#ipkenya Weekly Dozen: 27/07

CISAC AFRICA COMMITTEE REGION 2018 DjGrq71XsAA8DYh

  • Improving creators’ royalty collections in Africa: CMOs gather in Abidjan for CISAC’s Africa Committee [Official]
  • Figures of the week: Africa’s energy innovation landscape [Brookings]
  • 5th Global Congress on IP and the Public Interest, Sept 27-29 Washington DC [Register Now]
  • Nigeria announces national airline, didn’t register domain names [iAfrikan]
  • South Africa’s Proposed Copyright Fair Use Right Should Be A Model For The World [InfoJustice]
  • Kenya: MCSK asks MPAKE to stop collecting royalties [Pot Calling Kettle]
  • Africa Has an ‘Uber’ Opportunity to Disrupt Farming Technology [AGRA]
  • Poor e-commerce policies slow the uptake in Africa [The Star]
  • How broke public universities can change fortunes [Captain Obvious]
  • Does the fourth industrial revolution call for a sui generis form of IP protection? [A+ Bunch of Lawyers]
  • Comesa to set up team on digital free trade area [East African]
  • Time for a Sui Generis Technology Importation Right? [Afro-IP]

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

Have a great week-end!

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Incidental Use and Copyright Exhaustion: High Court Ruling in Nairobi Map Service v Celtel Kenya (Zain Kenya)

celtel map kenya africa

 

After 7 years in court, a judgment was recently delivered in the case of Nairobi Map Service Limited v Celtel Kenya Limited (Zain Kenya) & 2 others [2016] eKLR in which Nairobi Map sought to have the defendants namely Celtel/Zain Kenya (now Airtel Kenya), Z.K Advertising Kenya and the Sound and Picture Works company held liable for copyright infringement of a copyrighted map known as ‘Kenya Administrative Map’ which was included in the ‘Zain Coverage’ advertisement televised in August 2009.

According to the court there were 3 issues to determine namely: (1) whether the Plaintiff has copyright in the map known as ‘Kenya Administrative Map’; (2) If issue No. 1 is in the affirmative, whether all or any of the Defendants have infringed the Plaintiff’s copyright in the said map; and (3) Whether the Plaintiff is entitled to damages as prayed, from the Defendants or any of them.

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Law Society Publishes Article Plagiarised by Law Professor: Copyright Issues in Wachira Maina v. PLO Lumumba Dispute

cover of the law society of kenya journal volume 11 2015 number 1 lawafrica

This week, constitutional lawyer Wachira Maina took to his facebook page to express his outrage that his work had been plagiarised by a senior lawyer and professor of law, PLO Lumumba. He begins his lengthy post on social media as follows:

“I am aghast. Prof. Lumumba has gone ahead and blatantly plagiarised my April 20th 2013 article on the Presidential Election and re-published it with the grandiloquent title “From Jurisprudence To Poliprudence: The Kenyan Presidential Election Petition, 2013” in the current issue of the Law Society of Kenya Journal.”

In the comments section, Maina discloses that he has already retained legal representation and that his counsel has written to Lumumba over the issue. For intellectual property (IP) enthusiasts, this blogger reckons that if this dispute ends up before the courts, there will be a number of interesting copyright law questions to be addressed.

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Supreme Court of Kenya Addresses ‘Fundamentals’ of Copyright Law in Digital Migration Case

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“In resolving this dispute, account must be taken of the nature of the resource (Spectrum) being contested, the economic fundamentals under-guarding its capitalization, the country’s obligations under international law, and the values decreed in our Constitution. At the end of the day the people of Kenya, local investors, international investors all have a stake. Of course care must be taken so as not to leave this resource to “the tragedy of the commons”. At this stage, we recall the words of Mr. Kimani Kiragu when he urged thus:
“I started by taking you on a flight to the Caribbean and referring to, or quoting Mr. Robert Marley. Let me come back home with regard to the three principles…If I could refer to our very own Ken Wa Maria, ‘these things, these are my things, these are your things, these are our things, these are the fundamentals’.” -Mutunga, CJ & P at para 388.

In the recent case of Communications Commission of Kenya & 5 others v Royal Media Services Limited & 5 others [2014] eKLR, the Supreme Court unanimously ruled on several contentious copyright issues relating to Kenya’s ‘imminent shift’ from analogue terrestrial broadcasting to digital terrestrial broadcasting on or before the international analogue switch-off date of June 17, 2015. A copy of the judgment is available here. This blogpost will examine how the Supreme Court addressed the following issues relating to copyright law, namely: (i) whether the Communications Authority of Kenya (CAK) formerly known as Communications Commission of Kenya (CCK) violated the intellectual property (IP) rights of three local free-to-air (FTA) broadcasters: Royal Media, Nation Media, and Standard Group by authorizing two broadcast signal distributors (BSDs) namely Pan African Network Group (PANG) and Signet Kenya Limited along with pay TV broadcasters such as StarTimes Kenya Limited and GOtv Kenya Limited to transmit the broadcasts of the aforementioned FTA broadcasters without the latter’s consent?; and (ii) whether the issue of infringement of IP rights was properly before the High Court, in the petition filed by the FTA broadcasters for the enforcement of their fundamental rights and freedoms?

The digital migration case started off when three local free-to-air (FTA) broadcasters: Royal Media, Nation Media, and Standard Group went to the High Court of Kenya in the case of Royal Media Services Ltd v Attorney General & 2 others [2013] eKLR in a bid to stop the migration from analogue to digital television broadcasting. In its prayers to the court, the petitioners sought, inter alia, an order of permanent injunction restraining several digital broadcasters from broadcasting, distributing or in any way interfering with the Petitioners’ programs, broadcasts, copyrighted material and productions or in any way infringing the Petitioners’ intellectual property rights. Therefore one of the issues for determination in this case was whether these digital broadcasters have breached and or violated the petitioners’ intellectual property rights.

Majanja J. sitting in the High Court dismissed as frivolous the petitioners’ allegations against the pay TV broadcasters for IP rights infringement. According to the learned judge, despite the inclusion of IP rights under Article 40(5), these rights are still considered as ordinary rights as opposed to fundamental rights and freedoms. The court therefore held that only cases of violation of fundamental rights and freedoms warrant a constitutional petition in the High Court. Therefore where IP rights violations occur, the affected person must rely on the specific IP regime established by law to address the area of IP concerned.

Dissatisfied with Majanja J’s decision, the three FTA broadcasters appealed to a three-judge bench sitting in the Court of Appeal in the case of Royal Media Services Limited & 2 others v Attorney General & 8 others [2014] eKLR. Two out of the three appellate judges (Nambuye and Maraga JJA) set aside the judgment of Majanja, J in the High Court and made two IP-related findings in their separate but concurring judgments, namely:- firstly, that Majanja J. erred in law in holding the IP rights of the three FTA broadcasters were not violated by the pay TV broadcasters in broadcasting the former’s programs and content without consent; and secondly, that Majanja J. erred in law in holding that infringement of intellectual property rights could not be the subject of a constitutional Petition. This blogger expressed his shock and disappointment at this majority view of the Court of Appeal here.

This brings us full circle to the present decision by the Supreme Court.

From the outset, it is refreshing to see the Supreme Court zeroing in on the copyright issues in this digital migration case. Firstly, the court engages in the important exercise of determining whether or not a chain of title exists between the alleged infringers and the three FTA broadcasters’ rights. In the case of Signet and PANG, the Supreme Court finds a myriad of letters between the CCK and the three FTA broadcasters showing that the latter had given permission to Signet and PANG (and its pay TV operator StarTimes) to carry their respective FTA broadcasts during the pilot phase of the digital migration process. In the case of GOtv Kenya, it was successfully shown that GOtv was an affiliate of MultiChoice and that the latter had signed Channel Distribution Agreements with all three FTA broadcasters.

However, the underlying issue up for determination by the apex court was whether the conduct of CCK/CAK licensees pursuant to Regulations 14(2)(b) and 16(2)(a) of the Kenya Information and Communications (Broadcasting) Regulations, 2009 (the so-called “must carry” rule) could be reconciled with the constitutional right to protection of intellectual property as well as the provisions of the Kenya Copyright Act.

These Regulations provide as follows:

“14. Subscription broadcasting service licenses and subscription management services.
(1) The Commission may upon application, in the prescribed form, grant a subscription broadcasting services licence for —

(a) satellite broadcasting services;

(b) cable broadcasting services; and

(c) subscription Management services.

(2) The Commission may require a licensee granted a licence under paragraph (1) to —
(…)
(b)provide a prescribed minimum number of Kenyan Broadcasting channels.”

“16(2)(a) The Commission may require a person granted a licence under paragraph (1) to distribute on its digital platform free to air and subscription broadcasting services and related data on behalf of other licensed broadcasters.”

Respectfully this blogger disagrees with the Supreme Court’s application of ABS-CBN Broadcasting Corporation v. Philippine Multi-Media System, Inc. & 6 Others, a case decided by the Supreme Court of the Philippines. The point of disagreement is definitional in nature. In the Kenyan context, the Copyright Act defines “broadcast authority” to include “any other broadcaster authorised by or under any written law”. Therefore this means that if Multichoice (which appears to be akin to PMSI in the Philippine case) were licensed to “broadcast” in Kenya, as defined by the Copyright Act, then it would be considered a broadcast authority. In this regard, it is important to note that the definition of “broadcast” under the Copyright Act includes “transmission by satellite”. It follows that Signet, PANG and StarTimes are clearly broadcast authorities since they are all licensed to broadcast by CAK formerly CCK. Therefore it is this blogger’s respectful opinion that the Supreme Court erroneously found that no rebroadcasting had taken place without considering the definition of “broadcast authority” provided in the Copyright Act.

With respect, this blogger submits that the Supreme Court’s attempt to couch the “must carry” rule in fair dealing terms merely confirms the ‘definitional’ argument discussed above. In this connection, this blogger respectfully questions why the Supreme Court brings up ‘fair dealing’ (one of the defences in copyright infringement suits) yet it claims that no act of copyright infringement (i.e. rebroadcasting) was committed by the appellants. In addition, this blogger questions why the Supreme Court chose to rely on a 2002 working paper of World Intellectual Property Organization (WIPO) Standing Committee on Copyright and Related Rights yet there is no mention made of the 3-step test under the Berne Convention and TRIPs Agreement, both of which are binding in Kenya.

The Kenya Copyright Board (KECOBO) seems to concur with this blogger and has also expressed its disagreement with the Supreme Court’s decision. Edward Sigei from KECOBO has publicly stated that:

“The court … failed to explain ‘the how’ by way of express provisions of the Copyright Act and the decision on plain reading of the definitions of the Act is erroneous. Clearly for it to be transmitted, the analogue signal must be converted or modified before it is made available to the public in the digital platform which is contrary to Broadcasters copyright which is not limited under section 29 of the Copyright Act as declared by the court.”

On the issue of constitutional IP protection, this blogger is pleased that the Supreme Court confirmed the precedent set by the learned Majanja J., as discussed above. In this regard, the court held:-

“The principle of avoidance entails that a Court will not determine a constitutional issue, when a matter may properly be decided on another basis. (…) From the foundation of principle well developed in the comparative practice, we hold that the 1st, 2nd and 3rd respondents’ claim in the High Court, regarding infringement of intellectual property rights, was a plain copyright- infringement claim,and it was not properly laid before that Court as a constitutional issue. This was, therefore, not a proper question falling to the jurisdiction of the Appellate Court.”

On this point, KECOBO has expressed its concern with the decision by the Supreme Court. Here is a quote from Edward Sigei from KECOBO:

“…the application of the principle of Avoidance in case of Intellectual Property is a setback to owners of IP whose enforcement efforts are frustrated by lack of clear enforcement provisions under the relevant statutes.”

This blogger will be keenly following developments in copyright legislation and jurisprudence arising from the Supreme Court’s decision.

 

Last updated: March 2015.

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