Fading Giants and Rising Stars: Opinion on Performance of Intellectual Property Law Firms in Kenya

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At first glance, most observers would contend that Kaplan & Stratton (K&S) Advocates has established itself as the premier IP law firm in Kenya. This may seem like quite a remarkable feat but as most IP enthusiasts already know, K&S is one of the oldest (1927) and most established (16 partners) law firms in the country with one of its partners possessing over 40 years experience in IP practice. So, by all means, K&S is a giant however this blogger submits that this giant is slowly fading in comparison to the numerous new and not-so-new law firms in Kenya that are actively engaged in substantial IP related work.

This blogpost aims to consider the performance of eleven Kenyan law firms known to have established IP practices, namely Kaplan & Stratton Advocates (K & S), Hamilton Harrison and Mathews Oraro Advocates (HHM Oraro), Iseme Kamau & Maema Advocates (IKM), Ndungu Njoroge & Kwach Advocates (NNK), Coulson Harney Advocates (CH), Daly & Figgis Advocates (D&F), Gichachi & Company Advocates (G & C), Simba & Simba Advocates (SS), J.K Muchae & Company Advocates (JKM), CFL Advocates (CFL) and Muriu Mungai & Company Advocates (MMC).

In considering the performance of IP firms in Kenya, this blogger considered relevant information from several sources including, the Law Society of Kenya (LSK), the Kenya Industrial Property Institute (KIPI) and the Kenya Law Reports (eKLR), among others. This blogpost aims to explain why K&S’s erstwhile lion’s share of influence in IP work is gradually being eroded due to two main reasons, firstly increased competition among existing law firms in IP practice and secondly, the emergence of new firms with offering considerable expertise in IP practice.

From the outset, it is important to state that IP law remains a niche area of practice in Kenya. According to LSK’s online search engine, there are only 22 Advocates out of a total number of 7264 that spend a minimum of 55% of their time dedicated to IP practice. This search of Advocates by specialisation can be done at LSK’s page here.

Similarly, KIPI has its own list of Advocates, namely those who have been admitted to practice before the Industrial Property Tribunal and the Registrar of Trade Marks. The current list is available here from KIPI’s website. KIPI has registered about 340 patent agents. With a population in Kenya of roughly 43,000,000, and now assuming that all patent agents are “active”, that equates to about 1 patent agent for every 126,000 people.

With regard to patent and trade mark prosecutions, this blogger randomly sampled four publications (January 2014, March 2014, June 2014 and September 2014) of the Industrial Property Journal, which is the official Journal of Patents, Industrial Designs, Utility Models and Trade marks published by KIPI. Since each of the publications mentions the specific law firms acting as agents with respect to the various trade mark, patent and industrial design prosecutions, this blogger counted the number of times each of the eleven firms was mentioned. The results have been presented in the pie-charts below:

IP Kenya Survey 2 TM

IP Kenya Survey 2 PAT

IP Kenya Survey 2 ID

The first thing that the crunchy pie-chart numbers demonstrate is that CH appears to have overtaken K&S as the leading firm in trade mark prosecutions. In this regard, this blogger recalls the on-going partnership dispute between CH’s IP Partner and MMC Africa, which may have a significant impact on CH’s future IP practice. Secondly, the competition appears to be heating up between several indigenous firms namely G&C, CFL, MMC Africa, NNK and JKM.

Thirdly, the merger of HHM Advocates and Oraro & Company Advocates to form the law firm HHM Oraro Advocates is a significant boost to HHM’s standing as an IP firm. This blogger has previously discussed here the HHM Oraro merger and its possible effects on IP practice. HHM Oraro’s star litigator, Kiragu Kimani continues to impress in contentious IP work, see for instance the Bata case (discussed here) and the Digital Migration case before the Supreme Court (discussed here).

Finally, this blogger reckons that ‘web presence and online activity’ ought to be a criteria when considering the performance of IP firms. Generally speaking, the Kenyan IP firms mentioned continue to perform very poorly in the area of publishing current and up-to-date IP news, information, articles on their respective websites. Perhaps, the consideration of this criteria by established ranking systems would jolt the firms into taking their online presence a bit more seriously!

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Revisiting Registrar’s Ruling in Weetabix v. Multibix Trade Mark Dispute

weetabix multibix oatibix ip kenya

Recent media reports indicate that United Kingdom-based cereals maker Weetabix Limited has asked the High Court to bar a Kenyan company Manji Food Industries from marketing one of its products—Multibix—arguing that the name infringes on its rights under the law of trade marks and as a result Weetabix has suffered or will suffer loss and damage.

In the suit papers filed at the High Court, Weetabix has reportedly contended that: “Manji Food Industries has put up on the Kenyan market whole grain biscuits not of Weetabix’s manufacture bearing the name Multibix, that is a deceptive imitation of the well-known products of the plaintiff namely Weetabix and Oatibix”

In reply, it reported that Manji has denied the allegations by Weetabix, arguing that the Multibix brand is not intended to confuse consumers of Weetabix’s products and that it is an independent brand with its own following.

The Kenyan cereals manufacturer reportedly contended in its replying affidavit that:

“Manji admits that it manufactures, packs and distributes its product known as Multibix, but denies that it does the same deceptively to imitate Weetabix’s products. Manji denies that it is passing off its product as that of Weetabix or that it has led to confusion”

As many readers may be aware, Weetabix successfully opposed an attempt by Manji to register ‘Multibix’ as a trademark. A copy of the ruling by the Registrar of Trademarks in this matter is available here.

Despite this ruling, it is reported that Manji has continued marketing its product using the Multibix name which Weetabix argues infringes on its well-known trademarks, Weetabix and Oatibix. In this connection, Manji contends that it had lodged an intended appeal against the decision of the Registrar in the opposition proceedings. In reply, Weetabix reportedly asserted that “An intended appeal is not an appeal. An appeal is not in any way a stay of the decision of the registrar and therefore this decision is unchallenged”.

In light of the above, this blogpost revisits some of the salient findings of the Registrar’s ruling in a bid to provide necessary context for Manji’s appeal and Weetabix’s current suit against Manji.

The facts of In Re TMA No. 66428 “MULTIBIX”, Opposition by Weetabix Ltd, 31 August 2012 are briefly that Manji Food Industries Limited lodged an application for registration of trade mark KE/T/2009/066428 “MULTIBIX” (a word mark). The mark was applied for in class 30 in respect of “biscuits”. The Registrar of Trade Marks duly examined the mark in accordance with the provisions of the Trade Marks Act Cap 506 of the Laws of Kenya and the mark was approved and published in the Industrial Property Journal on 30th April 2010 on page 20.

Thereafter, Weetabix Limited filed a Notice of Opposition against registration of the mark. According to the registrar, there were two issues for determination, namely:

1. Is Manji’s mark “MULTIBIX” so similar to the Weetabix’s mark “Weetabix” as to cause a likelihood of confusion in contravention of the provisions of section 14 of the Trade Marks Act?

2. Is Weetabix’s mark “WEETABIX” a well-known mark in Kenya and therefore deserving of protection under section 15A of the Trade Marks Act?

Regarding the first issue, the Registrar relies on the test set out in the American case of Eli Lily & Co v Natural Answers Inc 233, F. 3d 456 to determine whether or not marks are similar. In that case, some of the factors to consider include:
(a) The strength of the complainant’s mark;
(b) Similarity between the marks in appearance and suggestion;
(c) The degree of care likely to be exercised by consumers; and
(d) The area and manner of concurrent use of the products.

On the claim of similarity between the marks in appearance, the Registrar makes the following finding:

“The common element between the two marks “WEETABIX” and “MULTIBIX” is the suffix “BIX” which is also a registered mark of the Opponents. The term “BIX” is not an English word and is a creation of the Opponents, which I had earlier indicated that it is a strong mark. The Applicants’ mark is comprised of the word “MULTI” and the said suffix “BIX”. I am therefore of the view that the two marks are similar in appearance.”

In determining the first issue of the opposition proceedings, the Registrar states:

“I disagree with the Applicants when they state that the respective goods of the Opponents and the Applicants are different. It is my view that the goods in respect of which the Opponents have registered their aforementioned marks are goods of the same description as the goods in respect of which the Applicants are seeking to register their mark “MULTIBIX”. This means that both the goods of the Applicants and the Opponents would be sold in the same trade channels thus enhancing the likelihood of confusion or deception. It has long been held that the closer the relationship between particular goods, the more likely any similarity in their respective trade marks would prove deceptive. For this reason, and having held that the marks are similar, then it follows that registration of the Applicants’ mark “MULTIBIX” would be against the provisions of the Trade Marks Act.

Having considered all the relevant factors in regard to similarity of the marks and having considered the two word marks and all the circumstances of these opposition proceedings as stated by Parker J in the aforementioned Pianotist’s Application, I have come to the conclusion that the two marks “WEEETABIX” and “MULTIBIX” are similar and that entry of both marks in the Register of Trade Marks would be a contravention of the provisions of sections 14 and 15(1) of the Trade Marks Act.”

The second and final issue for determination by Registrar was whether “WEETABIX” is a well-known mark in Kenya and therefore deserving protection under the provisions of section 15A of the Act. The Registrar relies on the test for well-known marks set out in the UK case referred to as Oasis Ltd’s Trade Mark Application, where the Court set out the factors to consider namely:
(1) the inherent distinctiveness of the earlier trade mark;
(2) the extent of the reputation that the earlier mark enjoys;
(3) the uniqueness or otherwise of the mark in the market place;
(4) the range of goods or services for which the earlier mark enjoys reputation; and
(5) whether or not the earlier trade mark will be any less distinctive for the goods or services for which it has a reputation than it was before.

In applying the above case, the Registrar arrives at the following finding:

“I am of the view that the Applicants have submitted adequate evidence to indicate that the mark “WEETABIX” has gained such a reputation in the Kenyan market for the mark to be considered well known in Kenya. The said reputation has been gained through promotion and marketing of the said mark on the various media in Kenya and the trade mark “WEETABIX” has come to be only associated with the goods offered for sale by the Opponents.

(….)

In the aforementioned statutory declaration sworn by Richard Martin and filed on behalf of the Opponents, it is indicated that the Opponents’ mark “WEETABIX” together with the aforementioned variants has been registered in numerous jurisdictions of the world. The Opponents have also attached a number of certificates to indicate that their said mark is registered and subsisting in the Register of Trade Marks in the respective jurisdictions. Further, there is an indication as to the various countries where the Applicants’ goods bearing the mark “WEETABIX” have been marketed. In Kenya, the trade mark “WEETABIX” was entered in the Register of Trade Marks with effect from 28th June 1954. This means that the said mark “WEETABIX” has been in the Register of Trade Marks in Kenya for the last fifty-eight (58) years. Further, records at the Registry of Trade Marks indicate that the Opponents have registered several other marks that comprise the suffix “BIX” and which are still subsisting in the Register of Trade Marks.

Further, and as earlier indicated, the mark has been used in the Kenyan market for over thirty (30) years now. In my view, the above-mentioned registrations and use in several jurisdictions including Kenya indicate that the mark is well known. In conclusion and after considering all the relevant factors, it is my opinion that the mark “WEETABIX” is quite well known in Kenya and deserves protection under the provisions of section 15A of the Trade Marks Act.”

As a result, the Registrar found that Weetabix was successful in its opposition of Manji’s application therefore the MULTIBIX application would not proceed to registration. The Registrar also awarded the costs of the opposition proceedings to Weetabix.

With this background in mind, this blogger will be keenly following the developments in the dispute before the High Court.

President Assents to Anti-Counterfeit (Amendment) Act 2014

parliament of kenya by diasporadical

This blogger has received official confirmation that the Statute Law (Miscellaneous Amendments) Bill, 2014 passed by the National Assembly on 13/08/2014, was assented to by the President of the Republic on 28/11/2014 thereby bringing the Anti-Counterfeit (Amendment) Act 2014 into force. The Bill has effectively amended four sections of the Anti-Counterfeit Act, namely sections 2, 6, 16 and 34. A copy of the Bill is available here.

The Bill’s Memorandum of Objects and Reasons explains that the Anti-Counterfeit Act has been amended to “provide for the establishment of the Board to manage the Anti-Counterfeit Agency. It [The Bill] also establishes an Intellectual Property Enforcement and Co-ordination Advisory Committee. It [The Bill] also introduces a new provision empowering the Executive Director to compound offences committed under the Act.”

What follows is this blogger’s take on the recent amendments to the Act.

Section 2

This is an amendment by deletion. The words “or elsewhere” have been deleted in the definition of “counterfeiting” under the Act. The spirit behind this amendment appears to be based on the principle of territoriality in intellectual property law.

Unlike Kenya Copyright Board (KECOBO), the Anti-Counterfeit Agency (ACA) appears to have facilitated public participation and stakeholders’ consultations in the drafting of these proposed amendments. For instance, the ACA organised a Stakeholders’ Meeting on September 25, 2013 to deliberate on changes to the Anti-Counterfeit Act. However, health activists voiced their disappointment with the outcome of the meeting (See here) which later morphed into a full blown social media campaign dubbed #TellACABoss (See here).

Therefore this blogger reckons that the health activists will be disappointed once more with the amendment to section 2. The health activists have consistently maintained that the definition of counterfeiting under the Act creates ambiguity between ‘generic’ and ‘counterfeit’ medicines thereby threatening access to affordable and essential generic medicines. They hold that this definition in section 2 goes beyond what is legally required under the World Trade Organization Trade Related Aspects of Intellectual Property Rights (TRIPs), which Kenya has already domesticated into law. The activists have been emboldened in their calls for amendments to the Act by the landmark judgment in the case of Patricia Asero Ochieng and 2 Ors v The Attorney General. In this case, the judge held, inter alia, that:

“It is incumbent on the state to reconsider the provisions of section 2 of the Anti-Counterfeit Act alongside its constitutional obligation to ensure that its citizens have access to the highest attainable standard of health and make appropriate amendments to ensure that the rights of petitioners and others dependent on generic medicines are not put in jeopardy (…)”

Section 6(1)

This is an amendment by deletion and substitution. The new section is intended to set out the composition of the ACA Board of Directors. This amendment principally aims at reducing the size of the ACA Board and setting the minimum qualifications for private sector appointees to the ACA Board. Any private sector appointee is required to have at least one degree from a university recognised in Kenya and at least ten (10) years’ experience in matters relating to either intellectual property (IP) rights, consumer protection or trade.

The lean ACA Board will no longer include the heads or representatives from the Ministry of Trade, KECOBO, the Office of the Attorney General, Kenya Industrial Property Institute (KIPI), Kenya Plant Health Inspectorate Services (KEPHIS) and the Pharmacy and Poisons Board.

This blogger is in full support of these amendments as it promotes professionalism and good governance. The other IP agencies, KECOBO and KIPI, would be well advised to emulate ACA’s example with similar amendments to the Copyright Act and Industrial Property Act respectively.

Section 16(4)

This is an amendment by addition. Section 16(4) establishes a special committee known as the Intellectual Property Enforcement and Co-ordination Advisory Committee (IPECAC). IPECAC will be comprised of fifteen (15) members namely the Cabinet Secretary for Industrialization and Enterprise Development who will be the chair and fourteen members drawn from various state agencies involved in protection and enforcement of IP rights.

The spirit of this amendment is praise-worthy. However, this blogger is of the view that a committee of 15 members may be slightly bloated. Ideally, the members of IPECAC should be no more than nine (9) in number, with the bulk of the members coming from the various state agencies to be removed from ACA’s Board under the proposed amendment to section 6(1).

Section 34A

This is an amendment by insertion. The new section empowers the ACA Executive Director to act as judge, jury and executioner with respect to all offences committed under the Act. These powers allow the Executive Director to order the payment of a fine or forfeiture. However the Executive Director can only exercise these powers where the person who has committed the offence(s), admits in the prescribed form that s/he has committed the offence(s) and requests the Executive Director to deal with such offence under this new section.

This is a very positive amendment to the Act and is both constitutionally and logically sound. This section will allow ACA to dispose of criminal cases efficiently and expeditiously while expending significantly less time and energy. Once again, KECOBO would do well to borrow a leaf from ACA in this regard when making necessary amendments to section 38 of the Copyright Act.

This blogger will be keenly following the implementation of these amendments and the impact of these amendments on the anti-counterfeiting matters in Kenya.

The Copyright (Amendment) Act 2014: The Good, the Bad and the Ugly

parliament of kenya by diasporadical

This blogger has received official confirmation that the Statute Law (Miscellaneous Amendments) Bill, 2014 passed by the National Assembly on 13/08/2014, was assented to by the President of the Republic on 28/11/2014 thereby bringing the Copyright (Amendment) Act 2014 into force. The Bill has effectively amended four sections of the Copyright Act, namely sections 22, 28, 33 and 46. A copy of the Bill is available here.

The Bill’s Memorandum of Objects and Reasons explains that the Copyright Act has been amended to “empower the competent authority to grant a compulsory licence for the publication or republication or broadcasting of works which are subject to copyright where it considers that the right holder withholds consent unreasonably. It [The Bill] also restricts the imposition of a tariff or levying of royalties unless approved by the Cabinet Secretary.”

It is recalled that four other sections in the Copyright Act were amended in 2012 in the exact same manner. Please see this blogger’s comments on the 2012 amendments here. What follows are this blogger’s thoughts on the 2014 amendments to the Act:

Section 22(5)

This is an amendment by insertion. The new subsection inserted relates to the principle of automatic protection under the Berne Convention for the Protection of Literary and Artistic Works (Paris Text 1971). Article 5(2) of the Berne Convention reads:

“The enjoyment and the exercise of these rights shall not be subject to any formality; such enjoyment and such exercise shall be independent of the existence of protection in the country of origin of the work. Consequently, apart from the provisions of this Convention, the extent of protection, as well as the means of redress afforded to the author to protect his rights, shall be governed exclusively by the laws of the country where protection is claimed.”

This blogger reckons that this amendment is aimed at counteracting the effects of section 36 of the Act which requires authentication of copyright works.

Section 28(5)

The amendment to Section 28(5) states that the blank tape levy shall be collected by KECOBO and then distributed to “the respective copyright collecting society registered under section 46”. This wording is problematic since no CMO has been registered to administer audio blank tape compensation from the private copying of musical works and sound recordings.

Currently section 28(3) as read with section 30(6) of the Act provide that that owner of the sound recording and the owner of a related right in the fixation of a performance shall have the right to receive fair compensation consisting of a royalty levied on audio recording equipment or audio blank tape suitable for record and other media intended for recording, payable at the point of first sale in Kenya by the manufacturer or importer of such equipment or media.

Section 28(4) as read with section 30(7) further provides that the royalty payable under the above subsection (3) shall be agreed between organisations representative of producers of sound recordings, performers, manufacturers and importers of audio recording equipment, audio blank tape and media intended for recording or failing such agreement by the competent authority appointed under section 48.
From the aforegoing, it is clear that the copyright owners of musical works have been systematically side-lined from receiving any compensation from the collection of audio blank tape levies within the Republic of Kenya.

With reference to international best practices, it is clear that Kenya’s current legislative provisions on private copy levying are not only illegal but more importantly unconstitutional. This line of argument has been explored by this blogger here.

Finally, this blogger wonders whether the reference to “the respective copyright collecting society registered under section 46” in the amendment creates an opportunity for establishing a Collective Agency for blank tape levy administration. In other jurisdictions, such Agencies do exist and are made up of all CMOs that represent concerned rights holders.

Section 33A

This is an amendment by insertion. The new section inserted officially introduces compulsory licensing in Kenyan copyright law. However this blogger has argued previously that section 30A in the 2012 Amendments was the Government’s successful move to unofficially introduce a compulsory licensing regime under the guise of the right to equitable remuneration.

Compulsory license is the term generally applied to a statutorily license to do an act covered by an exclusive right, without the prior authority of the right owner. This concept of compulsory licensing in copyright is derived from patent law, where the owner is forced to face the competition in market, similarly in copyright law; the copyright holder is subjected to equitable remuneration. One of the main reasons for introducing non-voluntary licenses is where the users of certain works have access to these works on terms which are known in advance and it is not practicable for them to locate right owners and obtain an individual license from them.

Article 9(2) of the Berne Convention provides the legal basis for compulsory licensing in copyright law. The Article reads:

“It shall be a matter for legislation in the countries of the union to permit the reproduction of such works in special cases, provided that such reproduction does not conflict with the normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the author.”

This provision provides the Convention’s exclusive basis for compulsory licensing and provides for the conditions which should be met before a member country can entirely excuse a use which includes compulsory licensing and not prejudicing the reasonable interests of the author. Therefore this Article provides the so-called three (3) step test for compulsory licensing, namely exceptional circumstances, no conflict with the normal exploitation of the work and no unreasonable prejudice to legitimate interests of the author.

Article 11 bis (2) provides that:-

“It shall be a matter for legislation in the country of the Union to determine the conditions under which the rights mentioned in the preceding paragraph [11 bis (1)] may be exercised but these conditions shall apply only in the countries where they have been prescribed. They shall not in any circumstances be prejudicial to the moral rights of the author, nor to is right to obtain equitable remuneration which in the absence of agreement, shall be fixed by competent authority.”

The amendment to section 33 emphasises the regulatory role of the Competent Authority (aka Copyright Tribunal) in compulsory licensing. This role is common in other common law jurisdictions such as the UK, US, Australia and India.

As this blogger has previously noted here, the reality in Kenya is that the Competent Authority provided under section 48 of the Act remains non-existent over a decade since the establishment of the Kenya Copyright Board (KECOBO). This situation is problematic as there are no mechanisms in place to monitor the practical implementation of the compulsory licences under section 30A and the proposed section 33A.

Section 46A

This is an amendment by insertion. The newly introduced section 46A creates an approval system for all tariffs set by CMOs to license copyright users. This new section prohibits any registered CMOs from imposing or collecting royalty based on tariffs that have not been approved and published in the Government Gazette from time to time by “the Cabinet Secretary in charge of copyright issues”. In addition, the new section empowers “the Cabinet Secretary” to exempt users of copyright works from paying royalties by notice in the Gazette.

A preliminary issue that may require clarification is whether the Attorney General can be deemed to be “the Cabinet Secretary” for purposes of the Act? The Act defines “Minister” as “the Minister for the time being responsible for matters relating to copyright and related rights”. In the previous dispensation, the Attorney General (who was an ex-officio member of the Cabinet) assumed the role as “Minister” since KECOBO was under the Office of the Attorney-General. It is submitted that there is an established practice in Kenya whereby the Attorney General exercised the powers and performed the functions conferred on the “Minister” such as appointment of the Competent Authority and making Regulations for the better carrying out of the provisions of the Act.

However this issue is now settled under the Statute Law (Miscellaneous Amendments) Act, 2014 which has amended the definition of “Minister” under the Interpretation and General Provisions Act (Cap 2 Laws of Kenya) making specific reference to the Attorney General. The relevant portion of the amendment has been reproduced below:

Statute Law Miscelleneous Amendments Act 2014 Kenya

Nevertheless, this blogger maintains that the section 46A amendment may serve to further frustrate the relationship between CMOs and users of copyright. Over the years, this relationship has been severely strained due to the absence of the Competent Authority – a body which is authorised under the Act to deal with all issues relating to the licensing terms and conditions imposed on users by CMOs. The powers given to the Attorney General to approve tariffs and to exempt users from paying royalties may also prove problematic for CMOs.

Regrettably, this blogger notes that KECOBO and the Office of the Attorney General did not formally invite for public comments and/or conduct stakeholder consultations before causing these amendments to the Copyright Act to be passed by the Legislature and the Executive.

In the next blogpost, this blogger will discuss another set of IP law-related amendments with respect to the Kenya Anti-Counterfeit Act as contained in the Statute Law Miscellaneous Amendments Bill, 2014.

Test Case on Liability for Online Copyright Infringement: Music Industry Players Sue ISPs, Telcos and Government

sauti sol sura yako

This blogger has recently come across the case of Bernsoft Interactive & 2 Ors v. Communications Authority of Kenya & 9 Ors Petition No. 600 of 2014, a recently filed constitutional petition seeking injunctive orders to compel internet service providers (ISPs) in Kenya to block websites engaged in piracy and declaratory orders that the State has failed in its constitutional and legal obligations to protect the intellectual property rights of Kenyans. The state organs that are targetted in this Petition including the telecommunications regulator, Communications Authority of Kenya; the copyright office, Kenya Copyright Board and the principal legal advisor to the Government, the Office of the Attorney General. A copy of the petition is available in .pdf here.

The major ISPs (in terms of the number of subscribers in Kenya) have all been enjoined in the suit including: Safaricom, Airtel, Jamii Telecom, Wananchi Group, Access Kenya, Liquid Telecom and Telkom Kenya.

The petitioners cite the infamous site: http://www.wapkid.com which allows users to illegally download sound recordings and audio-visual works online. The ISPs are accused of allowing its subscribers to use its internet networks to illegally acquire copyright works through sites such as wapkid. In this connection, it is alleged that the ISPs allow the transmission in digital form, these copyright protected music through their networks and into, and out of, the personal computers, phones and various gadgets that are used for online copyright piracy.

wapkid sauti sol

To illustrate its claims, the Petition submits into evidence the above screenshot of a Wapkid page linking to the location where one of the Petitioner’s members, Sauti Sol’s musical work known as “Sura Yako” is hosted. Through the “premium” or “free” options on the wapkid site, the user can download the unauthorized copy of Sauti Sol’s audiovisual work to his/her computer or phone or tablet for unlimited viewing or further distribution.

The matter came up for hearing before High Court Justice Lenaola earlier this month.

This blogger commends the petitioners for their efforts and will be closely following the developments in this case.

Protection of Image Rights in Kenya: New Court Cases Against Microsoft, Safaricom and German Embassy

camera-lense-eye-ced-nzomo

‘Image rights’ generally refer to an individual’s proprietary right in their personality and the right to prevent unauthorised use of their name or image or a style associated with them. In a previous blogpost here, we have discussed the commercial appropriation or exploitation of a person’s identity and associated images as a commercially valuable asset, particularly for individuals such as actors, musicians and athletes who commercialise their images in association with the promotion of products or services.

The protection of the image of an individual has increased over the years in many jurisdictions, either through case law or through limited inclusion in other Intellectual Property (“IP”) laws such as the Copyright Act in some jurisdiction. However, with the exception of Guernsey, no legislation exists anywhere in the world that is exclusively drafted for the protection of all aspects of someone’s image. In light of this gap, the protection of image rights remains largely a matter of contractual and/or constitutional interpretation, especially in Kenya. Therefore, it follows that disputes relating to the protection of image rights in Kenya may require some ‘judicial law-making’, as it were.

This year, there have been three cases relating to image rights that have arisen and received media attention in Kenya, namely Suzie Wokabi v. Microsoft; Kitosiosio Ole Kutuk v. Safaricom; Tealaso Lepalat v. the German Embassy in Kenya. No rulings and/or judgments have been reported in these cases thus far therefore this blogpost merely highlights the facts and issues presently in the public domain with a view to illustrate some of the challenges in protection of image rights.

In the Suzie Wokabi v. Microsoft case, media reports indicate that Wokabi accuses Microsoft East Africa of misappropriating images of her hands and her son’s foot and using them for billboard advertising of Microsoft products without her consent. According to the media, Wokabi was approached by Muthoni Njomba, a makeup artist and entrepreneur who asked whether she could use Wokabi and her son as models for her artwork. Njomba then got a professional photographer who took photos of Wokabi’s hands and her son’s foot.

Thereafter Wokabi claims she was “shocked” when her husband told her that he had seen the same photo on a Microsoft billboard accompanied by the words “Art Deeper with Windows 8”. Njomba in a media interview reportedly admits that she approached Wokabi but denies the allegations that she sold the photos to Microsoft claiming that the photos belonged to the photographer who had the rights to do whatever he wanted with the photos.

Wokabi has since reportedly gone to court to seek “a declaration that her constitutional right to property was violated by Microsoft, an order for compensation for general damages and compensation for being used as models, taking into account her celebrity status, recognisability and reputation”.

Kitosiosio Ole Kutuk Safaricom 2014

In the Kitosiosio Ole Kutuk v. Safaricom case, it is reported that telecommunications giant Safaricom misappropriated and used a photograph of maasai moran on its GSM Sim Cards. John Ole Muli, the brother of the maasai moran discovered his brother’s photo on the Sim Cards while in Loitokitok town where the the Sim cards were being sold. The maasai moran in question, Kitosiosio Ole Kutuk claimed that the mobile communication service provider did not seek his permission before the photograph was used in the GSM Sim Cards being sold countrywide.

Kutuk therefore sued Safaricom for using his image without his permission or signed contract and it is reported that High Court Justice David Onyancha has heard from Kutuk’s lawyers that there was neither a contractual agreement was entered between Kutuk and Safaricom nor any compensation paid to Kutuk.

German Embassy Tealaso Lepalat Lake Turkana Festival 2012 2013

In the case of Tealaso Lepalat v. the German Embassy, it is reported that the German Embassy in Kenya was a co-sponsor in the Lake Turkana Cultural Festival and that a photo of Mrs Lepalat was allegedly taken and used by the Embassy to promote the Festival. As a result of the photo being taken and used, Mrs Lepalat’s her husband physically assaulted and divorced her for not consulting him before allowing use of her photo to promote the event. Mrs Lepalat also claimed that she has since been cast out of her village because she failed to seek the consent of her husband and elders before having the photograph taken. Mrs Lepalat maintains that she never authorized any person to take and use her photo in connection with the event.

The photograph at the centre of the dispute has since 2012 been used to promote the Lake Turkana Festival, held in Turkana’s Loiyangalani Village every year.

Mrs Lepalat, supported by her brother Gideon Lepalo, has taken the matter to court and is seeking compensation from the German Embassy for her physical and emotional damages she has suffered.

However, the Attorney-General of the Republic of Kenya, who was enjoined in the suit as an interested party, has reportedly told the court that the German Embassy can only be sued if the Federal Republic of Germany waives diplomatic immunity it enjoys in Kenya under the Privileges and Immunity Act. The A-G further contended that that the court has no jurisdiction to hear the matter, as it is barred from hearing the dispute by the Privileges and Immunity Act alongside international laws that protect foreign diplomats.
Therefore the AG asked the court to dismiss the proceedings against the German Government and its Embassy in Kenya.

In rebuttal to the AG’s arguments, Lepalat insists that the the German Embassy waived its immunity when it violated her rights by using the photograph without considering the Samburu community’s beliefs. Lepalat and her family further argue that diplomatic immunity, as per Kenyan laws, does not cover professional or commercial activity. In this connection, Lepalat contends that the Lake Turkana Festival is a commercial activity for which the German Embassy cannot invoke immunity. In addition, the use of her photograph without her consent was not the embassy’s official duty hence cannot be covered by diplomatic immunity.

As these cases proceed to full hearing and determination, this blogger will be keenly following the developments.

Preliminary Objections in Copyright and Industrial Property Cases: High Court Ruling in Vermont Flowers EPZ v. Waridi Creations

Vermont Flowers

Recently the High Court made a ruling in the case of Vermont Flowers (EPZ) Limited v Waridi Creations Limited HCC 524 of 2014, a patent and copyright infringement suit filed by the Belgian-owned Vermont Flowers against Waridi Creations, a company formed by Vermont’s former Kenyan employees. A copy of the ruling is available here.

Vermont Flowers made an application for an injunction and Anton Piller orders on the basis that it is the registered owner of various copyrighted and patented manufacturing processes and designs and that Waridi Creations had infringed those copyrights and patents. However Waridi Creations, through the very able representation of Senior Counsel, successfully used the preliminary objections of jurisdiction and locus standi (standing) to have Vermont’s application dismissed.

According to media reports, Vermont Flowers claims that its former employees Godino Mwasaru, Nelson Oware and Jennifer Mumo formed Waridi Creations. Vermont Flowers further claimed that the ex-employees were on the verge of exporting a large consignment of flowers vases that have been branded with Vermont’s logo and were likely to destroy evidence of the copyright infringement. An interesting fact is the reported criminal suit instituted by Vermont Flowers against the ex-employees who are now Waridi’s Directors. In this criminal suit, it is reported that Vermont Chairman testified under oath that “Vermont had no registered invention or patent in Kenya and that the floral vases are not copyright protected in any country in the world”.

In the ruling, the court makes several important points on the jurisdiction objection in patent suits and the locus standi objection in copyright suits.

In addressing the jurisdiction of the Industrial Property Tribunal, the judge states as follows:

“The Industrial Property Tribunal under section 106 has been conferred with jurisdiction by statute to grant relief of; 1) injunction to restrain infringement of patent or registered utility or industrial design; 2) damages or 3) any other relief provided in law in respect of infringement of patent or registered utility or industrial design (…) my considered view is that such applicant [for grant of patent] like the Applicant here [Vermont Flowers], has protection in law and may apply for injunction to stop infringement or claim compensation for infringement of the invention under published application for grant of patent, as if a patent had been granted for that invention, as long as he can show that the person, without his authorization, performed any of the inventions, claimed in the published application, and that the said person, at the time of the performance of the act, had; a) actual knowledge that the invention that he was using was the subject matter of a published application; or 2) received written notice that the invention that he was using was the subject matter of a published application, such application being identified in the said notice by its serial number. The Applicant made an application for grant of patent through application No KE/P/2012001715, paid the relevant fee and notification of filing date of the application was given by the Managing Director of the Kenya Industrial Property Institute to be 3/2/2012. The Applicant, therefore, is covered by the jurisdiction of the Tribunal in the Industrial Act and they should refer the claims which form part of the application for grant of patent to the Tribunal. The Application before me in so far as it relates to the grant of patent under Industrial Property Act should be and is hereby referred to the Industrial Property Tribunal for relief.

I wish to reinforce my decision above through the following rendition. See and consider section 55 of the Industrial Property Act. (….) Note that section 55 refers to acts of infringement under section 54 as some of the acts of infringement which can be restrained by an injunction. Therefore, an injunction to restrain infringement of patent or utility model or industrial design is issued at first instance by the tribunal under section 106 of the Act. And therefore, as the Applicant is also the applicant for grant of patent under the Act, I am persuaded and I have so held that the Tribunal has statutory jurisdiction over the claims which have been presented before this court. The claims herein fall within section 55(c) of the Industrial [Property] Act.”

The learned judge also hints at possible areas for legislative action to aid proper interpretation of the law:

” I do not think section 55(c) intended the relief thereto to be canvassed or sought only after registration of the patent or certificate of utility model or industrial design. I think, the law wanted to provide for remedy and protection to an invention of an applicant whose application has been published. The said section is a basis for an injunction to restrain a person who without authorization, performed any of the inventions, claimed in the published application as if a patent had been granted for that invention. I wish, however, to see legislative intervention towards clarifying the section by providing some measure of protection to utility or design for which registration has been filed and accepted by the MD of the Institute. Section 19 of the Companies Act will provide some lead here; on written application being received, the name is reserved for sixty days pending registration of the company. However, such reservation should be subject to prior users of the invention or contemporaneous inventions.”

The learned judge makes an identical finding in a recent ruling in the case of Naili East Africa Limited v Samuel Kariuki & another HCC 295 of 2014 where the plaintiff sought injunctive relief to restrain the Defendants from infringing the rights under the Industrial Property Act in an invention described as “The aquatic plant removal apparatus which includes a heavy duty marine net preferably made of carbon fiber. To the net are attached to a winch, the winch being mechanically driven by deriving its rotary power from a tractor, a lorry or electric motor”. A copy of the ruling is available here.

In addressing the issue of standing to institute a copyright infringement suit, the judge states as follows:

“As long as the Applicant [Vermont Flowers] is claiming exclusive licensee of copyright which is not domestic registered copyright, the assignment must be accompanied by a letter of verification from the Board. None has been provided. That requirement is critical and its importance is well understood when one considers two things; 1) the international obligations of the nation to provide for adequate and effective protection of rights of copyright owners; and 2) the provision of section 33(2) on assignments and testamentary disposition of copyright (….) The nature of intellectual property and the strict requirements of the law make it absolutely necessary that the licensee should plead his status that he is an exclusive licensee; give all particulars of the licence as well as the copyright for which he has been granted exclusive licence by the owner. (….) It is readily discernible from the plaint and the application without probing for any evidence, that; there is not specific pleading in the plaint on exclusive licensee and the specific copyrights on which the licence is granted; yet the application and the affidavits filed thereto introduces exclusive licensee or assignment. As long as that situation has not been clarified by amendment of the plaint, the application for injunction lacks a foot on which to stand.”

This fatal error by Vermont Flowers compounded with the apparent poor drafting of its pleadings are not punished with a dismissal of the entire suit and in this regard the learned judge states that: “I hereby uphold the preliminary objections but in respect of the application only. (….) I will not extend these finding to the plaint as the plaintiff [Vermont Flowers] can always amend the plaint to measure up to the legal thresholds in such cases. That course will also give the plaintiff an opportunity to have its day in court.”

This blogger will continue to follow the developments in this case.