#ipkenya Weekly Dozen: 31/08

African Union Addis Abeba Ethiopia Second Extraordinary Congress Universal Postal Union 2018 Ababa

  • Ethiopia: Gearing up the postal sector to drive development [UPU]
  • Egypt: Mo Salah accuses Football Association of ignoring image rights [BBC]
  • Ghana: ARIPO launches Masters in Intellectual Property at KNUST [Going Places]
  • Nigeria: ‘White gold’ – GM cotton hope for troubled textile industry [GLP]
  • South Africa: Collecting society SAMRO under fire over multi-million US Dollar Dubai investment [Apparently]
  • Zimbabwe: ARIPO Magazine Vol.8 No.2 is out [Get Your Copy Here]
  • Kenya: Struggle to modernise traditional medicine is far from won [The Star]
  • Double Trademark Law Whammy this week over at Afro-IP [Afro Leo & Friends]
  • ICYMI: This Blogger is Now A Member of the Copyright Tribunal [Shameless Plug]
  • New Paper Looks At Differential Protection For TK, Folklore [IP-Watch]
  • Creative Markets and Copyright in the Fourth Industrial Era: Reconfiguring the Public Benefit for a Digital Trade Economy [Okediji]
  • 5th Global Congress on Intellectual Property and the Public Interest [Register Here]

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

Have a great week-end!

High Court Judgment on Caller Ringback Tones, Definition of Public Performance and Regulation of Collecting Societies

IMG-20151023-WA0023 edaily dot co dot ke

Previously we reported here that several members of Music Copyright Society of Kenya (MCSK) had filed a case in the Commercial Division of the High Court challenging a license pertaining to the caller ringback tones (CRBT) service known as “Skiza Tunes” owned by mobile network operator, Safaricom issued by the three music collective management organisations (CMOs) including MCSK.

While the outcome of this commercial suit is still pending, we have come across a recently delivered judgment in the case of Petition No. 350 of 2015 David Kasika & 4 Ors v. Music Copyright Society of Kenya in which several MCSK members alleged that the collection of royalties by MCSK under the CRBT license agreement in question violates their constitutional rights, that the making available of works for download on Safaricom’s CRBT service amounts to a private performance as such section 30A of the Copyright Act does not apply and thus the CMOs cannot collect royalties on behalf of its members as required under the section. Finally, the petition invited the court to weigh in on several damning allegations made regarding mismanagement by MCSK in its collection and distribution of members’ royalties.

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In Regulation We Trust: Kenya Copyright Board Proposes New Set of Administration and Enforcement Provisions

kenya copyright board kecobo

To date, Kenya Copyright Board (KECOBO) has published two sets of draft proposals of amendments to the Copyright Act on collective management organisations (CMOs) available here and on intermediary liability for internet service providers available here. KECOBO has now published a third set of draft legislative proposals namely a draft copyright regulations 2016 available here. These three sets of draft proposals will be the subject of a day-long consultative public forum to be held next week on February 11th 2016 at the Auditorium of NHIF Building starting at 8:00am. For those who will not be able to attend the public forum, KECOBO has set up an email account to receive your comments on the drafts, which is: publicforum@copyright.go.ke. This blogpost is a commentary of the key features of the draft copyright regulations 2016 proposed by KECOBO.

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Kenyans Pay Three Times More Than South Africans to Use Sound Recordings: Lessons from Appeal Court Judgment in SAMPRA v. Foschini Retail Group & 9 Ors

retail-photo-1

Recently, Kenya Copyright Board (KECOBO) published on its website here the proposed 2016 collecting society joint tariffs for musical works, sound recordings and audio-visual works. A copy of these joint tariffs is available here. In order to ensure public participation before the approval of these tariffs, KECOBO will convene an open half-day public forum to be held next week on February 10th 2016 at the Auditorium of NHIF Building starting at 8:30am.

This blogpost will focus on the tariffs for sound recordings since they have recently been the subject of thorough debate and analysis in South Africa’s Supreme Court of Appeal. It is hoped that the South African experience will be useful to Kenyan users in their negotiations with collecting societies on reasonable tariffs to pay for use of copyright works.

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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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Legality of Equitable Remuneration Challenged: High Court Petition of Xpedia & 4 Ors v. Attorney General & 4 Ors

equitable remuneration

Editor’s Note: On 31st July 2015, the urgent application in this Petition No.317 of 2015 dated 29th July 2015 was heard and certain interim orders were granted. A copy of the orders is available here.

This blogger has confirmed a recent media report that two content service providers and three copyright owners have jointly filed a petition challenging the constitutionality of the right to equitable remuneration under the now infamous section 30A of the Copyright Act. The Petition was filed against the Attorney General, Kenya Copyright Board (KECOBO), Kenya Association of Music Producers (KAMP), Performers Rights Society of Kenya (PRiSK) and Music Copyright Society of Kenya (MCSK).

As stated above, the crux of the Petition filed by Xpedia Management Limited, Liberty Afrika Technologies Limited, Elijah Mira, Francis Jumba and Carolyne Ndiba is that KAMP, PRiSK and MCSK should be stopped by the court from receiving or collecting royalties under section 30A of the Copyright Act in respect of works owned or claimed by the Petitioners.

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Lessons for Kenya: South African Copyright Tribunal Sets Aside License Tariff for Use of Sound Recordings

PicknPay

It is recommended that a tariff to be set by the tribunal should neither be too high nor too low, but a tariff which the owners of the royalty will realise profits on the one hand and the consumers will purchase voluntarily. It is hard, in my view, to satisfy the preferences of either party. It has already been indicated that I am not tasked to judge as to which case is superior in law but to set a tariff that may be said to be reasonable. – Foschini Retail Group (Pty) (Ltd) and 9 (Nine) Others v South African Music Performance Rights Association (0003/2009) [2013] ZAGPPHC 304 at Paragraph 76.

Recently this blogger reported a major victory for Kenya’s related rights collective management organisations (CMOs) when the court upheld their statutory mandate to license for the communication to the public right (See here). It is clear that the majority of these disputes between the related rights CMOs and users arise because the latter contest the license fees charged by these CMOs. The genesis of this contestation stems from the users’ perceived “double taxation” of paying both a copyright CMO on the one hand and the related rights CMOs on the other hand.

In this regard, this blogger has argued on several occasions (see here, here and here) that the Competent Authority must be immediately operationalised to deal with the rising cases of CMO-user disputes. Meanwhile, in South Africa, the Copyright Tribunal (equivalent to the Competent Authority under the Kenya Copyright Act) has recently issued a landmark judgment in which it set aside the license tariff for retailers as fixed by the South African Music Performance Rights Association (SAMPRA) holding that the tariff was not reasonable and proceeded to set a tariff to be applied by SAMPRA. In addition, the Copyright Tribunal ordered SAMPRA to pay the the retailers’ costs of referring the matter to the Tribunal.

For Kenya, this judgment is of great importance as the tariff determined by the Copyright Tribunal in South Africa is significant lower than that of the concerned related right CMO in Kenya. Therefore this blogger submits that there is a need for a review of all tariffs set by related rights CMOs using the methodology of the South African Copyright Tribunal.

In the present case, the retailers, namely Foschini Retail Group (Pty) (Ltd), Pepkor Retail Limited Stores, Just Kor Fashion Group (Pty) (Ltd), Mr Price Group Limited, Pick ‘n Pay Retailers (Pty) (Ltd), Truworths Limited, New Clicks SA (Pty) (Ltd), Dunns Stores, Metrotoy (Pty) (Ltd) and Young Designers Emporium (Pty) (Ltd) contended that SAMPRA had unilaterally set a tariff, and that it basically adopted a take-it-or-leave-it approach, when demanding payment. The retailers claimed that the tariff was inflated and without economic justification. They said that they had tried to negotiate with SAMPRA, but that the parties had been unable to reach agreement, hence they referred the matter to the Copyright Tribunal for determination.

As many know, the South African Music Performance Rights Association (SAMPRA) is a national, non-governmental, organization that licenses to third parties specific copyrights that vest in record companies that are members of the Recording Industry of South Africa (RiSA). It is therefore clear that SAMPRA’s equivalent in Kenya is the Kenya Association of Music Producers (KAMP).

In response to the retailers’ contentions, SAMPRA claimed that its tariff was reasonable. It stated that its tariff was bench-marked with international best practice, with reference to the UK, Australia and Canada being mentioned. SAMPRA’s tariff was based on the square meterage of the ‘audible area’, in other words those parts of the store where the music can be heard even if they are inaccessible to customers. Therefore according to SAMPRA’s tariff, the annual fee for a store of 51 to 100 square metres was ZAR 1000.00, whereas the annual fee for a store of 201- 300 square metres was ZAR 2000.00.

The Tribunal agreed with the retailers that the SAMPRA’s tariff was too high, even compared with lower tariffs in developing countries such as Australia. The Tribunal also agreed with the retailers that SAMPRA’s take-it-or-leave-it approach in setting its tariff was wrong both under the Copyright Act and the Collecting Society Regulations. In this connection, the Tribunal found that it would not be in the interest of justice to “cut and paste” the international practice without engaging the market forces prevailing in South Africa.

Therefore the Tribunal was of the view that tariff to be set must be a tariff that “optimizes public welfare”, in other words “a tariff that is neither too high nor too low, by which the service providers would realize profits, whereas the consumers would purchase voluntarily”. The Tribunal therefore set a tariff which, for example, saw the annual cost for shops of 50 to 100 square metres drop down to ZAR 389.00, whereas the annual fee for shops of 200- 300 square metres was set at ZAR 620.00.

As alluded to above, the tariff set by the Tribunal does not compare favourably with KAMP’s tariff here in Kenya. According to KAMP’s recent tariffs available here, the annual cost for shops of 50 to 100 square metres is currently set at KES 6500.00 which is approximately ZAR 650.00. In other words, a Kenyan shop half the size of a South African shop pays twice as more in license fees per year.

In light of the above, this blogger submits that there is a pressing need for the relevant government agencies to intervene and regulate the license tariffs, terms and conditions imposed by CMOs in Kenya to protect the public interest.

Court Rules Public Performance and Communication to the Public Licenses Are Distinct Under Copyright

nairobi-pacific-hotels

On February 14, 2014 in the case of Nairobi Pacific Hotel vs KAMP & PRISK CMCC 7240 of 2013, the court dismissed an application filed by Nairobi Pacific Hotel seeking a grant of temporary injunction to restrain the Kenya Association of Music Producers (KAMP) and the Performers Rights Society of Kenya (PRiSK) from collecting fees with respect to their jointly-issued Communication to the Public license. A copy of the ruling is available here.

This court ruling creates an important precedent that a Public Performance License from the Music Copyright Society of Kenya (MCSK) is not sufficient for the protection of the rights of performers and producers represented by PRiSK and KAMP, respectively. In making its ruling, the court noted that KAMP and PRiSK are collective management organisations (CMOs) duly licensed by the Kenya Copyright Board (KECOBO) to collect license fees from the users who broadcast or communicate sound recordings and audiovisual works to the public.

The court further finds that the clean hands doctrine applies since the user in question, Nairobi Pacific Hotel, had been implored upon to obtain a Communication to the Public License but neglected and/or refused to do so solely on the basis that the latter had already obtained a Public Performance License from MCSK.

Comment:

This blogger supports the court’s ruling in this matter and applauds the related rights CMOs for successfully using litigation as a tool to enforce and protect the rights of their respective members.

The existence of the MCSK license and KAMP-PRiSK for public performance is premised on the definition of the “communication to the public” in the Copyright Act. This definition reads:

“communication to the public” means
(a) a live performance; or
(b) a transmission to the public, other than a broadcast, of the images or sounds or both, of a work, performance or sound recording;”

However the Copyright Regulations of 2004 provide the clearest definition of what amounts to “Public Performance” as it is licensed by MCSK for the rights under copyright and KAMP-PRiSK for the related rights.

Section 2 reads as follows:

“public performance” means –
(a) in the case of a work other than an audio-visual work, the recitation, playing, dancing, acting or otherwise performing the work, either directly or by means of any device or process;

(b) in the case of an audio-visual work, the showing of images in sequence and the making of accompanying sounds audible; and

(c) in the case of a sound recording, making the recorded sounds audible at a place or at places where persons outside the normal circle of the family and its closest acquaintances are or can be present, irrespective of whether they are or can be present at the same place and time, or at different places or times, and where the performance can be perceived without the need for communication to the public.

From the users’ perspective, they argue that public performance licensing by KAMP – PRiSK and MCSK “feels like double taxation since one is paying 3 different bodies licence fees for the same thing”. Herein lies the biggest challenge for CMOs: to successfully convince users that “music”, as they know it, is simultaneously categorised as three different subject matter under copyright law, namely “sound recordings”, “musical works” and “audio-visual works”. In this regard, this blogger has previously argued here that it requires a great deal of skill and salesmanship for licensing officers from the CMOs to convince users to take out their respective licenses.

In the present case of the KAMP-PRiSK license, the tariffs are based on the area in square feet of the business premises wwhere the sound recordings and audio-visual works are used. The tariff structure is available below:

PRiSK KAMP Communication to the Public CTP license tariffs

In disputes between CMOs and users, the elephant in the room always seems to be the question of CMO regulation, in particular the reasonableness of the license terms and conditions imposed by CMOs on users. As previously discussed here and here, this blogger has noted that there is an increase in complaints by users against CMOs relating to license fees, in addition to the manner in which license fees are collected from users.

In the case of KAMP and PRiSK, CMO-user relations appear to have been complicated further with the enactment of section 30A in the 2012 Amendments to the Copyright Act. It would seem that Section 30A has introduced a system of compulsory licensing with the introduction of the right to equitable remuneration for use of sound recordings and audio- visual works. However, the term “equitable remuneration” remains undefined and where users of sound recordings and audio- visual works may have complaints against KAMP and PRiSK, the Competent Authority is not yet in operation to give directions on these matters.

The Competent Authority: Behold! Kenya’s New Copyright Tribunal

During the Second Reading of the Copyright Bill on November 20, 2001, the following statement was made by the Deputy House Speaker recorded in the Hansard at page 3186:

“the competent authority will act as an arbiter between the Board and the members.”

Section 48 (1) of Kenya’s Copyright Act provides for the appointment of a “competent authority” which is really a Tribunal appointed by the Minister in charge of the Kenya Copyright Board who happens to be the Attorney General (AG).

In Gazette notice no. 4339 dated 2nd April 2012, the AG has now appointed the following 5 individuals to form the Competent Authority:

Prof. Ben Sihanya – appointed as Chairman of the Competent Authority

Sihanya is currently Associate Professor of Law at the University of Nairobi School of Law. He has researched, published and spoken widely on Intellectual Property, Constitutionalism, Education Law and ICT Law in Kenya.

Sihanya is known for his innovative approach to the law and other inter-disciplinary areas of legal research and practice. He has conducted training, publishing, consulting and mentoring in Intellectual Property and Innovation, Education, Training, Research and Mentoring (ETRM) Law, Constitutionalism and Governance, Communications Law as well as Trade and Corporate Governance Law in Kenya specifically and Africa generally.

As one of the foremost authorities on copyright law in Kenya, IPKenya believes that Sihanya’s appointment as Chairman is well deserved. His wealth of skills, knowledge and experience in intellectual property is unmatched.

The following 4 individuals have been appointed as Members of the Competent Authority:

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