The recently reported High Court case of Evans Gikunda v. Patrick Quarcoo & Two Others  was born out of a business deal gone bad. At the heart of this dispute is a music application (app) that the plaintiff (Gikunda) claims to have conceptualised, designed and developed between 2012 and 2016. However Gikunda joined the employ of the 2nd Defendant (Radio Africa Group Limited) in 2013 where the 1st Defendant (Quarcoo), the Chief Executive at Radio Africa, ‘persuaded Gikunda to partner with him to ensure that the product gets to market’.
According to Gikunda, Quarcoo proposed that that once Radio Africa’s Board of Directors sanctioned its participation in his app, they would share out the ownership of the app as follows: Radio Africa – 40%; Gikunda- 30%; Quarcoo- 20%; and the remaining 10% to a strategic partner. However, in mid-2016, Gikunda resigned from Radio Africa after which he alleges that Quarcoo and Radio Africa sold the app, without his knowledge, to the 3rd Defendant (Safaricom).
Lurking beneath these banal set of facts are a host of complex copyright issues that the High Court will have to consider in due course. These include: (i) the scope and application of the work-for-hire doctrine; (ii) the nature and scope of the doctrine of ‘substantiality’; and (iii) the enforceability of moral rights for digital works. All these issues are anchored on the crucial determination of ownership of the app, currently known as ‘Songa’. Previously, the plaintiff’s app was known by numerous names including ‘NakedGroove’, ‘The Platform’, ‘The Music Platform’ and ‘RAMP’, the latter being an abbreviation of either ‘Radio and African Music Player’ or ‘Radio Africa Music Player’. This is clearly not a straightforward case and may well require oral evidence from various expert witnesses to establish whether or not the Songa app by the Defendants is substantially similar to the app that the Plaintiff alleges he developed outside the course and scope of his employment at Radio Africa.
As far as this blogger can ascertain, both the Plaintiff and the Defendants failed to register their respective apps as copyright works. In the case of the Plaintiff, this failure to obtain copyright registration complicates the evidentiary process of establishing that the substance of the app which he alleges was appropriated by the Defendants. The Defendants, not surprisingly, have sought to rely on trade mark protection for their app as evidenced by two separate applications filed in 2016 and 2017, depicted above.
At the interlocutory stage of this suit, the Plaintiff must show a prima facie case with a probability of success or that if its prayer for injunction is not granted by the court, he will suffer irreparable injury that cannot be compensated by an award of damages. If in doubt the court shall decide the application on the balance of convenience. In determining whether there is a prima facie case, the interpretation of Section 31 of the Copyright Act is inevitable. The said section states as follows:
“Copyright conferred by sections 23 and 24 shall vest initially in the author: Provided that where a work –
(a) is commissioned by a person who is not the author’s employer under a contract of service; or
(b) not having been so commissioned, is made in the course of the author’s employment under a contract of service,
the copyright shall be deemed to be transferred to the person who commissioned the work or the author’s employer, subject to any agreement between the parties excluding or limiting the transfer.”
In this regard, the court must be satisfied that that the Plaintiff has substantiated the allegations that he developed the app branded as ‘Songa’ outside the course of his employment at Radio Africa. There must also be prima facie evidence on the Plaintiff’s part to show substantial similiarity between the Plaintiff’s app and the app commercialised by the Defendants. On the second condition for granting any injunctive orders, the Plaintiff must demonstrate that damages would not be a sufficient compensation for an injury suffered if injunction relief is not issued. Since the loss of royalties can be quantified, any loss to the Plaintiff may be compensated by way of damages. With regard to balance of convenience, the apparent lack of copyright registration of the app(s) may hurt both parties, although the Defendants could demonstrate that, in addition to obtaining trade mark registrations, they have invested significant sums in media promotion of Songa through various means including radio and television adverts, billboards and social media.
We will be keeping tabs on this case of David versus Goliath as it is heard and determined by the High Court.