#ipkenya Weekly Dozen: 20/07

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  • Professor Calestous Juma Memorial Lecture: Public Policy Options for Science and Technology in Africa [Hashtag]
  • CBD and ITPGRFA commit to enhanced cooperation on access and benefit-sharing of genetic resources [Official]
  • Global Innovation Divide: Can Investment In Innovation Bridge The Gap? [IPW]
  • Kenya is seizing the opportunity to protect individuals and their data [Privacy International]
  • Tobacco Plain Packaging: An oncoming trademark dispute in South Africa? [UCT IP Unit]
  • SAMPRA takes on SABC, IMPRA over needletime payout [MiA]
  • Power, Profit and Sport: The Real Legacy of the Football World Cup [Nakueira]
  • PAIPO – Concerns From A Brand Holder’s Perspective [africadotcom]
  • South Africa: Software Developers Pasop/Beware/Qaphela/Hlokomela [A+ Bunch of Lawyers]
  • Universal Music Launches Nigerian Division [Variety]
  • Big Pharma and Predatory Pricing of Birth Control [Bhekisisa]
  • Innovation Prize for Africa 2018: Investing in Inclusive Innovation Ecosystems [ICYMI]

For more news stories and developments, please check out #ipkenya on twitter and feel free to share any other intellectual property-related items that you may come across.

Have a great week-end!

Mobile Developer Claims Copyright over Songa Music App by Safaricom, Radio Africa

Songa by Safaricom SongaMusic Radio Africa Facebook Kenya 27657099_536449873389869_8836242684635148261_n

The recently reported High Court case of Evans Gikunda v. Patrick Quarcoo & Two Others [2018] 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).

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CMOs Behaving Badly: Kenya Featured Alongside EU and US Copyright Collecting Societies

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The raison d’etre of  the collective administration or collective management system in copyright law is to bridge the gap between rights holders and users of copyright works. So, what happens when collecting societies, or as they are commonly called collective management organisations (CMOs), fail to carry out this core function and instead become poster children for corruption, mismanagement, lack of transparency, and abuse of power?

Back in 2013, Jonathan Band and Brandon Butler published an insightful article titled ‘Some Cautionary Tales About Collective Licensing’ which exposed the dark side of CMOs around the world. This blogger was pleased that some of our work in the context of CMOs in Kenya was featured in the article, specifically the on-going wrangles between Music Copyright Society of Kenya (MCSK) and literally everyone else including the copyright regulator, copyright owners, copyright users and even other Kenyan CMOs in the music industry.

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Trade Mark vs Company Name Registration: Innscor Int. Battles Rwandan Companies, Pizza Inn Ltd and Chicken Inn Ltd

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In a recent media report here, the Commercial Court of Nyarugenge in Rwanda has ruled that it will not proceed with a case filed by Innscor International accusing two local companies Chicken Inn Limited and Pizza Inn Limited of trademark infringement in Rwanda. The basis of this ruling was reportedly that Innscor had not demonstrated to the court that it had “legal status according to the law governing registered entities in Rwanda”. Technicalities aside, it is clear that once Innscor produces its certificate of incorporation in court, this case would proceed to consider the merits of Innscor’s claim (as illustrated by the picture above), namely that registration of a name as a company name by entity A should not trump any rights in such a name acquired previously by entity B through trade mark law.

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Copyright Dispute over Safaricom’s “BLAZE” Campaign: Transcend Media Granted Anton Pillers Against Saracen Media

court order transcend saracen blaze kenya safaricom copyright case 2016

“We wish to underscore the importance of fostering creativity through respect and protection of intellectual property rights of others. A nation cannot be built on disregard for originality and promotion of copy cats.” – Excerpt from a press statement by Transcend Media Group.

This blogger has come across the recent case of Transcend Media Group Limited v. Saracen Media Limited & 2 Ors Civil Case No. 3644 of 2016 in which Senior Magistrate E.K Usui has granted temporary injunctive orders sought by Transcend, the applicant against Saracen and the two other respondents. The court granted Anton Piller orders allowing Transcend to enter the premises of the respondents to preserve, seize, collect and keep machines, data, documents and storage material relating to Transcend’s copyright work under the supervision of Kenya Copyright Board (KECOBO) officers. In addition, the respondents have been restrained by the court from any further infringement, alienation, distribution and storage of Transcend’s copyright work pending hearing of the suit.

According to a Business Daily report here, the genesis of this copyright dispute is a Sh208 million tender by Safaricom seeking to procure the services of an advertising agency to handle the mobile network operator’s youth segment brand communication which is now called BLAZE. Transcend submitted its strategy proposal and creative body of works to Safaricom but lost the bid to Saracen. Transcend alleges that Safaricom awarded the business to Saracen and a Company (Fieldstone Helms Limited) owned by former Transcend staff who were involved in Transcend’s bid including the team leader. As a result, Transcend claims that Fieldstone Helms is now “illegally implementing” Transcend’s intellectual property (IP).

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Uncertain Future for Reprographic Rights in Kenya as KOPIKEN Collecting Society Registration Not Renewed

KOPIKEN Launch Collective Management Reproduction Rights Society of Kenya

In a public notice by Kenya Copyright Board (KECOBO) published on February 4th 2016, we are informed that KECOBO at its Board Meeting of January 28th 2016 considered the application for renewal of registration as a collecting society made by the Reproduction Rights Society of Kenya (Kopiken). After consideration of Kopiken’s application, KECOBO decided not to renew Kopiken’s registration. This means that as of January 1st 2016, there is no registered collecting society for reprographic rights in Kenya. In this regard, KECOBO in its public notice states as follows: “KECOBO will be consulting stakeholders of KOPIKEN to determine its future sometimes (sic) in March 2016.”
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Uganda: Court Awards 400 Million Shillings for Contempt of Court in Trade Mark Infringement Suit

MEGHA INDUSTRIES ROYALFOAM MATTRESS SCREENSHOT COMFOAM PASSING-OFF INFRINGEMENT UGANDA

This blogger has come across a recent judgment from the Commercial Division of the Ugandan High Court in the case of Megha Industries (U) Ltd v Comfoam Uganda Limited [2014] UGCOMMC 162 relating to alleged infringement by Comfoam of cover designs on mattresses registered under the trade mark “ROYALFOAM” by the Megha. Coincidentally, many readers of this blog will note that the expression "going to the mattresses" used in the classic 1972 movie The Godfather, is a euphemism that means “going to war”. So, Megha went to war over its mattresses and Comfoam admitted to passing off Megha’s goods so the parties entered into a consent judgment on 03.02.12, which was sealed by the court on 17.02.12. By the consent decree, a permanent injunction was issued restraining Comfoam, its agents or servants from passing off its goods as Megha’s ROYALFOAM brand of mattresses. The injunction also restrained Comfoam from further producing and or manufacturing mattresses with the infringing mattress cover design the subject of the suit. In the course of the court case, Megha was able to successfully prove that Comfoam’s mattress cover designs were similar to that of Megha’s mattress cover design.

However, in the present case, Megha contended that in total disregard of the consent judgment, Comfoam has continued to manufacture the mattresses using covers similar to its own. Megha further pointed out that an interim order issued by court on 08.07.14 restraining Comfoam from continued passing off of its mattresses as those of Megha had been disregarded hence its prayer that Comfoam be found in contempt of court. In its defence, Comfoam admitted that parties reached a settlement and entered a consent judgment and in obedience to the judgment immediately stopped manufacturing the offending mattresses, changed their designs and registered Trade Marks on them and are lawfully producing mattresses with their covers under the lawfully registered trademarks and are therefore not in contempt of court orders. Comfoam argued that the order did not prohibit them from manufacturing mattresses per se but prohibited them from manufacturing or selling or passing off its mattresses as those of Megha.

In arriving at its finding that Comfoam were in contempt of court orders, the court observed that the mattresses covers by Comfoam were very similar to those of Megha in design and color and the only difference is that Comfoam’s covers bore its own company name. The court’s ultimate decision was as follows:

The application is allowed for all the reasons set out herein and the following orders are made:-

1. A suspended sentence of six months committal is to be meted out to the Directors of the Respondent Company, if the acts that were forbidden by court in the consent order persist.

2. Exemplary damages of shs. 300,000,000/- are awarded to the Applicant Company with payment of interest at court rate from date of this ruling till payment in full.

3. The sum of shs. 100,000,000/- is awarded against the Respondent as a penalty for contempt of court orders in Civil Suit 269/2011. The sum is to be deposited in court.

4. The mattresses with the infringing cover design shall be removed from the market for destruction with the assistance of police following the procedures set out in the Trade Marks Act, upon failure of which a writ of sequestration will issue.

5. Taxed cost of the application are also granted to the Applicant.

A copy of the full judgment is available here.

Publicly Funded Intellectual Property: Why Kenya Needs a Bayh-Dole Law and Lessons from South Africa

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“Every Kenyan is an inventor.” – Anon.

With the enactment of the Science, Technology and Innovation (ST&I) Act 2013 (discussed by this blogger here), it is imperative that the central government legislates on the management of intellectual property (IP) emanating from publicly financed research and development (R&D). Such legislation would ensure that IP from publicly funded R&D is commercialized for the benefit of all Kenyans in line with the State’s IP mandate under Article 40(5) of the Constitution. This is also consistent with an increasing awareness in Kenya of IP as an instrument for wealth creation.

In the context of publicly funded research, institutions such as universities can be encouraged through an enabling legal framework to protect and commercialise the fruits of their research. Such a legal framework would, among other things, clearly delineate the rights and obligations of the public funders and the researchers. In support of such legislation, this blogger submits that Kenya’s IP legal framework must reflect a manifest desire to transition from a resources-based economy to a knowledge-driven economy.

Read the rest of this article here.