High Court Declares Appointment of Anti-Counterfeit Agency Inspectors Unconstitutional

anti-counterfeit-agency-aca-mombasa-ask-show-2015-2016-kenya

“In my view fresh appointments to the positions of inspectors must be open to the public and such positions must be advertised. It therefore does not matter whether the interested parties were handpicked by the Board or Mr Igathe [Former Chairman of ACA Board of Directors]. The era of handpicking persons and appointing them as public officers was in my view buried with the retired Constitution and has no place in the current constitutional dispensation.” – Odunga J at para. 39.

In a recent judgment in the case of Republic v Anti-Counterfeit Agency Ex parte Moses Maina Maturu [2016] eKLR, the High Court quashed Gazette Notice No. 9451 published on 24th December, 2015 appointing several individuals (enjoined in the suit as interested parties) as inspectors of Anti-Counterfeit Agency (ACA). According to ACA, the present suit was a scheme to paralyze its operations instigated by persons who have been behind several court cases, which ACA has been forced to defend thereby directing its resources away from the fight against counterfeiting.

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Kenya Copyright Board Suggests Guernsey Approach to Image Rights Protection

Kenya Copyright Board Publication Copyright News Issue 18 2015 Cover

The most recent edition of Kenya Copyright Board (KECOBO) newsletter (cover pictured above) focuses on photography and image rights. A copy of the full Issue 18 is available here.

In the lead article starting on page 4 by KECOBO Executive Director, a compelling case is made in favour of specific legal protection of image rights, particularly in the case of celebrities. The article uses the oft-cited case of Dennis Oliech v. EABL (previously discussed here) to illustrate the limitations of existing intellectual property (IP) regimes in cases of commercial appropriation of one’s personality and/or image.

The article reads in part as follows:

“The use of images and personality rights is gaining currency and there is need to ensure that the same is well regulated and third parties do not take undue advantage of the commercialisation of the same. Guernsey provides a good example and maybe we should follow suit.”

This view from the Copyright Office begs the question: will Kenya be better off with a specific law on image rights like Guernsey? This blogger argues that the answer must be “No”.

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Blind Opposition to Caller Ringtone Deal between Safaricom and Collecting Societies: High Court Case of Irene Mutisya & Anor v. MCSK & Anor

Robert Collymore CEO Safaricom

This blogger has recently come across Nairobi High Court Civil Case No. 262 of 2015 Irene Mutisya & Anor v. Music Copyright Society of Kenya & Anor. In this case Mutisya and another copyright owner Masivo have filed suit against Music Copyright Society of Kenya (MCSK) and mobile network operator Safaricom Limited for copyright infringement. The copyright owners filed an urgent application on 30th July 2015 for a temporary injunction to restrain Safaricom from remitting license fees to MCSK pursuant to a recently concluded license agreement for caller ring-back tones (CRBT) made available through Safaricom’s Skiza platform. The copyright owners also asked the court to restrain both Safaricom and MCSK from implementing the CRBT License Agreement pending the hearing of the application.

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Nigeria’s Court of Appeal Attempts to Clarify Law on Copyright Collective Management

mcsn-coson-nigeria-music-copyright

This blogger has recently come across a judgment by the Court of Appeal in Nigeria in the long-running case of MCSN v. Details (Nig.) Ltd (CA/L/506/1999). In this case an exparte order had been obtained by MCSN against Details for unauthorized use of musical works. Details raised objections on the ground that MCSK lacked locus standi to bring the action. Details noted that since MCSN had provided evidence that it represented more than two million artistes, it was practically performing the functions of a collecting society and therefore required the approval of the Nigerian Copyright Commission (NCC) to carry on the activities of a collecting society.

MCSN denied suing as a collecting society but rather as an owner, assignee and exclusive licensee as contemplated in Section 15 of the Act. Having considered all the evidence, inclusive of the deed of assignments executed with members of MCSN which clearly spelt out that the activities to be undertaken were those within the purview of the attributes of a collecting society, the court ruled that: “it is for the foregoing reasons that I have come to the inexorable conclusion, after deep reflection, that the plaintiff is a collecting society. Not having been registered pursuant to Section 32B(4) of the Copyright Act, it cannot be permitted to operate as such body. To do so would be tantamount to subverting not only the letter but also the spirit of the copyright laws of this country”.

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High Court Suspends New Tobacco Packaging Regulations: Ruling in British American Tobacco Kenya Ltd v. Cabinet Secretary for Health & 2 Ors

British American Tobacco Kenya

Previously, this blogger discussed here the Tobacco Control Regulations 2014 made by the Cabinet Secretary for Health published under Legal Notice No. 169 of 2014 in the Kenya Gazette Supplement 161, Legislative Supplement No. 156 of 2014 and scheduled to take effect on 1st June 2015. In a recent development, the High Court has delivered a ruling in the case of British American Tobacco Kenya Ltd v Cabinet Secretary for the Ministry of Health & 2 others [2015] eKLR ordering that the implementation of these Regulations be temporarily suspended.

British American Tobacco (BAT), the Petitioner, moved the Constitutional and Human Rights Division of the High Court under certificate of urgency for various conservatory orders staying the coming into force and implementation and/or operation of the Tobacco Control Regulations 2014. Among BAT’s list of grounds for seeking the conservatory orders, there was a claim that the implementation of certain requirements in the Regulations would result in an infringement of intellectual property (IP) rights held by BAT.

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Inching Closer to Plain Packaging: Pictorial Health Warnings and Tobacco Trade Marks in Kenya

James Macharia Health Cabinet Secretary Kenya Tobacco

This blogger has come across Legal Notice No. 169 dated December 5, 2014 which states that the Cabinet Secretary for Health (pictured above), in exercise of the powers conferred by section 53 of the Tobacco Control Act, 2007 has made the Tobacco Control Regulations, 2014 which will come into operation six months from December 5, 2014. A copy of the Legal Notice and the Regulations are available here and here respectively.

Section 8 of the Regulations, whose short title reads: “prohibition on certain product descriptions”, is noteworthy and states as follows:

“8. A person shall not manufacture, sell, distribute, or import a tobacco product, for sale in Kenya, whose package carries a name, brand name, text, trademark or pictorial or any other representation or sign which suggests that the tobacco product is less harmful to health than other tobacco products.”

This section must be read with other sections in Part II of the Regulations on “Packaging and Labeling”:

3. (1) A person who manufactures, sells, distributes or imports a tobacco product shall ensure that every package containing the tobacco product bears warning labels and information required under section 21 of the Act and specified in the Schedule to the Act and the corresponding pictures and pictograms set out in First Schedule.

(…)

4. (1) No person shall manufacture, sell, distribute, or import a tobacco product, device or any other thing that is intended to be used to cover, obscure, mask, alter, or otherwise detract from the display of specified health warnings and messages including pictures and pictograms under the Act or these Regulations.

(…)

5. Where the health warnings and messages including pictograms that are required to be printed on packages are likely to be obscwed or obliterated by a wrapper on the package, the manufacturer, seller disfibutor or importer of the tobacco product shall ensure that the health warnings and messages shall be printed on both the wrapper and the packet.

(…)

6. (1) The manufacturer, seller, distibutor or importer of a tobacco product shall ensure that the specified health warnings and messages including pictograms required under these Regulations are rotated in accordance with section 21 (3) of the Act.

(…)

7. (1) The health messages required under these Regulations on all packages shall be in the form of a text message specified in the Schedule to the Act and a prescribed pictorial message set out First Schedule.

(…)

The Regulations appear to be made in compliance with the World Health Organisation Framework Convention on Tobacco Control (WHO FCTC) reaffirms the right of all people to the highest standard of health and represents a paradigm shift in developing a regulatory strategy to address addictive substances.

The Convention itself does not deal with intellectual property associated with tobacco packaging, particularly trademarks. Of relevance for this discussion is Article 11, which requires of countries to adopt effective measures to ensure:
(i) that tobacco product packaging and labelling do not promote a tobacco product by any means that are false, misleading, deceptive or likely to create an erroneous impression about its characteristics, health effects, hazards or emissions; and
(ii) that any outside packaging and labelling should carry health warnings that should be 50 per cent or more of the principal display areas.

And then there are Guidelines. These provide that countries “should consider adopting measures to restrict or prohibit the use of logos, colours, brand images or promotional information on packaging other than brand names and product names displayed in a standard colour and font style.”

In this connection, the First Schedule of Kenya’s new Tobacco Regulations contains a “list of prescribed health warnings and messages including corresponding pictograms” which must be displayed on every package. These include the following:

tobacco regulations kenya pictorial warning 4

tobacco regulations kenya pictorial warning 3

tobacco regulations kenya pictorial warning 2

tobacco regulations kenya pictorial warning 1

To the relief of Big Tobacco, Kenya seems to have decided against requiring plain packaging: black and white or two other contrasting colours; nothing other than a brand name, a product name and/or manufacturer’s name; and no logos.

Be it as it may, this blogger submits that these Regulations will have the drastic impact of removing the last space for tobacco advertising (i.e. the packaging), reducing the incidence of smoking and thus diminishing the industry’s power to recruit new smokers. Readers of this blog will recall our previous article here on the constitutional and intellectual property arguments around tobacco plain packaging.

Image Rights, Privacy and Related Rights in the Workplace: High Court Case of Sikuku v. Uganda Baati

Circled: Sikuku, maybe.

Circled: Sikuku, maybe.

“The persons who created and did the video shooting or who employed the person who carried out the work of shooting the photos and video is/are the authors or author of the works. The exact relationship between an author and a person having neighbouring rights has to be clear and not hazy. A photographer who films activity in a market might not require permission of everybody in the market to publish or use the works.” – Madrama J. at page 15.

This blogger has come across a recent High Court decision of Sikuku v. Uganda Baati HCCS No. 0298 of 2012 before the very able Honourable Justice Mr. Christopher Madrama, whose decisions we have previously discussed here and here. A copy of the present judgment is available here. Sikuku, a long-time employee of Uganda Baati claimed that the latter was unfairly benefiting from the use of his images in Uganda Baati advertisements presented in both photographic and audio-visual forms to the public. Sikuku sought an order for the payment of Uganda shillings 150,000,000/= as “usage fees” from Uganda Baati. Sikuku contended that his employer had infringed his rights under the Uganda Copyright and Neighbouring Rights Act as well as the Constitution of Uganda. The court dismissed Sikuku’s entire case against Uganda Baati. The learned Madrama J. found that Sikuku does not qualify to have neighbouring rights as protected by the Copyright and Neighbouring Rights Act 2006. Further, the court found that Sikuku has not proved unlawful interference with his constitutional right of privacy under article 27 by Uganda Baati.

This blogpost discusses the Uganda High Court’s treatment of the intersecting issues of image/privacy rights, and neighbouring rights as they arose in the Sikuku case. Ultimately, this blogpost finds that this case is instructive for participants both behind and infront of the camera lens.

It is not disputed that Sikuku appears in photos used in Uganda Baati’s in-house SAFAL magazine and the Contractors Year Planner. It is also not disputed that Sikuku appears on audiovisual adverts commissioned by Uganda Baati which were broadcast on several television stations including WBS and NTV. However the court had to determine whether or not these “appearances” amounted to “performances” as defined in copyright law and by extension, whether Sikuku fell within the definition of a “performer”.

A “performer” under section 2 of the Uganda Copyright and Neighbouring Rights Act is defined to include an:

“actor or actress, singer, musician, dancer or other person who act, sing, deliver, declaim, play in, interpret, or otherwise perform literary or artistic works or expressions of folklore.”

Madrama J. in his judgment states that Sikuku cannot be a “performer” under the Act. His reasoning is thus:-

“The evidence demonstrates that the Plaintiff [Sikuku] was going about his business when he was filmed and photographed. He was not required to pose for the photograph or for the filming though they had been given new uniforms for the occasion. He was filmed and photographed in the ordinary course of his performance as a worker. (…) From the definition under the Copyright and Neighbouring Rights Act the Plaintiff is not an actor because he was filmed and photographed in the ordinary course of his work as an Employee of the Defendant. (…) the Plaintiff is not a performer whose action was deliberate so as to be a necessary ingredient of the works complained about and which ought to be paid in terms of performance fees (…) It is debatable whether the advertisement prominently portrays the Plaintiff’s photo or actually displays the Defendant’s products together and incidentally with the workers engaged in the work of production of the products using the machinery. The plaintiff is not at all the major or main feature of the advertisement. (…) The Plaintiff is not an artist and he was not bringing special skills so as to properly present the Defendant’s products. He was merely going about his business when he was filmed.”

On this point, this blogger concurs with the judge’s careful consideration of the definition of “performer”. Sikuku’s role in the audio-visual work cannot be likened to that of an extra in a movie or other production. While it is clear that Sikuku may fall within the category of “other person who acts, sings, delivers, declaims, plays in, interprets, or otherwise performs”, the missing part appears to be the subject matter of the “performance”. In the case of an extra, there is a script and an assigned role given to each “performer” such as “workman #1 operating heavy machine”, which would appear in the movie credits at the end of the movie.

On the issue of image/privacy rights, the court provides a useful analysis of the privacy clause in the Constitution of Uganda, which closely mirrors the privacy article in Kenya. In finding that there was no infringement of privacy rights, the court correctly reasoned as follows:-

“The court should consider whether photos of Employees taken in the course of their employment showing them at work cannot be used by the Employer for purposes of advertisement without consent or payment of consideration. The plaintiff should demonstrate that the filming or photo was taken in a private moment such us when eating or resting. Such a conclusion should be based on the terms of the contract. In the absence of the terms of any contract excluding an Employer from publishing photos and audio visual works of products including members of staff in a factory carrying out their work, the Plaintiff has no case presented before the court. As far as the rights to privacy is concerned, someone who works in a factory as contained in exhibit P1 and P2 cannot claim a right to privacy. The factory is owned by the Defendant and the Defendant can bring in people at any time to inspect the factory thereby excluding the rights to privacy.”