Kenya’s Computer Misuse and Cybercrimes Bill Signed into Law

On 16 May 2018, President Uhuru Kenyatta (pictured above) assented to the Computer Misuse and Cybercrimes Bill, 2018. The Bill was passed by the National Assembly on 26 April 2018. Readers of this blog will note that, unlike the previous Computer and Cybercrimes Bill, 2017 that was first tabled in Parliament, the Act now contains some new provisions relating to blockchain, mobile money, offences related to cybersquatting, electronic messages, revenge porn, identity theft and impersonation, as well as the newly created National Computer and Cybercrimes Coordination Committee. A copy of the Act is available here.

From an intellectual property (IP) perspective, the Act is significant for several reasons, including that it creates new offences and prescribes penalties related to cyber-infringements, it regulates jurisdiction, as well as the powers to investigate search and gain access to or seize items in relation to cybercrimes. It also regulates aspects of electronic evidence, relative to cybercrimes as well as aspects of international cooperation in respect to investigations of cybercrimes. Finally it creates several stringent obligations and requirements for service providers.

For Your Own Protection: Why Proposed Anti-Counterfeit Act Amendments Make Sense

The word ‘Disconnect’ (see caption image above) may be the title of the latest Kenyan blockbuster film but it also embodies the current raging debate over proposed changes to The Anti-Counterfeit Act No. 13 of 2008. In our previous blogposts here and here, we have largely dwelt on the demerits of the proposals contained in the Statute Law (Miscellaneous Amendments) Bill 2018, which if enacted, would radically affect intellectual property (IP) enforcement in Kenya, principally undertaken by Anti-Counterfeit Agency (ACA).

Meanwhile, some readers of this blog, who happen to be IP practitioners specialising in brand enforcement and anti-counterfeiting matters, have rightly pointed out that it is equally important to consider the merits of and benefits expected from the proposed changes to the Act if and when the omnibus Bill is enacted. In particular, this blogpost will focus on the proposals relating to offences and the ‘recordation’ requirements.

In Regulation We Trust: Kenya Copyright Board Proposes New Set of Administration and Enforcement Provisions

To date, Kenya Copyright Board (KECOBO) has published two sets of draft proposals of amendments to the Copyright Act on collective management organisations (CMOs) available here and on intermediary liability for internet service providers available here. KECOBO has now published a third set of draft legislative proposals namely a draft copyright regulations 2016 available here. These three sets of draft proposals will be the subject of a day-long consultative public forum to be held next week on February 11th 2016 at the Auditorium of NHIF Building starting at 8:00am. For those who will not be able to attend the public forum, KECOBO has set up an email account to receive your comments on the drafts, which is: publicforum@copyright.go.ke. This blogpost is a commentary of the key features of the draft copyright regulations 2016 proposed by KECOBO.

Kenafric ‘Fuma’ Footwear Denies Counterfeiting Claims by Puma

This blogger has previously blogged here and here about Kenafric’s fatal attraction to well-known trade marks, to put it mildly. The latest victim of Kenafric’s attraction is none other than Puma AG Rudolf Dassler Sport (Puma for short). In this connection, this blogger came across a recent ruling in the case of Kenafric Industries Limited & another v Anti-Counterfeit Agency & 3 others [2015] eKLR.

In this case, Puma through its representative Paul Ramara lodged complaints at Anti-Counterfeit Agency (ACA) against Kenafric for trade mark infringement. ACA and Ramara went to Kenafric’s premises and demanded to check the same for goods in the name of Puma a demand Mikul Shah a director at Kenafric declined to comply with due to the fact that his company had not been served with any Court order directing the said search and entry. Consequently, Shah was arrested, taken to Ruaraka Police Station and charged with the offence of obstruction and released on bond.

International Women’s Day: Celebrating African Women Leaders in Intellectual Property

Angélique Kidjo won her 2nd Grammy Award in 2015. The world renowned Beninoise singer-songwriter is Vice President of the International Confederation of Societies of Authors and Composers (CISAC). CISAC is the umbrella body for copyright societies worldwide.

Celebrated globally on 8th March, this year’s International Women’s Day highlights the Beijing Declaration and Platform for Action, a historic roadmap signed by 189 governments 20 years ago that sets the agenda for realizing women’s rights. The official United Nations theme for International Women’s Day 2015 is “Empowering Women – Empowering Humanity: Picture It!”

“When we unleash the power of women, we can secure the future for all” – United Nations Secretary-General Ban Ki-moon in his message for International Women’s Day 2015.

To mark this year’s International Women’s Day (#IWD2015), this blogger has compiled a list of some of the (influential) women (leaders) in intellectual property (IP) from Kenya and throughout English-speaking Africa. The women listed below (in no particular order) are primarily drawn from IP offices, academia, non-governmental organisations and the IP legal fraternity.

KEMRI Ordered to Pay Researchers 30 Million Shillings for Constitutional Infringement of Intellectual Property Rights

In the recent case of Dr. Samson Gwer & 5 others v. Kenya Medical Research Institute (KEMRI) & 2 others Petition No. 21 of 2013, the Industrial Court at Nairobi found that KEMRI-Wellcome Trust Research Programme (KWTRP) had violated the constitutional rights to intellectual property of six Kenyan research doctors and ordered KEMRI to pay each of the doctors a sum of 5 million shillings as compensation. A copy of the court’s judgment is available here.

After an in-depth review of this case from an intellectual property (IP) perspective, this blogger concludes that this case sets an important precedent for the State’s obligations to protect the right to property under Article 40 of the Constitution of Kenya.

The researchers alleged that the respondents “routinely violated the Petitioners’ right under Article 40(1) of the Constitution by taking away the Petitioners’ right to intellectual property resulting in the Respondents, its servants, employees and students taking credit for the work and scientific innovation of the Petitioners by:

(i) (a) disregard syndrome; (b) Mathew Effect (Discovery credit inadvertently reassigned from the original discoverer for a better known researcher)

(ii) disapproval by the Respondent of the Petitioners and other local scientists innovations or work to apply for grants;

(iii) misappropriation of the work of local scientists to benefit expatriate scientists

(iv) frequent unfair administrative action

(v) Inability to veto adverse decisions by the scientific team leader

(vi) redeployment and chastisement through mail from the Director of KEMRI on the account of raising these grievances.

As a result the Petitioners submitted that the cumulative effect was to forever stifle the progress by Kenyan researchers and to impede their autonomy and dream of Kenyanising scientific innovations.

Therefore the petitioners sought the following reliefs, inter alia, a declaration that the Respondent’s conduct, acts and/or omissions are unlawful, illegal and/or unfair and the same violates Article 40 of the Constitution as well as an order that the Petitioners are entitled to compensation for the above alleged violation of the Constitution.

With regard to allegation (i) on the ‘disregard syndrome’, the petitioners submitted that the most rampant scientific misconduct by the Respondents against the Petitioners was plagiarism, a behaviour the latter termed as ‘citation amnesia’, ‘disregard syndrome’ and ‘bibliographic negligence’ on the part of the Respondents.

In this connection, the Petitioners alleged that the Respondents “arm-twisted the Petitioners to give up their intellectual property rights and cede their passwords to research and innovation” and that “the contracts of employment do not entitle KEMRI to the intellectual property of the Petitioners and the appropriation outlined is unlawful.”

The Respondents flatly denied these allegations arguing that there was not an iota of evidence before the court to substantiate the petitioners’ claims.

In its determination, the learned court noted that whereas KEMRI as an employer is a public institution, the funding under the KEMRI Wellcome Trust Research Programme emaned from external donors. These external donors attached specific terms and conditions to the grant and administration of the Wellcome Trust Research Programme which terms and conditions became subject of grievances by the Petitioners. However the Court found in favour of the Petitioners and stated thus at paragraph 82:

“The 1st Respondent as a state employer is bound by the Constitution to protect the right of the Petitioner and not allow a policy that appropriates their intellectual property as has been ably demonstrated by the Petitioners herein contrary to Article 40(1) of the Constitution.”

Therefore the court ordered that each of the Petitioners is entitled to compensation for the said constitutional violation in the sum of KES 5 Million within thirty days of the judgment date, including interest at Court rates from the judgment date to payment in full. Further the court ordered that the Petitioners are entitled to access all the outcomes of their scientific research and to the credit and benefit attached to the outcomes under Articles 35 and 40 of the Constitution. KEMRI was also ordered to pay the costs of the Petition.

Comments:

From the above, it is submitted that the petitioner’s case for scientific misconduct and denial of intellectual property (IP) rights by KEMRI raises a number of important issues. Furthermore, the learned court’s determination that the petitioner had ably made a case for infringement of the constitutional right to property under Article 40 is quite significant as it reinforces a dangerous precedent set by the Court of Appeal on constitutional enforcement of IP rights.

To begin, the petitioners’ case is problematic as it does not disclose which specific intellectual property rights have been infringed by KEMRI. This case is further complicated by the petitioners’ conflation of plagiarism and alleged IP infringement. As previously discussed by this blogger here and here, copyright infringement may also amount to plagiarism but plagiarism can never amount to copyright infringement. However the petitioners appear to have successfully misled the court to make a finding that KEMRI’s scientific misconduct of plagiarism amounts to infringement of the petitioners’ intellectual property rights as enshrined in the Bill of Rights.

This leads us to consider the impact of the court’s IP-related findings in this case. The present judgment in the Gwer v KEMRI case appears to be in line with the recent Court of Appeal decision in the digital migration case where the majority of the appellate judges found that the alleged infringement of intellectual property rights could be the subject of a constitutional Petition. However as this blogger has argued here, the reasoning by the Court of Appeal on IP (and seemingly adopted in the Gwer case) was flawed.

Therefore on this issue of constitutional enforcement of IP rights, this blogger respectfully submits that the earlier decisions by the learned Majanja J. in the High Court cases of Sanitam Services (EA) Ltd v Tamia Ltd Petition No. 305 of 2012 and Royal Media Services Ltd & 2 others v Attorney General & 8 others [2013] appear to be more cogent and correct in law compared with the findings in the present judgment and that of Court of Appeal in the digital migration case.

As a parting shot, this blogger notes that one unintended consequence of this emerging jurisprudence of constitutional enforcement of IP rights particularly in the employment context is that ex-employees such as Samson Ngengi (See our analysis of Ngengi v. KRA here) have an added avenue to obtain damages and compensation from public sector ex-employers in IP-related disputes. This blogger is informed that arbitration proceedings in the Ngengi’s case are still on-going.

Lessons from Kenafric on Intellectual Property Rights and Permissions

The Business Daily recently reported that Time Warner Inc and Kenafric are in talks to settle their copyright and trade mark infringement dispute out of court. It is reported that both parties recently appeared before the soon-to-retire IP-savvy Justice JB Havelock to request more time to conclude settlement discussions.

As we had previously discussed here, Cartoon Network Africa through its parent company, Time Warner had moved to the High Court to stop local confectionery giant Kenafric from using its cartoon “BEN 10” on the wrappers of its bubble gum products. Time Warner argued that the association of the chewing gum with its brands was damaging to the reputation of BEN 10 and goods branded with the label including toys, video games and clothing valued at Sh275 billion therefore Kenafric’s use of the name BEN 10 amounts to trade mark infringement of BEN 10 Trademarks. In addition, the sworn affidavit by Cartoon Network’s Vice President Louise Sams claimed that the unauthorised reproduction or adaptation or publication or broadcast or sale or distribution or possession or importation of the offending chewing gum by Kenafric constituted copyright infringement.

In its defence, Kenafric argued that the Cartoon Network products in question are registered under different classes under the Nice Classification hence Time Warner cannot challenge Kenafric given that the latter deal in different products. Kenafric also argued that the US firm has no local operations that can make consumers links its products with those of Kenafric, which are mostly sold within East Africa. All in all, Kenafric contended that the line of trade of the two companies is distinct and there are no similarities between their goods that can confuse customers.

In the meantime, many intellectual property (IP) commentators agree that Kenafric runs the risk of being dragged to court in similar fashion by the Coca Cola Company for its wrappers which appear to infringe on the “FANTA” and “SPRITE” marks. These infringing get-ups are available below:

Be it as it may, this blogger argues that Kenafric’s public experience with intellectual property enforcement should serve as a lesson to other commercial entities on how not to use the IP of other entities.

From a copyright perspective, literary and artistic works that make up a trader’s brand image cannot usually be used without that owner’s permission. Of course, the copyright owner may refuse to give permission for use of their work. In the case of Kenafric’s operations, it is clear that its uses would not fall within the scope of the fair dealing provisions and would not be subject to compulsory licensing through the Competent Authority. Therefore Kenafric would have to seek and obtain permission in writing to use, reproduce or adapt any trader’s copyright works.

Therefore, Kenafric would have to negotiate a licence to cover the use it intends to make of the work. This licence is essentially a contract between Kenafric and the copyright owner including the terms and conditions of use and payment or royalty for the use. The Copyright Act distinguishes between exclusive and non-exclusive licenses however the license must be in writing.

From a trade marks perspective, if Kenafric wants to use other people’s trade marks, it must obtain permission. Trademarks may be registered or unregistered. The registration of a mark gives the proprietor of that mark the exclusive right to the use of the trademark upon or in relation to the goods in respect of which it is registered, or in relation to services for the purpose of indicating that a particular person is connected, in the course of business, with the provision of those services. It follows that the proprietor of the mark may sue for infringement where there has been an unauthorised use of the registered mark. In addition, the registered owner of a trademark also retains the right to protect any reputation acquired through use by means of a passing-off action.

Therefore if Kenafric wants to use a trade mark, it must approach the owner and enter into a licence agreement with them. As one of the largest confectionary companies in the East African region, this blogger is of the view that Kenafric has sufficient bargaining power to negotiate favourable licensing terms and conditions with respect to both trade mark and copyright uses. As witnessed previously in the Mandela Foundation case against Zuji Travel Agency, globalization has made it easy for IP owners to detect IP infringement all over the globe, therefore the onus is on IP users to take all reasonable precautions to ensure that they obtain the necessary permissions and licenses from the IP owners.

In the case of most commercial entities such as Kenafric, formalized licensing arrangements provide a desirable win-win outcome for all parties involved as opposed to costly and lengthy court cases. What remains to be seen is whether Kenafric and other local companies will learn from the Ben 10 case.

Did Hong Kong Travel Agency Zuji Infringe Mandela’s Intellectual Property Rights?

Earlier this month, Yahoo! News reported that the South African consulate in Hong Kong wrote to a local travel company “Zuji” and demanded that it “immediately pulls a front-page advertisement featuring an image of a fist-pumping Nelson Mandela above the word “freedom””. The advert in question is pictured above.

According to the South Africans, the use of the stylized image — which also echoes the Barack Obama “Hope” poster — was an infringement of copyright held by the Nelson Mandela Foundation. A close-up of the advert is pictured below:

Read the full article here.

Intellectual Property in Crafts and Visual Arts in Kenya

This month, CraftAfrika organized a forum for creators and entrepreneurs in the crafts and visual arts sectors to discuss the impact and importance of the intellectual property (IP) system. This blogpost is a review of some of the key IP issues that arose during this important forum.

In today’s digital era, the real challenge for artisans and visual artists is not just to produce and market winning new products that cater to changing consumer tastes, but also to prevent – or if unable to prevent then to effectively deal with – unfair competition or theft of their creative ideas. The intellectual property (IP) system is the best available tool for creating and maintaining exclusivity over creative and innovative output in the marketplace, albeit for a specified maximum period of time. The effective use of IP can also help artisans and visual artists to develop networks and relationships not only with end consumers, but also with all the links in the supply and demand networks.

Overview of IP

Intellectual property (IP) refers to creations of the mind: inventions, literary and artistic works, and symbols, names, images, and designs used in commerce. Intellectual property is divided into two categories: 1) industrial property, which includes patents, trademarks, industrial designs and utility models; and 2) copyright, which includes musical works, literary works such as novels, poems and plays, films, musical compositions; artistic works, such as drawings, paintings, photographs and sculptures, and architectural designs. Rights related to copyright include those of performing artists in their performances, producers of phonograms in their recordings, and those of broadcasters in their radio and television programmes.

Different Types of IP Protection for Crafts and Visual Arts

Before a person or enterprise can take advantage of its intellectual output it has to acquire IP rights (IPRs). IPRs in the fields of industrial property need to be registered in order to be protected. In the case of copyright, registration is voluntary since IPRs under copyright subsist automatically once the work is fixed in material form. Here are the different types of IP protection for Crafts and Visual Arts, in order of priority:

1.Trademark: A brand or trademark is a sign or any combination of signs, capable of distinguishing a product or service from other products or services on the market. The main task of a trademark is to individuate a product or a service – consumers are able to distinguish between different goods with different marks precisely on the basis of the marks. Unlike other types of IP, the term of protection for trademarks is not limited; they can be renewed indefinitely by the owner.
Example: SANDSTORM is a registered trademark used for hand-crafted leather items such as bags. It is registered together with a lizard symbol.

2.Copyright: Basically, copyright gives the owner the exclusive right to use the work. It protects items such as paintings, drawings, sculptures, photographs, architecture, instruction manuals, software, databases, technical documentation, advertisements, maps, literary works, music, films or songs. In most countries, a copyrighted work is protected for the length of the author’s life plus a minimum of another 50 years.

3.Industrial Design: An industrial design (or simply a design) is the appearance of the whole or part of a product resulting from features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation. Industrial designs, as objects of IP, can usually be protected for up to a maximum of 15 years. The fees indicated in the table above for design registration are the total fees payable to KIPI and not merely the filing fees.

Example: A new textile pattern or the unique shape of a piece of jewellery can be protected as designs.

4.Patent: A patent is an exclusive right granted for an invention, which is a product or a process that provides a new and non-obvious way of doing something, or offers a new and non-obvious technical solution to a problem. A patent provides protection for the invention to the owner of the patent for a limited period, generally 20 years.

Example: A new method of tatting, using a shuttle, that enables the tatter to use more than two colours or textures of thread has been patented.

5. Utility Model (‘Petty Patent’): A utility model is similar to a patent, but the requirements for acquiring protection are less stringent and the protection is much cheaper to obtain and to maintain. On the other hand, the term of protection offered by a utility model is shorter than a patent i.e. 10 years without the possibility of renewal. The fees indicated in the table above for utility models are the total fees payable to KIPI and not merely the filing fees.

6.Trade secrets: this is confidential business information of any nature that can be used in the operation of a business and that is sufficiently valuable and secret to afford economic advantage over others. To be protected, the owner of a trade secret must have taken reasonable steps to keep the information secret. Therefore it is advised that artisans and visual artists use Non-Disclosure, Non-Compete and Confidentiality agreements and/or clauses in all their dealings with third parties.

Examples: Glass-blowing techniques, oven processing methods for baking pottery, clay mixture preparations for ceramics, consumer profiles, advertising strategies, lists of suppliers and clients, and manufacturing processes can all be trade secrets.

Commercialising Intellectual Property Rights

IPRs represent property rights. They can be used by the IPR owner or they can be transferred to others. Artisans and visual artists who own any IPRs can sell their rights to another person. More importantly, IPRs have the particular advantage that they may be exploited simultaneously by several people. This can be done through licensing.

The word licence simply means permission – a person grants permission to another to do something. A licence agreement is a contractual agreement under which a licensor (the person who owns the IP) permits another (licensee) to use the right. It does not transfer the ownership of the IP.

Enforcing Intellectual Property Rights

The main reason for acquiring IP protection is to be able to reap the benefits of the creations. IP assets can only lead to benefits when the acquired IPRs can be enforced; otherwise, infringers and counterfeiters will always take advantage of the absence of effective enforcement mechanisms to benefit from the artisan’s or visual artist’s hard work. It is often the threat of enforcement or the actual enforcement action which allows an IPR to be effectively exploited as a commercial asset.

In the recent dispute between Penny Galore and Amani Women’s Group, Amani was accused of infringing Penny Galore’s rights under both copyright and trade mark law with respect to the latter’s handmade necklace branded and marketed widely as the Kura Necklace. Penny Galore alleged that Amani had substantially copied and/or reproduced the Kura Necklace Grey and that Amani were selling this infringing work at its shops to individuals and/or independent traders. Therefore Penny demanded that Amani immediately stop all dealings with its alleged infringing necklace and that all pieces of the disputed Amani neckace must be destroyed.

In the case of Alternative Media Ltd vs Safaricom Ltd (2005) 2 KLR 253, the court found that Safaricom had infringed Alternative Media’s rights under copyright with respect to artistic works created by the latter. It was found that Safaricom had used artwork belonging to Alternative Media on its 250 Shillings Scratch Cards without Alternative Media’s authority. Therefore the court found that infringement of copyright arose not because the Safaricom’s work resembled Alternative Media’s, but because the Safaricom had copied all or a substantial part of Alternative Media’s work.

The Intellectual Property End-Game

For artisans, craft entrepreneurs and visual artists in Kenya, the IP system should be viewed as a protection and promotion tool that, if used effectively, can enhance business success.

Some important IP considerations include: identification of creative output that may be protected with IP rights, understanding the types of IP rights and protective measures best suited for particular needs and business, consideration of the costs and benefits of IP registrations, maintenance and management of IP assets, detection of IP infringements and enforcement of IP rights.

QOTD: Jurisdiction in Patent Infringement Litigation: Industrial Property Tribunal or High Court?

In today’s Question of the Day (QOTD), a reader asks:

“In cases of infringement, I believe that a patent owner can elect to sue in the High Court, and then the court can either take the case or send it to the Industrial Property Tribunal. The patent owner can also elect to take the case directly to the Tribunal and skip the court altogether. Is this understanding correct?”

The Industrial Tribunal is the “court” of first instance. If a party is not satisfied with the decision of the Tribunal, it can proceed on appeal to the High Court. However in practice, some litigants proceed directly to court and if the opposing side raises an objection, some judges refer the matter back to the Tribunal. In some instances, depending on how the matter is presented by the counsel, some High Court judges decide to hear the matter.

In terms of a choice between High Court or Industrial Property Tribunal, the Industrial Property Act, 2001 clearly states that proceedings should start at the Tribunal. In this regard, consider the following sections of the Act:

“105. Subject to sections 21(3)(e), 58, 61(6), 72, 73, 80(1C) and 86, any act specified in section 54 or 92 and performed by a person other than the owner of the patent or of the registered utility model or industrial design without the owner’s authorization, in relation to a product or a process falling within the scope of a validly granted patent or certificate of registration shall constitute an infringement.”

“106. On the request of the owner of the patent or the registered utility model or
industrial design, the Tribunal shall grant the following relief—
(a) an injunction to prevent infringement where infringement is imminent or to prohibit the continuation of the infringement, once infringement has started;
(b) damages; or
(c) any other remedy provided for in law.”

“112. Where under this Act provision is made for appeals from the decisions of the Managing Director, all such appeals shall be made to the Industrial Property Tribunal…”

“113.(1) For the purposes of hearing and determining appeals in accordance with section 112 and of exercising the other powers conferred on it by this Act, there is established an Industrial Property Tribunal which shall consist of the chairman and four members appointed by the Minister.”

In those cases where a judge decides to hear the matter at first instance, this decision is open to review and/or appeal either a misinterpretation of the Industrial Property Act or a decision made per incuriam depending on how the matter is presented to the court. In a High Court case reported here, the defendant raised a preliminary objection citing section 112 but not 113. However, in this case, the judge ruled in favour of the plaintiff and allowed the objection without considering section 113 of the Act as reproduced above. It appears that the courts tend to view such objections as encroaching on the unlimited jurisdiction of the High Court.

However, the intention of the legislature seems to be that the Industrial Property Tribunal would act as a specialised court that would take advantage of its expertise and experience to deliver speedy and sound rulings. The Tribunal has a full time Secretary employed by the KIPI as legal officer to carry out legal research and provide reports to assist the members of the Tribunal.

In the context of trade mark litigation, the Industrial Property Tribunal would be akin to the Registrar of Trade Marks who hears and determines opposition/expungement matters. In this regard, it is important to note that most of the trade marks rulings delivered by the Registrar are seldom challenged on appeal in the High Court. Even where trade mark matters are appealed to the High Court, very few of these matters are set aside by the court.