be asked is whether the part infringed forms a substantial part of the copyrighted work. Whether the part taken is substantial largely depends on its quality as well as quantity. On this ground, ACCU’s counsel argued that there was no reproduction or imitation of the song in audio format and that the portion of the song that was used was within fair use permissions of the Uganda Copyright and Neighbouring Rights Act 2006 therefore the portion used by ACCU was “negligible” and “unsubstantial”. However, the court disagreed and held as follows:-

“I have duly listened to the exhibited CD containing both the song “let’s go green” and the advertisement jingle. It is quite clear that the structure of the song is the same. It starts with the “let’s go green” song and an appeal for people to take action on the environment (…) Finally it is indicated in the advertisement jingle that the message was brought by the Anti Corruption Coalition Uganda (the Defendant). It ends with the Plaintiff’s song “let’s go green”. While the verbal messages are being given, the music keeps on playing in the background the whole time. What happened is that the volume was only tuned down to make the message audible and then increased again to end with the song “let’s go green”. The Plaintiff’s song “let’s go green” was used for the entire advertisement.”

The final limb of the infringement test, copyrightability, was the most interesting in this case due to a fatal error made by ACCU’s counsel and this blogger’s friend, Paul Asiimwe of SIPI Law. Authorship is at the heart of copyright since it is the author that expends sufficient on making the work to give it an original character and reduces the work to material form. In the present case, the fatal error made by ACCU was to agree at the pre-trial stage that Katatumba was the composer; producer and copyright holder of the musical production/recording entitled “Let’s Go Green”. Therefore the agreed issues for trial were simply: 1) Whether the Defendant infringed the Plaintiff’s copyright? 2) Whether the Defendant’s actions fall within the fair use exception? and; 3) Whether the Plaintiff is entitled to the remedies sought?

This fatal error on the part of ACCU becomes clear when ACCU counsel makes seemingly persuasive submissions that the song in question could either be a work of joint authorship or a commissioned work. In the course of ACCU’s submissions, it is clear that the song in question is actually a collaboration between two authors namely Jocelyn Keko (alias “Keko”) and Angella Katatumba. Therefore had this issue been raised at the pre-trial stage by ACCU, the court would have been forced to determine whether Katatumba has adduced sufficient proof that Keko had assigned all her rights in the song to Katatumba. In the absence of this proof of assignment, ACCU would have been able to argue convincingly that Katatumba lacks locus standi to sue for infringement as she is not the sole author/owner of the work in question.

Secondly, in the course of the trial, it was revealed that the British Council in 2010 commissioned the song in question and that Katatumba was paid Uganda shillings 7,800,000/=. Katatumba stated this both in her examination in chief which is in writing as well as during cross-examination. No details of the “commissioning” was elicited during cross-examination. In the re-examination she testified that she was paid by the British Council and made it clear that they were “just endorsing and they did not purchase rights”. Again, had this issue of commissioned work been pursued by ACCU at the pre-trial stage, it would have become an issue for determination by the court in making its judgment.

In this case, it appears that ACCU chose to base its entire defence on the principle of fair dealing. The principle of fair dealing in copyright is specified, rule-based and statutory in nature. In Kenya, the fair dealing provisions are in sections 26-29 of the Copyright Act, which covers, inter alia, instances where the work is used for private, academic purposes; criticism or review, reporting current events etc. In Uganda, the fair dealing provisions are in section 15 (1) of the Copyright and Neighbouring Rights Act. Of particular interest is the treatment by Madrama J. of “public interest” as a possible defence against copyright infringement. The learned judge rightly observes as follows:

“(…) what should be published should amount to criticism of the work and not a use of the work for another collateral interest such as propagating a campaign for conserving forests as in the Defendant’s case. This is because the Plaintiff’s work is not in issue and it is not the purpose of the Defendant to inform the public about the Plaintiff’s work. Illustrations of public interest cases include publication involving the disclosure of criminal conduct or misconduct generally of the copyright owner. It involves review or criticism of the work and how much of the work can be used fairly depends on the circumstances of each case.”

Generally speaking, the public interest exception allows copyright protection to be denied on the grounds that a particular work undermines the public interest. Therefore where this exception is raised in cases of infringement, the court will not grant any remedies to the copyright owner. For instance, some have argued that in the locus classicus Feist v. Rural Telephone, the white pages were not copyrightable partly because the public interest demanded that it be published and made available by the state agency.

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Constitutionalisation of Intellectual Property in Africa: Some Experiences from Kenya

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This month’s edition of the World Intellectual Property Organization (WIPO) publication “WIPO Magazine” contains an article on Egypt and Tunisia’s new constitutions which ‘recognize the importance of the knowledge economy and intellectual property (IP) rights’. This article by one Ahmed Abdel-Latif titled: “Egypt and Tunisia Underscore the Importance of IP” reads in part:

“For the first time, the constitutions of these two countries provide for the protection of IPRs although in different ways. In both constitutions, the wording is succinct: the Egyptian Constitution stipulates that the “State shall protect all types of intellectual property in all fields” (Article 69) and the Tunisian Constitution indicates that “intellectual property is guaranteed” (Article 41).”

In addition, the article notes that ‘both constitutions contain a number of clauses on the protection of culture, health, and heritage which can influence both the interpretation and implementation of the IP rights clauses’.

With regard to the “challenge of implementation” of the IP rights clauses in the two constitutions, the article astutely points out that:-

“(…) ultimately the manner in which these clauses are implemented through national laws and judicial decisions will be critical in ensuring that a balanced approach to IP protection is adopted; one which takes into account the level of development of each country and one which is supportive of their respective public policy objectives.”

At this juncture, it may be instructive for this blogger to share some views on Kenya’s experiences thus far with constitutionalised IP protection since it begun in 2010. The pre-2010 Constitution of Kenya did not capture concerns on innovation and IP. In that Constitution, sections 70 and 75 capturing the Bill of Rights provided substantive property guarantees limited to real property as opposed to technological innovations, cultural innovations and IP. However in 2010, there was a paradigm shift which resulted in the promulgation of a new Constitution. This new social contract expressly protects IP, innovation and technology transfer. For the first time in Kenya’s history, IP norms were constitutionalised. First, Article 260 (c) includes IP in the definition of “property”. Secondly, Article 40 (5) obliges the State to support, promote and protect the intellectual property rights of the people of Kenya. In the same breath, Article 69(1) (c) and (e) mandates the State to protect and enhance intellectual property, traditional or indigenous knowledge of biodiversity and the genetic resources of the communities and protect genetic resources and biological diversity.

Under Article 11(1), the Constitution recognises culture as the foundation of the nation and as the cumulative civilization of the Kenyan people and nation. And mandates the state to promote all forms of national and cultural expression through literature, the arts, traditional celebrations, science, communication, information, mass media, publications, libraries and other cultural heritage; recognise the role of science and indigenous technologies in the development of the nation; and promote the intellectual property rights of the people of Kenya.

Parliament is also mandated to enact a law to ensure that communities receive compensation or royalties for the use of their cultures and cultural heritage. This legislation should also be passed which recognise and protects the ownership of indigenous seeds and plant varieties, their genetic and diverse characteristics and their use by the communities of Kenya.

So far, it appears that the judicial branch of government has risen to the challenge of implementation of the constitutional IP provisions, with due deference to the executive branch aptly represented by the Kenya Industrial Property Institute (KIPI), Kenya Copyright Board (KECOBO) and the Anti-Counterfeit Authority (ACA). Notable court decisions directly related to constitutional IP protection include the Patricia Asero case (previously discussed here, here and here), the Digital Migration case (previously discussed here and here – this matter is currently before the apex court, Supreme Court of Kenya), the Sanitam case of 2012 (previously discussed here).

Away from the courts, KECOBO and KIPI are leading an inter-ministerial taskforce on Traditional Knowledge, Traditional Cultural Expressions and Genetic Resources. This taskforce has already finalised work on a draft Bill on the protection of TK and TCE (previously discussed here and here). In the meantime, several state agencies dealing with IP have held consultative forums to develop a National IP Policy (previously discussed here). Still within the Executive, the Ministry of Sports, Culture and the Arts has established a multi-stakeholder committee to finalise work on a draft National Music Policy (previously discussed here and here). It is hoped that the forthcoming merger of KIPI, KECOBO and ACA (previously discussed here, here and here) will increase the Executive’s capacity to spearhead the implementation of the various constitutional provisions relating to IP.

All in all, the road from adaptation to full realisation of constitutionally guaranteed IP protection is long, arduous and involves several levels of engagement.

WIPO Releases Study on Copyright and the Audiovisual Sector in Africa: Recommendations for Kenya

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This month, WIPO has released a new report titled: “Study on Collective Negotiation of Rights and Collective Management of Rights in the Audiovisual Sector” prepared by one Tarja Koskinen-Olsson. This study will be presented at the Fourteenth Session of the World Intellectual Property Organization (WIPO) Committee on Development and Intellectual Property set to take place in Geneva from November 10 to 14, 2014. This study is part of the WIPO Development Agenda Project on “Strengthening and Development of the Audiovisual Sector in Burkina Faso and Certain African Countries”. As part of this project, WIPO and the Kenya Copyright Board (KECOBO) facilitated a training session held in Nairobi earlier this year (See details here).

This blogpost discusses the conclusions and recommendations from the study with a focus on the findings related to Kenya. In the Kenyan context, this blogposts discusses three necessary recommendations to strengthen the audio-visual sector, namely the establishment of a collective management organisation (CMO) for audio-visual works, copyright law reform and finally, the recurring twin issues of copyright enforcement and awareness.

The WIPO study concentrates on three target countries; Burkina Faso, Senegal and Kenya. Burkina and Senegal are both so called civil law countries with a “droit d’auteur” concept and tradition. While Kenya is a common law country with an Anglo-Saxon tradition. However, in all three target countries, the study notes that exclusive exploitation rights are in the hands of producers. In principle, the study suggests that this structure provides legal certainty and enables the producers to effectively seek financing for their productions and to market their works, both nationally and internationally.

In Kenya, the point of departure is the Copyright Act, which lists audiovisual works as one of the works eligible for copyright protection. The interpretation section of the Act provides that “author, in relation to audio-visual works, means the person by whom the arrangements for the making of the film were made”. Based on this provision, it appears that copyright would customarily be vested with the producer of the audio-visual work who would be deemed to be the author of the audiovisual work and thus enjoy the bundle of exclusive rights set out in Section 26 of the Act.

However the study notes that exploitation of copyright rights for financing of audiovisual works is limited and licensing of major users of audiovisual works does not take place as broadcasters and other major users can draw benefit from statutory licenses or fair dealing provisions included in the laws of the target countries. In the Kenyan context, the study highlights section 26(j) of the Act, a fair dealing provision that protects broadcasting organisations who use audiovisual works that are already published. This section provides that a rights holder does not control the broadcasting of a literary, musical or artistic work or audiovisual work already lawfully made accessible to the public with which no licensing body is concerned. Broadcasters thus have a possibility to show published audiovisual works freely, where there is no CMO functioning in the audiovisual industry. Therefore it is only when rights holders mandate a CMO to manage their broadcasting rights in their audio-visual works that broadcasters will need to ask for their permission, i.e. get a license from the CMO.

Currently there is no CMO in Kenya functions in the field of audiovisual works. However if a company limited by guarantee for the collective management of audiovisual rights would be set up, the number of rights holders it would potentially represent is a central issue. However from as early as 2011, KECOBO, the body that accredits and regulates CMOs, has expressed its willingness to set up a CMO “for the audio visual works which will collect for the rental and use of audio visual works such as films on behalf of the rights holders”, as quoted from Issue 2 of its Newsletter available here.

With regard to awareness creation, the study notes the lack of appreciation for the role that contracts can play in the relationship between creative collaborators and financing partners in audio-visual sector and how contractual rights could be enforced and exercised. Currently, the study notes that contracts are in many cases non-existent, which as such is a hurdle for the audiovisual industry to become more professional. In this regard, KECOBO has done its best to empower stakeholders: see Issue 6 of its Newsletter dedicated to protection of audio-visual performances available here.

In the area of law reform, Kenya has not ratified the WIPO Internet Treaties (WIPO Copyright Treaty (WCT) and WIPO Performances and Phonograms Treaty (WPPT)) and as a result the study notes that “communication to the public/making available right is unclear under the current law” which constrains to full enjoyment of digital rights management. Therefore the study rightly recommends the granting of digital rights as provided under the WIPO Internet treaties (WCT and WPPT) as they would benefit stakeholders in the audiovisual industries and enable effective use of IP rights in the network environment.

Another area of law reform is the private copying levy which is contained in the Act but only deals with sound recordings. In this regard, this blogger has previously discussed here proposed amendments to the Copyright Act to include private copying remuneration for audiovisual works. The collection and distribution of private copying remuneration in Kenya is an interesting new area of collective copyright management, as this blogger has previously discussed here.

With regards to enforcement efforts, the study notes that piracy is undermining the DVD/VCD market, despite the implementation of copyright authentication through the anti-piracy security device. This notwithstanding, the study notes that the Kenyan audiovisual sector has started to realize the potential of global markets. Locally, Kenyan works have had little opportunities as national broadcasters have preferred popular foreign content. This scenario is likely to change with the setting up of the new Communications Authority of Kenya, whose mandate will include the enforcement of local content quotas for broadcasters in the country. Meanwhile, it is interesting to note that online consumption of films is progressively penetrating the Kenyan market as high-speed internet connections become more available, for instance, “Buni TV”, “MoMoviez” and others.

Reply to CIO East Africa: How to Fact-Check Intellectual Property Articles

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This blogger has come across a recent article by CIO East Africa titled “Weak IP laws hurting aspiring IT billionaires” written by one Alex Owiti. The article, available here, contains several unsubstantiated claims, grave errors of fact and serious misrepresentations of substantive intellectual property law. Through twitter, several attempts were made by the Kenya Industrial Property Institute (KIPI), Kenya Copyright Board (KECOBO) and former KIPI CEO Dr. Kibet Mutai to enlighten the poor writer but the latter refused to admit his mistakes.

It is hoped that this blogpost will help our friends at CIO East Africa do a better job of editing all the articles they receive on IP matters. Since we are using Alex Owiti’s article as an example, we will be forced to reproduce it (in italics) in order to highlight the inaccurate statements made in the article. For purposes of this exercise, our comments will be in brackets [] and in bold.

Read the rest of this article here.

Shambles on Social Media: Balancing the Protection of Intellectual Property and Environmental Rights

This blogger has come across a twitter exchange involving one Jennifer Shamalla and the Kenya Copyright Board (KECOBO). Screen shots of the exchange have been posted below. Shamalla complains that Ozone Lounge and Bar plays “incredibly loud music” and that its patrons “engage in obnoxious behavior in total disregard of the environment as they scream and shout along with the music thus keeping the residents of the Valley Arcade area awake”. According to Shamalla, these actions by Ozone and its patrons “are a direct infringement on the constitutional right to a clean and healthy environment as provided for under Article 42 of the Constitution.” Therefore, Shamalla argues that KECOBO is vicariously liable for contravening the residents’ rights to a clean and healthy environment by licensing and supervising collective management organizations (CMOs) who issue licenses to Ozone. As a result, Shamalla has written to KECOBO (in a letter signed and dated August 11, 2014) demanding that the CMOs withdraw any licenses issued to Ozone with immediate effect.

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By bringing this issue to light, this blogpost will comment on Shamalla’s argument and the issues arising from the above matter. This blogpost concludes that while Shamalla’s argument appears to be largely misplaced, the questions surrounding KECOBO’s statutory function to supervise CMOs cannot be ignored and perhaps ought to be addressed conclusively.

 

Read the full article here.

Litigious Humans and Photogenic Monkeys: Slater v. Wikimedia Copyright Ownership Dispute Over Monkey Selfies

From the above clip of British wildlife photographer David J Slater, it is clear that Slater is strongly considering taking legal action against Wikimedia for copyright infringement in the now infamous “monkey selfie” photographs.

In the clip, Slater explains how the photographs came about by saying:

After a three day exploration of a forest in North Sulawesi, Indonesia, the monkeys followed me around, I followed them around, they got too used to me, eventually they started grooming me, touching me – it was an amazing experience. I still wanted that one shot, that one shot full in the face, just for my self satisfaction and to give it to an agent and therefore I could promote the conservation issue. But it wasnt going to happen not unless they took the photograph themselves. And I did that by setting it up on a tripod with a cable release, walking a few metres away, allow them to come in watch their own reflections, play with the camera, play with the cable release and bingo, they took their own shot.

Read the full article here.

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