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

KEMRI-Wellcome Trust Research Programme KWTRP

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.

Protection of “BASMATI” in Kenya as Trade mark or Geographical Indication?

Daawat-basmati-rice

In a recent ruling by the Registrar of Trademarks, it was found that the word BASMATI does not enjoy prima facie recognition as a geographical indication (GI) in Kenya therefore its registration is permissible as a trade mark. A full copy of this ruling available here.

In this matter, Krish Commodities Limited (the applicant) had applied to KIPI for registration of six marks all bearing the word BASMATI. The Agricultural and Processed Food Products Export Development Authority (APEDA), a statutory body under the Indian Ministry of Commerce which is primarily in charge of export and development of agricultural and processed food products, including BASMATI rice filed a notice of opposition. APEDA argued that BASMATI was a GI that specifically denoted “a special and unique aromatic long grain rice grown and produced in a specific region of the Indian sub-continent, at the foothills of the Himalayas and falling in India and Pakistan.”

Through its local counsel, APEDA argued that the applicant sought to benefit from the substantial reputation and goodwill built up in connection with the name BASMATI. In this connection, it was alleged that the proposed registration was meant to deceive the public into believing that the applicant had proprietary rights over the word and name BASMATI or to cause confusion in the minds of the public as to the origin of the goods, and that the application was likely to impair, interfere with or take unfair advantage of the distinctive nature of the GI BASMATI.

In response, the applicant claimed that APEDA lacked locus standi to institute opposition proceedings as it was not the owner of the mark as desired to be registered. Furthermore, the applicant contended that it was not claiming any exclusivity to the word BASMATI and had agreed to disclaim the use of the word BASMATI. In this connection, the applicant contended that the application was not to register the mark BASMATI on its own but for the registration of different marks consisting of a combination of words. It was further claimed by the applicant that the word BASMATI was a common everyday word in the food and rice trade.

In making his ruling, the Registrar identified several key issues for determination including: the locus standi of the opponent; the legal position regarding ownership of the mark BASMATI in Kenya and the status of the word BASMATI under Kenyan law. In the first instance, the Registrar found that APEDA as the opponent had the locus standi to bring the oppositions. However the Registrar found that APEDA had failed to establish any proprietary rights to the word BASMATI such as would enable it to prevent its registration as a mark by any other party. The Registrar also found that APEDA had not established that under Kenyan law the word BASMATI is a mark whose registration is prohibited by reason of its being a geographical indication.

Comments:

This blogger was particularly delighted by the Registrar’s fancy footwork in steering clear of the rice wars between India and Pakistan over the registration of BASMATI as a Trade mark or a Geographical Indication.

At the international level, it has been argued that not much has changed since the TRIPS Agreement and therefore GI owners like APEDA continue to struggle to protect names like BASMATI in a world with no uniform mechanism for protection of GIs.

At the national level, it clear that there has been increased awareness and protection of GIs, In the present case, the Registrar is fully cognisant of the government’s obligations under TRIPS but finds that APEDA failed to take necessary steps to secure its IP rights in the word BASMATI within Kenya. In particular, it is important to note the enactment of section 40A of the Kenya Trademarks Act which was made in conformity with TRIPS, specifically to cater for GIs. This provision provides that geographical names or other indications of geographical origin may be registered as collective trade marks or service marks.

High Court of Kenya Dismisses Copyright Infringement Case Against Oxford University Press

In a ruling dated 15th June, 2012 in the case of Njeri Wangari & Another v. Oxford University Press (E.A) Ltd. [2012] eKLR, Judge A. Mabeya dismissed an application for summary judgment in a clear case of copyright infringement filed by an author and her publisher. Read the full ruling here.

The facts of this case were as follows: Njeri Wangari (who some of you may know as “@KenyanPoet” on twitter) is an accomplished author, poet, performer and blogger. Oxford University Press East Africa Ltd. is a leading educational publisher in the Eastern and Central Africa region. It is a branch of the International Division of Oxford University Press.

In May 2010, Oxford published a book titled “Counterpoint and Other Poems” which contained KenyanPoet’s poem titled “Their Eyes” which she had published in an anthology titled: “Mines and Mind Fields: My Spoken Words”, through her publisher, Nsemia Inc. KenyanPoet alleged that the copying of her poem was unauthorised and amounted to copyright infringement therefore she asked the court to award her damages for loss of income together with the loss of income by her publishers. Oxford, on its part, contended that when it published its work in 2010, it was not aware of KenyanPoet’s publication and furthermore it was not aware of the assignment of the latter to Nsemia.

The Court found that Oxford had no defence against the KenyanPoet’s claim of compensation arising from copyright infringement of her poem but held that it could not enter judgment in favour of KenyanPoet. According to the Court, KenyanPoet’s publisher Nsemia had failed to establish that there was assignment of copyright pursuant to section 33 of the Copyright Act. Therefore since the claims of both KenyanPoet and Nsemia were “intertwined”, Nsemia’s lack of locus standi in the copyright suit meant that the entire application for summary judgment had to be dismissed.

Comment

IPKenya spoke to KenyanPoet and she clarified certain issues surrounding the case:

“Oxford University Press (E.A) Ltd got hold of my poem through my blog. This was despite indicating at the bottom of the poem that all copyrights were reserved with the copyright sign. I had also given my names and email address in case anyone wanted to get in touch with me.”

“Oxford University Press (E.A) Ltd claimed that I only signed a contract with my publisher after the poem had been lifted thus my publisher could not claim loss of income. This was not true as I signed a contract with the publisher in 2009 though the book came out in 2010. Oxford’s anthology was published in 2010 as well.”

IPKenya is surprised by this ruling and questions the learned judge’s over-reliance on the apparent lack of an assignment agreement between Nsemia and KenyanPoet to deprive the latter any form of compensation for the unauthorised commercial use of her copyright work. Sadly the net effect of this ruling is that, in a classic case of David versus Goliath, Oxford University Press (Goliath) has gotten away with blatant copyright infringement without paying any compensation for copyright infringement to KenyanPoet (David). It is hoped that the ultimate judgment in this matter will clearly canvass the issues raised above.

Constitutional Review and Intellectual Property Rights: Zambia’s Bold Step Forward

IPKenya recently found time to peruse the First Draft Constitution of the Republic of Zambia, published on 30th April 2012 by the Technical Committee on Drafting the Zambian Constitution.

Read the full draft Constitution here.

News reports indicate that Zambia is in the process of reviewing its Constitution and that Zambians have been given a deadline of 20 July 2012 to engage with this 272-paged draft Constitution and submit comments to Technical Committee.

IPKenya has come across the following provision in the draft Constitution:

Language and Culture.

Art. 63

4) The State shall-
(…)
(b) recognise the role of science, technology and indigenous technology in the development of the Nation; and
(c) support, promote and protect the intellectual property rights of the owner, or the people of Zambia.

5) Parliament shall enact legislation to-

(a) ensure that communities receive compensation or royalties for the use of their biological knowledge, medicinal plants and cultural heritage; and
(b) recognise and protect the ownership of indigenous seeds and plant varieties, their genetic and diverse characteristics. (…)

Comment

“To promote the progress of science and the useful arts, by securing for limited times and authors and inventors the exclusive right to their respective writings and discoveries.” – Article 1, Section 8 of the American Constitution.

IPKenya strongly believes the current process of constitutional review in Zambia affords our Southern neighbours a unique opportunity to examine in what ways socio-economic development may be constitutionally facilitated. Intellectual Property (IP) protection has achieved increasing recognition as a necessary pre-requisite to innovation-led economic growth.

Today, land, as real property, plays less significant role in development and global competitiveness. Therefore, ICT like software, the internet and e-commerce; new materials like fibre optics and super conductors and biotechnology and environmentally sound technologies are the key contributors to development.

It was this realisation that led Kenya in its new Constitution promulgated in August 2010 to recognise and expressly protect IP, innovation and technology transfer. For the first time in Kenya’s history, IP norms have been constitutionalised. Zambia seems to be heading in this very direction and in fact some of the above provisions appear to have been lifted almost verbatim from Articles 11(2), 40 (4), 69(1) (c) and (e) of the Kenyan Constitution.

IPKenya recalls when the draft Kenyan Constitution was being debated, a site called Techdirt published an article: “Why Kenya’s Attempt To Put Intellectual Property Rights In Its Constitution Is A Mistake”. Fortunately, most Kenyans did not buy into Techdirt’s outlandish arguments that entrenching IP rights into the Constitution amounted to protectionism. In contrast, IPKenya would encourage Zambia to ensure that intellectual property rights remain in its constitutional drafts until their new supreme law is finally promulgated.

In particular, IPKenya believes that the wording of the Article 63(4)(c) of the draft Constitution is significant in that it recognises that IP can be owned either by an individual or jointly by the people of Zambia:

“The State shall support, promote and protect the intellectual property rights of the owner, or the people of Zambia.” (my emphasis)

This provision, if passed into law, will be the basis upon which local creators and inventors can ensure their IP rights are respected and protected.

It will also assist Zambians in dealing with misappropriation and misuse of traditional knowledge and associated genetic resources, particularly in agricultural, environmental and pharmaceutical biotechnology.

Will the mere recognition of intellectual property rights in Zambia’s Final Constitution be an end in itself? IPKenya says no! There will be need for the government, the private sector and all interested parties to do more towards the realisation of the full economic potential in intellectual property. In this connection, IPKenya recalls sharing his thoughts on the controversial article: “You Lazy (Intellectual) African Scum!” which was focussed on Zambia but could easily be related to many other African countries. Throughout Africa, works of intellectual property are constantly created and invented but what is lacking is a robust legal and institutional framework to provide awareness, protection and enforcement IP rights.

Recently, Afro Leo highlighted a disturbing judgment by the Zambian Supreme Court in the case of DH Brothers Industries (Pty) Limited v Olivine Industries (Pty) Limited, which purported to deny trademark owners rights to unregistered marks contrary to the Zambian Trade Marks Act.

If Article 63 of the draft Zambia Constitution were to be passed, IPKenya argues that such a court decision could be successfully challenged as being unconstitutional.

In the months ahead, the long road to legal and institutional reforms for Zambia hang in the balance as Zambians craft a new constitutional dispensation which will hopefully usher in a new dawn for intellectual property rights in the Southern African country.

The Rise of Constitutional Intellectual Property in Kenya

In a recent judgment in the case of Patricia Asero Ochieng, Maurine Atieno and Joseph Munyi vs Republic H.C.C.C. Petition No. 409 of 2009 handed down by Lady Justice Mumbi Ngugi (also known as “Kenyan Jurist” in blogging circles), the Constitutional Division of the High Court held that one of Kenya’s intellectual property laws namely the Anti Counterfeit Act was unconstitutional.

The full text of the judgment is available here.

At paragraph 87 of the judgment, the court’s ruling on the unconstitutionality of this IP act reads as follows:

Sections 2, 32 and 34 of the Anti Counterfeit Act threaten to violate the right to life of the petitioners as protected by Article 26 (1), the right to human dignity guaranteed under Article 28 and the right to the highest attainable standard of health guaranteed under Article 43 (1) and the court hereby grants the declarations sought by as follows:

(a) The fundamental right to life, human dignity and health as protected and envisaged by Articles 26(1), 28 and 43(1) of the Constitution encompasses access to affordable and essential drugs and medicines including generic drugs and medicines.

(b) In so far as the Anti Counterfeit Act, 2008 severely limits or threatens to limit access to affordable and essential drugs and medicines including generic medicines for HIV and AIDS, it infringes on the petitioners’ right to life, human dignity and health guaranteed under Articles 26(1), 28 and 43(1) of the Constitution.

(c) Enforcement of the Anti Counterfeit Act, 2008 in so far as it affects access to affordable and essential drugs and medication particularly generic drugs is a breach of the petitioners’ right to life, human dignity and health guaranteed under the Constitution.

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Moline infringing on Mololine Trademark, According to Court

The ratio decidendi of Lady Justice Murugi Mugo’s decision can be found on the second last page of the judgement:

“…it is clear that the words “MOLOLINE” and “MOLINE” as appearing in the Applicant’s minibuses KBB 882 M and respondents KBM 807 C and KBK 425B highly resemble in material particulars. (…) the said words and marks, their usage in the same locality and in the same industry, providing the same service, namely, public commuter services, do have a high likelihood causing confusion among the members of the public, with a high probability of making them confuse the 1st Respondent’s minibuses with those of the Applicant, be deceived or made to believe that “MOLINE” buses belong to or are associated with “MOLOLINE SERVICES LTD”, all to the detriment of the Respondent and its business.

By the registration of its trademark, the Applicant acquired a prima facie right of claim against any potential culprit in the infringement thereof. Given the nature of the business involved, as demonstrated by the 1st Respondent’s evidence as to earnings, I am in no doubt that the Applicant stands to suffer irreparable loss not capable of compensation in damages.”

Read the full judgement here.

Kenya’s Anti-Counterfeit Act: Intellectual Property and Constitutionalism Collide

In 2009, three HIV/AIDS patients petitioned the Constitutional Court to declare the Anti-Counterfeit Act illegal because it could deny them access to generic medicines. The move sought to have the 2008 Anti-Counterfeiting Act made unconstitutional on the grounds that it could rob them of their right to life.

The Constitutional Court is due to deliver a verdict on March 9, 2012. As one of the petitioners in this case explains:

“The court will rule on whether, the Kenya Anti-Counterfeit Act of 2008 which was enacted by the national parliament infringes on the right to access more affordable medicines especially for treatment of HIV and other public health challenges. Depending on the decision, it is widely expected that this case , the first legal challenge in Africa against a new push for anti-counterfeit legislation, could have significant implications on other countries preparing similar laws.”

Public health advocates have consistently argued that the Anti-Counterfeit Act’s definition of what constitutes a counterfeit product is too vague, and could be used to block the import and local manufacture of generic drugs. The Act is so broad that it could, for example, allow a pharmaceutical company to charge legitimately produced generics as counterfeits in Kenya even if its patent is not registered there, which is argued to be “against the whole principle of territorial application of IP rights”.

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