High Court Judgment on Constitutionality of Equitable Remuneration Right and Copyright Collective Management

skiza safaricom caller ringback tone service copyright license collective management society


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.

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Remuneration Rights vs. Exclusive Rights: IFPI, SCAPR, Kenya Copyright Board Clash over Removal of Section 30A

music recording studio

The International Federation of Musicians (FIM) reports that powerful record label umbrella body International Federation of the Phonographic Industry (IFPI) has written to Kenya Copyright Board (KECOBO) demanding the removal of Section 30A of Kenya Copyright Act. (See our previous discussions of section 30A here)

According to FIM, the criticism of section 30A by IFPI is an unacceptable “step backwards, the implication of which is that all treaties guaranteeing artists’ rights would be made devoid of any meaning (Rome Convention, WPPT, Beijing Treaty).”

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

sauti sol sura yako

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.

wapkid sauti sol

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.

Industrial Design Protection in Kenya: The Case of SafePak Plastic Bottle Manufacturing

Safepak Ltd Kenya Bottles Industrial Design

In the recent case of Safepak Limited v Power Plast Industries Limited [2014] eKLR, Safepak applied to the High Court for an interim injunction restraining Power Plast from infringing Safepak’s Industrial Design registered as number 646 by the Kenya Industrial Property Institute (KIPI). Power Plast opposed the application on the grounds that Safepak had failed to meet the threshold of injunctive relief by not putting up a prima facie case with a probability of success.

Havelock J. sitting in the High Court found in favour of Safepak and stated the following:

In my view, the Plaintiff [Safepak] is entitled to statutory protection as regards its bottle product. I do not consider that damages will in any way compensate the Plaintiff for any sales losses that it may incur as regards its bottle products, if a temporary injunction was put in place. In any event, any such damages would be impossible to ascertain. As a result and in the circumstances, I find that the Plaintiff is deserving of an interlocutory injunction at this stage. I find that it has made out a prima facie case with a probability of success in accordance with the principles expounded in the binding authority of Giella v Cassman Brown (1973) EA 358.

In making the above ruling, the High Court agreed that KIPI only dealt with matters of registration and had no jurisdiction over infringement. On the question of infringement, Havelock J. adopted the reasoning that if only small differences separated the registered design from what has gone before, then equally small differences between the alleged infringement and the registered design will be held to be sufficient to avoid infringement. However this is not to say that a party is entitled to reproduce by way of small alterations and/or differences a particular design instigated and registered by a party. The subsequent design must possess some features to enable a person that it is completely and substantially different from the earlier design. The design and the rights conferred by registration is to prevent the manufacture and sales of the same bottles or similar bottles from the registered design. The emphasis there is on the visual image conveyed by the manufactured article.

Safepak Limited Registered Design No. 646 2011

An interesting argument made by Power Plast was that by commencing both opposition and infringement proceedings at KIPI and the High Court respectively, Safepak’s actions were monopolistic and amounted to unfair competition. Power Plast alleged that Safepak had successfully eliminated other plastic bottle manufacturers from the market by taking out similar suits in order to restrict entry thereto by other parties. The learned Havelock J. appears to dismiss this argument by expressing his doubts at paragraph 13 of the ruling. However, as a matter of interest, this blogger has prepared a comprehensive review of previous intellectual property (IP) disputes raised by Safepak brought against at least four different manufacturers of plastic bottles within Kenya.

The earliest reported IP matter involving Safepak is the case of Safepak Limited v Malplast Industries Limited [2007] eKLR. The fact of this case were similar to the Power Plast case above. Safepak applied to the High Court for prohibitive injunctive orders to restrain the Malplast from manufacturing and distributing bottles which Safepak claimed infringed its design registered as No. 385 on September 26, 2003. The court ruled in favour of Safepak and granted the injunctive orders sought. In its ruling, the learned court considered that Malplast was a late entrant in the market and that it’s bottle design was substantially similar to Safepak’s registered design.

Subsequently, there’s another reported matter involving Safepak and Malplast namely, In the matter of an opposition against the Industrial Design Application No. KE/D/2009/00940 decided on November 9, 2012. Safepak filed a notice of opposition against the registration of Industrial Design Application No. KE/ID/09/00940 entitled “Juice Bottle” in the name of Malplast. The KIPI Managing Director ruled that Malplast’s design lacked novelty in light of the existence of the prior art design application No. 539. The Managing Director noted that while industrial design law does not require that an industrial design be made up entirely of new features and, in fact that a design can be registrable even if it is composed of already existing features, in the present case, the features of Malplast’s design do not confer it with sufficient individual character to make it registrable. Safepak has subsequently enjoyed similar success in opposition proceedings against another plastics manufacturer, namely Dynaplas Limited as per In the matter of an opposition against the Industrial Design Application No.KE/ID/2010/001069.

In the case of Nairobi IPT No. 36 of 2002, General Plastics Ltd, which was requesting the Industrial Property Tribunal (IPT) to revoke Safepak’s design, found additional evidence that Safepak’s design had been registered in other countries around the world. General Plastics therefore sought to adduce this new evidence on the grounds that the evidence would demonstrate that the industrial designs in dispute had been anticipated by prior art. This evidence according to General Plastics would influence the outcome of the case. Safepak opposed this move and argued that there had been inordinate delay in bring the evidence and that the matter was res judicata. According to Safepak, it would be an abuse of the Court process if fresh evidence was admitted since the application has been filed nine and a half years after revocation proceedings were filed. The IPT held that there was no res judicata issue arising in the case. The Tribunal allowed further evidence to be admitted and stated that the decision is in furtherance of the doctrine of natural justice. The IPT stated that the Applicant had sufficiently demonstrated that there was no intentional delay on their part and they took all necessary steps to file the motion immediately upon receiving the new piece of evidence. The IPT further affirmed its decision by stating the provisions of the constitution that require judicial authorities to administer justice without undue delay on account of technicalities.

Thereafter, in the case of Safepak Limited v General Plastics [2012] eKLR, Safepak filed an appeal in the High Court against the IPT’s ruling allowing General Plastics to file further evidence in the above matter which seeks the revocation of the registration of Safepak’s Industrial Design No. 186. The High Court granted Safepak’s application as General Plastics stood to suffer little or no damage or loss as a result of the stay being granted. In addition, General Plastics would continue to benefit by continuing to use its unregistered Industrial Property Design in competition against Safepak’s registered Design No. 186.

Returning to the Power Plast case above, many may recall that Havelock J. previously presided in another case involving Safepark namely: Safepak Limited v Asili Plastics Limited [2013] eKLR. In this case, Asili filed a Notice of Preliminary Objection stating that the High Court lacked the requisite jurisdiction to entertain Safepak’s infringement suit in light of sections 106, 113 (1) and 115 (1) of the Industrial Property Act. However, the learned court found that Safepak it could institute court proceedings under section 92 (3) of the Act against any person, in this case Asili Plastics, who infringes its industrial design being ID No. 646 and therefore the High Court has jurisdiction.

In sum, Safepak is no stranger to the world of IP enforcement and has enjoyed a successful track record of protecting its industrial designs. Safepak’s commercial monopoly lies in the shape, configuration and/or pattern of the bottles it has registered and these exclusive rights are enforceable by both the Industrial Property Tribunal and the High Court.