Presently the Copyright Register (pictured above) shows that the same audiovisual work called “MY SKOOL TV SHOW” has two separate owners who registered it almost a year apart. In a recent High Court judgment in the case of Republic v Executive Director, Kenya Copyright Board & another Ex-Parte Sugarcane Communications Ltd  eKLR, the court quashed a decision by Kenya Copyright Board (KECOBO) to cancel the copyright registration of “MY SKOOL TV SHOW” by the ex parte Applicant (Sugarcane Communications Limited). This judgment is perhaps a wake-up call for KECOBO which, unlike the Registrar of Trade Marks at Kenya Industrial Property Institute (KIPI), is not accustomed to having its decisions regarding registration of intellectual property (IP) rights challenged by courts of law.
At the heart of this matter is a bitter IP ownership dispute between two production companies Sugarcane and Yellow Box over “My Skool”, a teen television (TV) show. The show is currently in its second season and broadcast on Kenya Television Network by Standard Group PLC. The first season of the show is available online via a YouTube channel called “SugarBox Network”, which appears to be owned by Sugarcane. However some of the episodes from the season have been removed by Google following copyright complaints by Yellow Box (as pictured below).
In the present High Court judgment, the court agreed with Sugarcane that the decision by KECOBO to expunge its registration was a violation of the rules of natural justice enshrined in the right to fair administrative action under the Constitution and statute. In this regard, the learned judge stated in part:
‘In this case there is no evidence that the ex parte applicant [Sugarcane] was accorded an opportunity of being heard before a decision which was obviously adverse to its interests was made by the Respondent [KECOBO]. The Respondent has however contended that the application is tainted with malice as the ex parte applicant knows very well that it misled the Respondent in the application for registration of copyright thereby taking undue advantage over the interested party [Yellow Box] who had substantially contributed to the production of the work. It was therefore averred that since the ex parte applicant had come to court with unclean, tainted hands, it was totally undeserving of the orders sought herein. (…) Whereas the Board may well have had proper reasons to act in the manner it did, where its decision is tainted by procedural impropriety in particular breach of the rules of natural justice, the same cannot stand.
In the result an order of certiorari is hereby issued removing into this Court for the purposes of quashing the decision of the Executive Director of the Kenya Copyright Board made on 14th March 2017 of cancelling the Applicant’s Certificate of registration of copyright work number AV-02032 for an audio visual titled “My Skool TV Show” dated 19th April 2016 (…) I must however make it clear that this decision does not mean that the registration of copyright in the subject works by the ex parte applicant was proper. It only means that the process by which that registration was cancelled was unprocedural.’
In light of the above, Sugarcane appears to have won the first round of the dispute with Yellow Box. This judgment is crucial in that the court clarifies that section 21 of the Copyright Act (which deals with appeals against a decision of KECOBO) does not oust the jurisdiction of the High Court to determine matters where it is alleged that the ‘decision of KECOBO was tainted with procedural irregularities’.
In the court’s summary of Yellow Box’s case, it is noteworthy that it has commenced infringement proceedings against Sugarcane in the case of Nairobi HCC No. 308 of 2017: Yellow Box Limited vs. Sugarcane Communications Limited and The Standard Group. At the moment, there have been no reported decisions from this case. In addition to the dispute over copyright ownership, it appears that there may be a dispute of trade mark rights in MY SKOOL (DEVICE) which was registered in 2017 by Yellow Box as depicted above. It is interesting to note that this trade mark is visible on the top right hand corner of the videos from first season of My Skool currently available on Sugarcane’s YouTube account.
Meanwhile, the MY SKOOL TV Show (DEVICE) pictured on the right above is associated with Sugarcane and bears the TM sign however this blogger has not yet been able to find a record of this mark in the KIPI Industrial Property Journal. However it appears that Sugarcane has since rebranded the TV show twice from ‘Kasuku My Skool’ to now ‘Kasuku Talent Show’ in recognition of the show’s title sponsor, Kasuku, a leading school stationery brand in Kenya.
We will be keeping tabs on the case filed by Yellow Box against Sugarcane as it is heard and determined by the High Court.