Previously, this blogger reported here that the High Court had suspended the coming into force of the Tobacco Control Regulations 2014 made by the Cabinet Secretary for Health scheduled to take effect on 1st June 2015. Recently in the case of British American Tobacco Kenya Ltd v Cabinet Secretary for the Ministry of Health & 4 others [2016] eKLR, Lady Justice Mumbi Ngugi (known to many readers for her landmark decision on anti-counterfeit law and access to medicines here) delivered a judgment at the High Court dismissing claims by ‘Big Tobacco’ that their constitutional rights including intellectual property (IP) rights are being violated by the new Tobacco Regulations.
Businesses often spend much time and money to create a successful advertising campaign. It is important to protect your intellectual property (IP) assets, so that others do not unfairly copy or free-ride upon your innovative creations.” – Lien Verbauwhede, WIPO.
Like in many parts of the world, the advertising sector in Kenya is the new battle-ground upon which businesses compete to creatively and uniquely pass on relevant information to customers so as to facilitate and positively influence their buying decisions. It is generally agreed that for an advertisement to be effective, it must first get noticed, and then be remembered long enough to persuasively communicate the unique selling proposition of a product or service, so as to make potential customers into actual ones. Outdoor advertising, in particular, is considered a cost effective way of giving messages the maximum exposure. Outdoor advertising includes billboards, outdoor signs, printed messaging, street banners, posters, brochures etc.
This blogger has noted an increase in the number of creative new outdoor advertisements by both medium-sized and large companies leading to a surge in the number of billboards along streets, highways in urban areas. Billboards are so far the preferred medium for outdoor advertising. there are several types of intellectual property rights that are involved in billboard advertising. For instance, most of the creative content on the billboard (writing, pictures, art, graphics, lay-out) may be protected by copyright along with any advertising slogans which may also be protected by trademark law.
In addition, industrial design law may be crucial for protection of billboards. Industrial designs cover the three dimensional form of billboards provided that such form gives a special appearance to a product of industry and can serve as a pattern for a product of industry. In the case of ENG Kenya Ltd v Magnate Ventures Ltd (2009), both the plaintiff and defendant carried on business in the outdoor advertising sector and the plaintiff alleged that the defendant had infringed on the plaintiff’s design for ‘suburban signs’. The court held that the registration of the plaintiffs’ design at the Kenya Industrial Property Institute (KIPI) was proof enough that the design was unique and capable of registration. The plaintiff could therefore claim exclusive right to the design. The court further stated that the defendant copied the plaintiffs’ design in bad faith.
For printing and branding companies, it is important to be very conscious of IP issues in their various advertising solutions. In this regard, the case of Alternative Media Ltd v Safaricom Ltd (2004) is instructive. The plaintiff, who is in the business of advertising graphic designing and media communication solutions, sued the defendant claiming copyright infringement on the plaintiff’s design that it had submitted to the defendant as a proposal to be used on the 250 airtime scratch cards. The court held that the defendant had indeed infringed on the plaintiff’s rights under copyright law because the design they used on their airtime scratch cards was substantially the same as the one submitted by the plaintiff to them as a proposal.
Another exciting area of outdoor advertising is transit advertising. This blogger has previously highlighted the Triple P Media project which involves advertising fused with high-quality custom-made audio and audio-visual content playing in public service vehicles (PSVs) countrywide, in addition to other public places like supermarkets, malls, banking halls, bars, clubs, restaurants etc. There is also the promising innovation by FlashCast Ventures, who have developed a method of scrolling advertisements via LCD displays installed in PSVs. These LCD screens are fitted with global positioning system devices hence messages are programmed to be location specific. This means it is possible to preset a commercial on a supermarket to run when the bus is within its proximity and broadcast special offers, promotions, and goods available. Although geo-local transit advertising may not meet the threshold of absolute novelty required for patent protection in Kenya, there may be other aspects of FlashCast that may be patentable or eligible for industrial design and utility model protection.
At about 14h42 local time on March 9th 2013, the Chairperson of the Independent Elections and Boundaries Commission (IEBC) declared that Uhuru Muigai Kenyatta was the duly elected fourth President of the Republic of Kenya.
In an earlier post titled: “Words for the Unwary: Intellectual Property and Political Parties in Kenya”, this blogger anticipated and discussed a whole host of intellectual property (IP) related issues that have arisen from elections and examined a few examples from Kenya, Ghana and South Africa touching on various aspects of trade marks and copyright.
As the curtain closes on yet another General Election in Kenya, the following five IP issues are noteworthy:
1. The ‘Miguna’ Effect
Once upon a time, Mr. Miguna Miguna was a close aide to Prime Minister Raila Odinga – a key contender in the 2013 Presidential race. However, after a public falling-out with Odinga, Miguna published his explosive memoirs about Odinga titled: ““Peeling Back the Mask: A Quest for Justice in Kenya”. Several copyright issues arose surrounding this book, all of which were canvassed by this blogger here. Regardless of what Miguna’s motives were for publishing this damaging critique of Odinga and his inner circle, what remains clear for our purposes is that copyright protects all original works irrespective of literary quality.
2. Getting politicians to pay for use of music in election campaigns
During any election period, music is an important tool used by politicians to pass their campaign messages, market themselves and entertain crowds. Popular local songs were in high demand by politicians in their roadshows, concerts, rallies and other events countrywide. One record label in Kenya, Grandpa Records is reported to have issued a warning to politicians not to use any of its artists’ music without paying for such use. In carefully worded public statement, Grandpa Records is reported as having said:
“It has come to our attention that politicians across the country are heavily using music owned by Grandpa Records, along with Artist DNA’s back catalogue, for purposes of seeking popularity, self-promotion, and promotion of their agendas. In particular, the songs “Chapa [Fimbo inachapa]”, “Maswali Ya Polisi”, and “Banjuka Tu” are being exploited due to their massive popularity among all Kenyans, to catch their attention, and to sway potential voters. We would like to categorically state that we prohibit all political alliances, parties, and candidates from playing / using our music at political rallies, meetings, and any other forms of exploitation, without written consent from Grandpa Records. We will not hesitate to take legal action against any person or entity that will continue to exploit our intellectual property without our consent”.
This blogger applauds this record company’s pro-active steps to assert and protect its IP rights in the musical works. However the fact remains that policing of rights under copyright, particularly the public performance right can be quite difficult for a single individual or entity working on its own. In this regard, the need for collective management of rights comes squarely into play. There are currently three separate collective management organisations (CMOs) that deal with copyright and related rights in musical works namely, the Performers Rights Society of Kenya (PRiSK), the Kenya Association of Music Producers (KAMP) and ofcourse, the Music Copyright Society of Kenya (MCSK).
As a matter of fact, during the elections, MCSK is reported to have issued a stern warning to politicians to obtain licenses for all public performances and reproduction of musical works during the campaign period. MCSK CEO Maurice Okoth is reported as saying: “We are urging all political parties and any other group holding public events where music is played to apply for a licence and comply with the law”. These licenses are issued based on the collecting society’s tariffs which depend on the nature of the exploitation and the duration. It was reported that one of the political parties, Raphael Tuju’s Party of Action (POA) paid 180,000 shillings for a the annual license for public performance issued by MCSK.
3. Kidero’s copyright faux-pas, FORA’s appropriation of Ubuntu trademark and Balala’s Ferrari-inspired party logo
Dr. Evans Kidero was successful in his bid to be Nairobi’s first Governor. However during his campaign, one of his posters caused some controversy as it was alleged that he had used a photograph that did not belong to him. This blogger discussed the Kidero case here and drew parallels with the well-known Shepard Fairey case involving the Obama “Hope” Poster in the United States. There was no doubt that Kidero was caught redhanded “borrowing” the freelance photographer’s photograph but luckily the matter was settled amicably out of court.
Read the rest of this article over at the CIPIT Law Blog here.
