Endless wrangles in Kenya’s collective management system have made us all experts in copyright law. The thorny question of how and to what extent key players in the collective administration of copyright and related rights must comply with the Constitution remains a hotly debated topic. This brings us to a recent judgment by the High Court in the case of Laban Toto Juma & 4 Others v. Kenya Copyright Board & 2 Others Consolidated Kakamega Petition No. 3B of 2017 delivered on 13 July 2018. A copy of this High Court judgment is available here. Not surprisingly, both sides in this see-saw legal battle are claiming victory following the court’s final verdict. So, this blogpost will attempt to examine the key issues tackled by the court in its judgment as well as some of the questions that have been left unanswered.
In Kenya’s cut-throat hair business, three competitors (the purveyors of hair extensions branded ‘Darling’, ‘Angels Hair’ and ‘Sistar’ respectively) have distinguished themselves through aggressive marketing and strategic litigation over their brands. In a previous blogpost here, we highlighted an interesting High Court case where the Sistar hair maker filed a trade mark infringement suit against both its rivals, Style Industries (of the ‘Darling’ fame) and Sana Industries, known for ‘Angels Hair’.
In this latest installment, we focus on the recently reported High Court ruling in Style Industries Limited v Sana Industries Co. Limited  eKLR in which the Plaintiff (Style) was partially successful in its application for both injunctive relief and Anton Piller orders against the Defendant (Sana) for infringement of its ‘VIP COLLECTION’ trade mark.
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.
“I am acutely aware of the far reaching consequences of my conclusive finding that purely constitutional issues and questions have been borne out of a hitherto commercial relationship and hence the court’s jurisdiction rather than agreed mode of dispute resolution. I however do not for a moment view it that the framers of our Constitution intended the rights and obligations defined in our common law, in this regard, the right to freedom of contract, to be the only ones to continue to govern interpersonal relationships.” – Onguto, J at paragraph 101 of the ruling.
A recent well-reasoned ruling by the High Court in the case of Bia Tosha Distributors Limited v Kenya Breweries Limited & 3 others  eKLR tackled the complex question of horizontal application of the Constitution to private commercial disputes governed by contracts with private dispute resolution mechanisms. More interestingly, the court had to consider whether the amount of Kshs. 33,930,000/= paid by the Petitioner to acquire a ‘goodwill’ over certain distribution routes or areas of the Respondents’ products can be defined as ‘property’ held by the Petitioner and as such protected under Article 40 of the Constitution.
On the eve of its 40th anniversary, the Harare-based African Regional Intellectual Property Organization (ARIPO) has recently published the findings of a survey on collective management organisations (CMOs) conducted among its member states. A copy of the survey is available here. In the foreword, ARIPO Director General Mr. Fernando Dos Santos explains that:
“The findings [of the survey] indicate that CMOs in the ARIPO Member States are growing in numbers. It was also found that there is growth in collections of royalties and distributions. However, CMOs are also facing challenges which include insufficient or lack of awareness of copyright laws by users and the general public, users’ unwillingness to pay royalties, piracy of the copyrighted works, inadequate resources and manpower within the CMOs and inadequate availability of technologies that can be used by the CMOs.”
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.
Previously we reported here that two content service providers and three individual copyright owners had filed a constitutional petition at the High Court challenging the content of the equitable remuneration right in section 30A of the Copyright Act, the application and implementation of section 30A by the collective management organisations (CMOs) and the manner of licensing and supervision of the CMOs by Kenya Copyright Board (KECOBO).
Recently in the case of Petition No. 317 of 2015 Xpedia Management Limited & 4 Ors v. The Attorney General & 4 Ors 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 content service providers and the copyright owners that the contents and implementation of section 30A are unconstitutional.