High Court Affirms Role of Collecting Society in Copyright Enforcement: Case of Ruma Lodge v. MCSK

This blogger has recently come across a recent judgment of the High Court in the case of Maurice Owino Onyango v Music Copyright Society of Kenya [2015] eKLR. In this case, Music Copyright Society of Kenya (MCSK), the sole collecting society or collective management organisation (CMO) for authors, composers and publishers of musical works, was the respondent in an appeal in the High Court challenging the decision of the Magistrates’ Court in a case filed against MCSK for malicious prosecution. Majanja J sitting in the High Court found in favour of the CMO and upheld the judgment of the lower court.

A copy of the judgment is available here.

Establishing Copyright Infringement: High Court Ruling in Nonny Gathoni v. Samantha’s Bridal Wedding Show Case

This blogger has come across a recent ruling by the High Court in Nonny Gathoni Njenga & anor v. Catherine Masitsa & 2 ors Civil Case No. 490 of 2013. In this case, the plaintiffs (Nonny Gathoni and Jane Odewale) applied to the High Court for orders of temporary injunction restraining the Defendants (Catherine Masitsa, Standard Group Ltd and Bauhaus Ltd) from infringing in any way on the plaintiff’s rights under copyright in the literary work registered as “Weddings with Nonny Gathoni” and later televised as “The Baileys Wedding Show with Noni Gathoni”. In particular, the plaintiff sought to have the court restrain the defendants from reproducing, adapting, communicating to the public or broadcasting the whole work or a substantial part thereof either in its original form or in any form recognisably derived from the original literary work.

A copy of the ruling is available here.

According to the learned High Court Judge Ogolla J the main issue for determination is whether the Defendants have infringed on the Plaintiffs’ literary work (as registered at KECOBO and evidenced by a Certificate of Registration issued by KECOBO and presented in court). The learned judge rightly singles out the core contention of the plaintiffs which is that although both parties had their own wedding show, the defendants changed the previous running order of their show by allegedly copying the running order expressed by the plaintiffs in the literary work “Weddings with Noni Gathoni”. The court ultimately finds in favour of the plaintiffs and allowed the orders sought for temporary injunction.

Copyright Society Successfully Appeals Malicious Prosecution Suit

This blogger has recently come across a recent judgment of the High Court in the case of Music Copyright Society Of Kenya v Tom Odhiambo Ogowl [2014] eKLR. In this case, Music Copyright Society Of Kenya (MCSK), the sole collective management organisation for authors, composers and publishers of musical works, lodged an appeal in the High Court challenging the decision of the Magistrates’ Court in a case filed against MCSK for malicious prosecution. Majanja J sitting in the High Court found in favour of the CMO and set aside the judgment of the lower court. A copy of the judgment is available here.

On January 17, 2011, MCSK moved to the Ogwol’s premises at Sofia Estate, Homabay Town and impounded his electronic equipment on the ground that he was operating a business without a public performance licence issued by MCSK. On the next day, Ogwol was arraigned and charged at the Homabay Senior Residents Magistrates Court with the infringement of copyrighted musical works contrary to section 38(2) as read with section 38(7) and 38(8) of the Copyright Act, Act No. 12 of 2001. According to MCSK, its officers visited Ogwol’s premises and found that he was operating a hall where local and international videos were being shown and played to the paying public. MCSK alleged that Ogwol did not display or produce a Public Performance Licence issued by MCSK permitting him to relay copyrighted works in his premises. When confronted by MCSK officers accompanied by the Police, Ogwol is said to have “vanished from the premises” whereupon his electronic gadgets were impounded and subsequently this caused him to be charged. After the hearing of the prosecution case, the presiding magistrate found that the prosecution had not established a prima facie case and that Ogwol had no case to answer consequently he was acquitted under section 210 of the Criminal Procedure Code (Chapter 75 of the Laws of Kenya).

Following his acquittal, Ogwol instituted civil proceedings against MCSK for malicious prosecution. According to Ogwol, his arrest and arraignment in court at the hands of MCSK was actuated by malice and that as a result of the trial, he incurred expenses. In making its judgment in favour of Ogwol, the court found that: “[the] defendant [MCSK] and the agents [of] the 2nd defendant [Attorney General] by insisting to charge the accused yet no artistic author was identified fell short of the statutory obligation. By doing this they had no probable and reasonable cause for arresting and charging the accused. I further find that malice was proved.”. The Magistrate awarded Ogwol the sum Kshs. 200,000.00 as general damages against MCSK.

Aggrieved by this judgment in the Magistrates’ Court, MCSK filed the present appeal in the High Court. MCSK’s main contention was that the learned magistrate erred in law and in fact by making a finding on liability for malicious prosecution when none was proved. In particular, MCSK’s contention was that Ogwol had failed to prove that there was no reasonable and probable cause in instituting the criminal proceedings therefore judgment ought to have been entered against him in the lower court. In this connection, counsel for MCSK submitted that the reason for Ogwol’s arrest and charge was that he did not have or display a valid public performance licence from MCSK, a fact which Ogwol did not dispute. As a duly registered CMO under section 46 of the Copyright Act, it was submitted that MCSK went to Ogwol’s premises in order to enforce compliance with the Copyright Act, particularly the provisions of section 35 that all public performances of music required a licence which licence Ogwol did not have. Therefore MCSK contended that there was no proof of malice and that mere acquittal of the respondent was insufficient to prove malice.

In a concise well reasoned judgment, High Court Justice Majanja finds favour with MCSK’s arguments and dismisses the judgments of both magistrates in the criminal and civil suits. Here are some of the poignant findings made by the learned judge on appeal:

“…Whether there was reasonable and probable cause is to be determined from the nature of the charge preferred by the police. The respondent [Ogwol] was charged with the infringement of copyrighted musical works contrary to section 38(2) of the Copyright Act (….)

In essence, the provision makes it an offence to cause the performance of a literary, musical or audio visual work protected by copyright in public where such a performance constitutes an infringement. While displaying a licence is one way of showing that owner of the premises has permission to cause the copyrighted work to be performed publicly, it is by no means necessary as the accused is entitled to show he acted in good faith and had no reasonable ground for supposing that copyright would or might be infringed.

With profound respect to the learned magistrates who dealt with the criminal and civil case, the offence had nothing to do with membership of a copyright society. The offence was prosecuted by the police and it applies in respect of all and any works where copyright subsists. A Collection Society, such as MCSK, is charged with collection of royalties on behalf of its members and safeguarding its members’ interests by ensuring that persons who play music publicly are duly licenced and if they are not, they are prosecuted and that is why lays a complaint with the police. It is entitled to lodge complaints with the police where reasonable grounds exist.

On the issue whether there was reasonable ground for belief that the respondent had violated section 38(2) of the Copyright Act, the respondent admitted that he was operating a business showing football matches to the public. He admitted that he was aware that he had to have a licence and to display it. The showing of football matches to the public is an “audio visual work” under the provisions of section 38(2) of the Act. A perusal of the proceedings in the criminal case show that the respondents shop was showing movies and playing music in the background. In view of the clear admissions by the respondent and the evidence, I find that there was reasonable and probable cause that that an offence had been committed under section 38(2) of the Act and the MCSK officers were entitled to lay a complaint against the respondent.”

Finally, the learned judge finds that the mere fact that a person has been acquitted of the criminal charge does not necessarily connote malice on the part of the prosecutor. Therefore Ogwol had no basis in law to claim that MCSK acted with malice by causing his arrest and arraignment in court.

This blogger is happy that MCSK elected to thoroughly litigate this matter and obtain a judicial pronouncement which ought to guide future cases in this area of copyright law.

Editor’s Note: At the time of this publication, this blogger served as MCSK General Counsel. All views expressed herein are his own and not those of MCSK

Test Case on Liability for Online Copyright Infringement: Music Industry Players Sue ISPs, Telcos and Government

This blogger has recently come across the case of Bernsoft Interactive & 2 Ors v. Communications Authority of Kenya & 9 Ors Petition No. 600 of 2014, a recently filed constitutional petition seeking injunctive orders to compel internet service providers (ISPs) in Kenya to block websites engaged in piracy and declaratory orders that the State has failed in its constitutional and legal obligations to protect the intellectual property rights of Kenyans. The state organs that are targetted in this Petition including the telecommunications regulator, Communications Authority of Kenya; the copyright office, Kenya Copyright Board and the principal legal advisor to the Government, the Office of the Attorney General. A copy of the petition is available in .pdf here.

The major ISPs (in terms of the number of subscribers in Kenya) have all been enjoined in the suit including: Safaricom, Airtel, Jamii Telecom, Wananchi Group, Access Kenya, Liquid Telecom and Telkom Kenya.

The petitioners cite the infamous site: http://www.wapkid.com which allows users to illegally download sound recordings and audio-visual works online. The ISPs are accused of allowing its subscribers to use its internet networks to illegally acquire copyright works through sites such as wapkid. In this connection, it is alleged that the ISPs allow the transmission in digital form, these copyright protected music through their networks and into, and out of, the personal computers, phones and various gadgets that are used for online copyright piracy.

To illustrate its claims, the Petition submits into evidence the above screenshot of a Wapkid page linking to the location where one of the Petitioner’s members, Sauti Sol’s musical work known as “Sura Yako” is hosted. Through the “premium” or “free” options on the wapkid site, the user can download the unauthorized copy of Sauti Sol’s audiovisual work to his/her computer or phone or tablet for unlimited viewing or further distribution.

The matter came up for hearing before High Court Justice Lenaola earlier this month.

This blogger commends the petitioners for their efforts and will be closely following the developments in this case.

Regulation of Online Video Content, Territoriality and Copyright

This month South Africa’s top comedian Trevor Noah announced that he will be joining the award-winning late-night satirical news show, “The Daily Show With Jon Stewart” aired on US cable network, Comedy Central (CC). For those who would want to enjoy this Emmy and Peabody Award-winning television show on demand, there is always “Hulu”, a leading online video service. However for those accessing Hulu outside the US, you are likely to receive the following notice: “We’re sorry, currently our video library can only be streamed within the United States. For more information on Hulu’s international availability, click here.”

A similar service to Hulu called Netflix has been the subject of conversation in South Africa in a recent article here by TechCentral South Africa titled: “DStv wont sue Netflix users” then later changed to “DStv to launch Catch Up Plus”. The relevant portion of the article reads: “[DStv Digital Media CEO John] Kotsaftis says it’s not clear if it’s legal or not for South Africans to watch Netflix and similar services. What is clear, he says, is that these companies are breaking the law when they allow access to services to consumers in markets for which they haven’t purchased content distribution rights.” In this regard, many Kenyans may ask: “when you purchase a US virtual private network (VPN) to by-pass Netflix or Hulu region locks to watch shows and movies that are supposed to only be available to Americans, is that copyright infringement?” This blogpost explains why this question must be answered in the affirmative.

Read the rest of this article here.

Unanswered Copyright Issues as Musician JB Maina Agrees to Sh15.5m Settlement with Safaricom

Media reports here and here indicate that musician JB Maina has accepted Safaricom’s out-of-court settlement offer of KES 15.5 Million in the case of John Boniface Maina v Safaricom Limited [2013] eKLR. To recap briefly, the JB Maina case has been in court since 2010 when Safaricom was accused of copyright infringement in respect of musical works of JB Maina alleged to have been uploaded on Safaricom’s portals, particularly its caller ring back tone service known as ‘Skiza’.

Prior to the reported settlement, the court had already granted JB Maina a temporary injunction restraining Safaricom from dealing in JB Maina’s works, in addition to awarding JB Maina the costs of the motion to be paid by Safaricom. Thereafter the court allowed JB Maina’s application for Anton Piller orders against Safaricom. These orders allowed JB Maina to enter Safaricom’s premises, inspect its machines, take records, make copies of records for purposes of gathering and preserving evidence necessary to prove his claim of copyright infringement. The final straw in the JB Maina case was an application filed by JB Maina for Safaricom Chief Executive Officer to be held in contempt of the anton piller orders issued by the court and committed to civil jail. This move prompted Safaricom to seek the leave of the court to allow for an out-of-court settlement of the suit with JB Maina.

With above information in mind, it comes as no surprise that Safaricom would be keen to pursue and conclude an out-of-court settlement in this matter with JB Maina. However this blogger argues that this settlement has left several critical issues unanswered:

1. The Separation of Infrastructure Provision from Content Provision

In this regard, Safaricom’s position has always been that it is an infrastructure provider that enables rights owners and their licensees to avail their music to end users. In the present case, the licensees are Content Service Providers (CSPs) who are duly licensed by the relevant collective management organisations (CMOs) to avail music. In this regard, Safaricom maintains that where licensed CSPs provide music using Safaricom’s infrastructure, it is enough that the CSPs produce to Safaricom all the required copyright licenses issued to it by the CMOs. It is on this basis that Safaricom enters into Content Provision Agreements (CPAs) with CSPs whereby the latter undertake to obtain all necessary licenses, rights of use, assignment and approvals from any relevant authorities and copyright owners for the provision of the Content and ensure that such licenses and approvals are updated and valid throughout the term of the CPAs. Critically, the CPAs state that CSPs undertake to defend and/or settle all intellectual property (IP) infringement claims brought against Safaricom and keep the latter fully indemnified.

In light of the above, Safaricom argue that as an infrastructure provider, it need not be licensed by CMOs or rights owners since the CSPs availing the music to end users are already licensed by CMOs and/or rights owners.

However, this blogger contends that the above argument is problematic for two main reasons, namely it betrays the widely accepted understanding of “communication to the public” and “infringement” under domestic and international copyright laws. In this regard, it is submitted that both functions of infrastructure provision and content provisions entail an exploitation of the right of communication to public and/or making available as defined under Article 8 of the WIPO Copyright Treaty and Section 2 of the Kenya Copyright Act. With regard to the issue of infringement, section 35 clearly contemplates two levels of infringement namely primary and secondary or direct and indirect. It is submitted that Safaricom may be liable for secondary or indirect copyright infringement as an infrastructure provider since it causes to be done or furthers the doing of an act which is controlled by the rights owners.

2. The Role of Content Service Providers

Safaricom advances two main reasons why it is averse to dealing directly with rights owners like JB Maina. Firstly, it argues that under the Kenya Information and Communication Act (KICA) read together with the Unified Licensing Framework gazetted in 2008, only CSPs who hold a current license from the Communications Authority of Kenya (CAK) are mandated to provide music to end users. Therefore Safaricom would only deal with CSPs and/or rights owners once they are duly licensed by CAK. Secondly, Safaricom appears to suggest the current arrangement of CSPs as middle-men is consistent with the provisions of the Kenya Competition Act i.e. preventing the monopolisation of content provision by a handful of CMOs or rights owners.

This blogger argues that this arrangement do not always work to the advantage of CMOs and rights owners since the CSPs are at liberty to under-state royalty payments received from Safaricom. Therefore, rights owners like JB Maina and CMOs like MCSK, KAMP and PRiSK must insist on dealing directly with Safaricom or at least having tripartite agreements where the copyright owners can be on the same level as the CSPs.

It is clear that JB Maina’s case raised important issues regarding rights owners that are not members of any of the music CMOs. However there are two other likely scenarios that would require Safaricom to deal directly with a rights owner. Firstly, where the rights owner is a member of a CMO but has selectively limited its assignments to the latter and/or the works to be administered by the latter. Secondly, where the rights owner has assigned all rights exclusively to both the CMOs and the CSPs (A frequent occurence!).

Them Mushrooms Band Awarded 3 Million Shillings in Copyright Suit Against Royal Media Services

The judgment in John Katana Harrison v. Royal Media Services Ltd 6161 of 2009 sets an important precedent in the area of copyright law in Kenya. It is trite law that the right to authorize the inclusion of any musical works in an audio-visual work or a broadcast, which is known as a synchronization right, can only be authorised/licensed by the respective foreign or local copyright owners.

In reality, this blogger has observed with alot of concern that there are a number of production studios, broadcasters, marketing and advertising companies in Kenya that include musical works in their productions. The most common examples are the Wedding Shows that are aired on local television networks. These shows include a whole repertoire of well-known local and foreign musical works from various genres. Following the judgment in the Katana case, this blogger would advise all parties concerned in the synchronisation of musical works to ensure that express consent has been duly obtained and where necessary, the desired license agreements are in place.

Read the full article here

Uganda: Is it copyright infringement to use a politician’s speeches as ringtones?

New Vision in Uganda has reported that ex-Kampala Mayor Al Haji Nasser Ntege Sebaggala is suing leading telecommunications company MTN Uganda for copyright infringment by using his speech recordings as ringtones. It is reported that MTN has acknowledged that the recording is indeed Sebaggala’s voice but contends that he did not make the recording nor did he acquire any copyright for the speeches.

Sebaggala’s demands:
– all the proceeds collected by MTN in relation to the ringtones. In this connection he is reportedly demanding an audit to ascertain the money collected by MTN.
– a 20% monthly interest on the ascertained audited figure above, together with a 20% monthly interest on damages and costs of the suit, from the date of judgement until full payment.

MTN’s defences:
– Ssebaggala is not the author or the physical person who created work of the sounding recording or ringtones, and as such is not entitled to protection under the copyright law.
– The ringtones were procured and uploaded by SMS Media Limited, which signed a service provision agreement with MTN.
– Sebaggala’s speeches were publicly broadcast as current news of public interest and political events.

Comment:

A ringtone is defined as a sound file that is played by a cellular or a mobile phone. Copyright law would therefore recognise SMS Media Limited as the copyright owner of the ringtone.

However under copyright law, the act of Sebaggala reading his speeches is considered a performance and the law recognises performers’ rights as one of the types of related rights under copyright.

Therefore if Sebaggala’s case were being heard in Kenya, the court would consider Section 30 of the Copyright Act (as recently amended) which lays down the exclusive rights of a performer such as Sebaggala:

Subject to section 30 of this Act, a performer shall have the exclusive right to carry out any of the following acts:

(f) distribution of a fixation of his performance or copies thereof, to the public.
(g) the making available to the public of his fixed performance, by wire or wireless means in such a way that members of the public may access them from a place or a time individually chosen by them. [Emphasis added]

Furthermore, Section 30A of the Copyright Act creates a right of equitable remuneration for performers therefore Sebaggala would be entitled to compensation:

30A (2) If a fixation of a performance is published for commercial purposes or a reproduction of a fixation of a performance is used for broadcasting or other communication to the public, or is publicly
performed, a single equitable remuneration for the performer shall be paid by the user to the collective management organization.
(3)The right of equitable remuneration under this section shall subsist from the date of publication of the sound recording or fixed performance until the end of the fiftieth calendar year following the year of publication, provided the sound recording or fixed performance is still protected under section 28 and 30.
(4) For the purposes of this section, sound recordings and fixations of performances that have been made available by wire or wireless means in such a way that members of the public may access them from a place and a time individually chosen by them shall be considered as if they have been published for commercial purposes. [Emphasis added]

Therefore under the Copyright Act of Kenya, Sebbagala would have a strong case for copyright infringement of his neighbouring rights as a performer. Uganda’s Copyright Act of 2006 also provides under section 22 that a performer has the right to authorise the following acts:
– the direct or indirect reproduction of a fixation of his or her performance in manner or form;
– the distribution or making available to the public of the original or copies of the fixation of his or her performance through sale or other transfer of ownership.

However unlike in Kenya, the Uganda Copyright Act does not provide a right to equitable remuneration for performers.

Another ground upon which Sebaggala can seek relief is image rights. The ringtones were made from the sound of his voice, which is a part of his likeness therefore any attempt to appropriate any aspect of a person’s likeness would be actionable as unjust enrichment. IPKenya will be keenly following this case and is confident that the IP-friendly Judge Madrama will take this opportunity to provide useful jurisprudence in this rather obscure area of law.

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.

Election Campaigns and Copyright Infringement

It’s election year again for both Kenya and the United States. And with election year comes campaign posters, slogans, colours and logos. Today IPKenya’s attention was drawn to an interesting case of appropriation involving the photograph of a well-known freelance photographer that was used in a gubernatorial candidate’s campaign poster.

Evans Kidero, a rising public figure, is running for Governor in this year’s elections. On his official facebook page, the following poster is at the centre of the controversy:

Mutua Matheka, better known on twitter as “@truthslinger“, is passionate about photography and has taken amazing shots of people, places and things all over Kenya. Take a look at one of his photos of the Nairobi sky-line:

It is immediately apparent that the skyline in Kidero’s poster is identical to that in Matheka’s picture. Initially it was “@Mwirigi” that spotted the infringement and alerted Matheka (“@truthslinger”) about it:

This Matheka – Kidero story reminded me of the copyright dispute over Obama’s “hope” poster in the last US elections. But the major difference is that unlike the AP, Matheka is in a much stronger position to claim copyright infringement of his work. In other words, Fairey’s poster would pass the subjective and objective tests for copyright infringement, while the Kidero’s poster obviously wouldn’t as the Matheka’s photograph was used without any modification or transformation, other than some cropping.

Although Fairey’s poster was based on an AP photograph, he substantially transformed it from a work of photo-journalism into a mixed-media stenciled collage depicting Mr. Obama on a red, white and blue field. Therefore Fairey argued that his work was protected by the exceptions and limitation of copyright (‘fair use’) and it is indeed an original and creative work. Kidero and his campaign team cannot make such an argument in respect of their poster therefore they are likely to be accused of copyright infringement.

Fortunately for Kidero, Kenyans are not as litigious as they ought to be especially in protection of their IP rights. When Matheka was asked via twitter whether he intends to sue Kidero, he replied:

“I should be meeting him (Kidero) sometime next week. In the meantime, he has apologised and pulled down the poster.”

IPKenya hopes that politicians and their campaign teams will learn to be careful and ethical in how they go about branding their candidates because after all, the public is always watching!