Court of Appeal Settles 20 Year Copyright Dispute: Case of Mount Kenya Sundries v Macmillan Publishers

Macmillan Memorial Library Kenya

A recent judgment by the Court of Appeal in the case of Mount Kenya Sundries Ltd v Macmillan Kenya (Publishers) Ltd [2016] eKLR involved a copyright infringement claim with respect to two maps of Kenya produced between 1985 and 1990 by the Respondent, Macmillan (now known as Moran Publishers). At the High Court, Macmillan had successfully proved that Mount Kenya had reproduced and sold its maps without its authorisation contrary to the Copyright Act. This High Court decision has been discussed previously here.

In the present appeal, the court reconsidered the evidence, evaluated the submissions of both parties in order to determine several key issues including locus standi (standing to sue), copyright ownership of the maps and copyright infringement of the maps.

The Respondent claimed copyright infringement of its maps “Kenya Tourists Map” later called “Kenya Travelers’ Map” by the Respondent. According to the lower court, the Appellant’s map “Kenya Pictorial Tourists’ Map” was substantially similar to the Respondent’s save for changes made in certain aspects of the maps’ details.

On the issue of locus standi, the Court of Appeal agreed with the lower court that the Respondent was the equitable owner of the subject maps given that its parent company in the United Kingdom, Macmillan Publishers Ltd., made the maps specifically for the Respondent as evidenced by witness testimony stating that the maps were made by “Stephen Jonathan Beck Company in U.K….. for Macmillan Kenya”.  Therefore, the Respondent had the capacity to commence the action in the High Court but, it would not have been entitled to relief if the assignment of copyright in the subject maps had not been obtained before the High Court suit was concluded.

The court agreed with the lower court that the Respondent had established that it had copyright in its maps based on the witness testimonies of the Plaintiff and Defence witnesses. On the issue of copyright infringement, the court examined the record from the expert witness testimonies before the lower court. The appeal court upheld the High Court’s decision to discredit both the qualifications of the Defendant’s expert witnesses and the evidence they produced in court. As such, the Appellant was found to be the one who substantially copied the Respondent’s maps.  In this connection, the appeal court stated as follows:

“It is therefore not only the reproduction of the entire protected work that would constitute an infringement, in our view, reproduction of a substantial part of the work would still constitute an infringement.(…) The appellant freely acknowledged that before the respondent complained, it produced the copied maps for sale to the public. It did so without the licence of the respondent. By so doing, it infringed the respondent’s copyright in its maps. In the case before us the points of resemblance and dissimilarity in the maps of the respondent compared with the appellant’s maps taken as a whole clearly give the impression to an ordinary observer that the appellant’s maps are those of the respondent.

(…)

Given our finding that the respondent’s maps were produced in 1985, and revised in 1989, the inevitable conclusion is that the appellant’s maps which were produced in or about 1990 were produced after those of the respondent and if any copying took place it was by the appellant.”

As a result, the Court of Appeal held that the High Court had come to the correct conclusion on the evidence and the law that the Appellant had violated the Respondent’s copyright.

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