Incidental Use and Copyright Exhaustion: High Court Ruling in Nairobi Map Service v Celtel Kenya (Zain Kenya)

celtel map kenya africa

 

After 7 years in court, a judgment was recently delivered in the case of Nairobi Map Service Limited v Celtel Kenya Limited (Zain Kenya) & 2 others [2016] eKLR in which Nairobi Map sought to have the defendants namely Celtel/Zain Kenya (now Airtel Kenya), Z.K Advertising Kenya and the Sound and Picture Works company held liable for copyright infringement of a copyrighted map known as ‘Kenya Administrative Map’ which was included in the ‘Zain Coverage’ advertisement televised in August 2009.

According to the court there were 3 issues to determine namely: (1) whether the Plaintiff has copyright in the map known as ‘Kenya Administrative Map’; (2) If issue No. 1 is in the affirmative, whether all or any of the Defendants have infringed the Plaintiff’s copyright in the said map; and (3) Whether the Plaintiff is entitled to damages as prayed, from the Defendants or any of them.

After finding that it was not in dispute that the Plaintiff’s copyrighted map was used in the ad, the court considered the Defendants’ submissions that it did not infringe on the Plaintiff’s copyright by including the map in the commercial for reasons that the inclusion of the said map was incidental to the primary message being conveyed. In other words, the Defendants essentially relied on section 26 (1) (c) of the Copyright Act, which provides that copyright in any work does not include the right to control “the incidental inclusion of an artistic work in a film or broadcast’’. On this point, the court agreed with the Defendants and stated as follows:

“28. The Court had the privilege to look at the clip showing the ‘Zain Coverage’ advertisement in line with the objective of the said advertisement and it is of the view that the inclusion of the said map was incidental. It is also worthy to note at this point that the Plaintiff used other maps other than the Plaintiff’s. As submitted by the 3rd Defendant the only use of portions of the Plaintiff’s map was to stick a pin to a location. A few locations on the map were pointed out. Emphasis was on the information relayed and transferred to the white board. The appearance of the map was subordinate. The coverage of the Plaintiff’s network had already been demonstrated by the act of the Engineer travelling to various locations and relaying information to the gentleman in the office set up who would tick the relevant locations on a white board. PW 1 also admitted that the map was not the subject of the advert.”

The court went further to consider whether in the event that the use of the Plaintiff’s map in the advert was not incidental, the Defendants had infringed on the Plaintiff’s copyright in the said map. Once more, the court sided with the Defendants and stated as follows:

“As stated above, the map was hanging up on a wall whereby the person at the office pinned up some locations. The assumption is that this is the map the 3rd Defendant purchased in a bookshop. In that case, the map was just part of the advertisement and the same was not reproduced.(…) it is plain that the Defendants and particularly the 3rd Defendant neither reproduced the whole or substantial part of the Plaintiff’s map nor did it communicate to the public or broadcast the said map. Therefore, the Defendants cannot be accused of copyright infringement as envisaged under Section 35 (1) of the Copyright Act. (…) The 3rd Defendant demonstrated before this Court that indeed they bought a copy of the said map. The Plaintiff’s witness also confirmed that the Plaintiff produced the maps for sale and stated that the map purchased by the 3rd Defendant was an authentic one. In that case, it cannot be said the 3rd Defendant wrongfully used the map. In the circumstances foregoing, this Court finds and holds that the Defendants did not infringe on the Plaintiff’s copyright in the “Kenya Administrative Maps”.”

Interestingly, the court seemed to suggest that had the Plaintiff not intended assignment of any of its rights in the maps by outright sale, this ought to have been expressly brought to the attention of the buyers of the map, including the Defendants. One way proposed by the court is through the agents selling the maps.

 

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