In recent media reports here and here, Kenya Copyright Board (KECOBO) reveals that it has proposed draft legal provisions to deal with the liability of internet/online intermediaries. KECOBO Chief Legal Counsel (CLC) has been kind enough to share with this blogger a copy of the proposed draft legal provisions available here. KECOBO CLC has also indicated to this blogger that there are plans underway to hold a public forum in the coming months to discuss the draft provisions and receive comments from the public.
In a recent ruling by the High Court in the case of Riara Group of Schools Limited v Lucas Kimani  eKLR, Ogola J found that Riara had failed to establish a prima facie case against an ex-employee who is alleged to have wilfully and knowingly infringed Riara’s copyright in a learning/revision computer program known as “Digital Genius”. At the heart of the case is the question whether or not a teacher formerly employed at Riara developed a computer program under his contract of service with Riara.
It is interesting to note that while the supporting evidence in Riara’s application clearly establishes an employment relationship which coincides with the period when the ex-employee claims to have developed the computer program, the court held that Riara has not provided any or enough evidence to support its assertion that the: “said computer program was developed using the Plaintiff [Riara]’s resources which included but are not limited to official working hours spent in designing and developing the software, equipment and machinery including computer hardware and electricity. Further, the utility of the said computer program was tested on the Plaintiff School’s pupils and was thereafter fully implemented and used as a teaching aid and revision material in the aforesaid Plaintiff’s School.”
A copy of the ruling is available here.
“The persons who created and did the video shooting or who employed the person who carried out the work of shooting the photos and video is/are the authors or author of the works. The exact relationship between an author and a person having neighbouring rights has to be clear and not hazy. A photographer who films activity in a market might not require permission of everybody in the market to publish or use the works.” – Madrama J. at page 15.
This blogger has come across a recent High Court decision of Sikuku v. Uganda Baati HCCS No. 0298 of 2012 before the very able Honourable Justice Mr. Christopher Madrama, whose decisions we have previously discussed here and here. A copy of the present judgment is available here. Sikuku, a long-time employee of Uganda Baati claimed that the latter was unfairly benefiting from the use of his images in Uganda Baati advertisements presented in both photographic and audio-visual forms to the public. Sikuku sought an order for the payment of Uganda shillings 150,000,000/= as “usage fees” from Uganda Baati. Sikuku contended that his employer had infringed his rights under the Uganda Copyright and Neighbouring Rights Act as well as the Constitution of Uganda. The court dismissed Sikuku’s entire case against Uganda Baati. The learned Madrama J. found that Sikuku does not qualify to have neighbouring rights as protected by the Copyright and Neighbouring Rights Act 2006. Further, the court found that Sikuku has not proved unlawful interference with his constitutional right of privacy under article 27 by Uganda Baati.
This blogpost discusses the Uganda High Court’s treatment of the intersecting issues of image/privacy rights, and neighbouring rights as they arose in the Sikuku case. Ultimately, this blogpost finds that this case is instructive for participants both behind and infront of the camera lens.
It is not disputed that Sikuku appears in photos used in Uganda Baati’s in-house SAFAL magazine and the Contractors Year Planner. It is also not disputed that Sikuku appears on audiovisual adverts commissioned by Uganda Baati which were broadcast on several television stations including WBS and NTV. However the court had to determine whether or not these “appearances” amounted to “performances” as defined in copyright law and by extension, whether Sikuku fell within the definition of a “performer”.
A “performer” under section 2 of the Uganda Copyright and Neighbouring Rights Act is defined to include an:
“actor or actress, singer, musician, dancer or other person who act, sing, deliver, declaim, play in, interpret, or otherwise perform literary or artistic works or expressions of folklore.”
Madrama J. in his judgment states that Sikuku cannot be a “performer” under the Act. His reasoning is thus:-
“The evidence demonstrates that the Plaintiff [Sikuku] was going about his business when he was filmed and photographed. He was not required to pose for the photograph or for the filming though they had been given new uniforms for the occasion. He was filmed and photographed in the ordinary course of his performance as a worker. (…) From the definition under the Copyright and Neighbouring Rights Act the Plaintiff is not an actor because he was filmed and photographed in the ordinary course of his work as an Employee of the Defendant. (…) the Plaintiff is not a performer whose action was deliberate so as to be a necessary ingredient of the works complained about and which ought to be paid in terms of performance fees (…) It is debatable whether the advertisement prominently portrays the Plaintiff’s photo or actually displays the Defendant’s products together and incidentally with the workers engaged in the work of production of the products using the machinery. The plaintiff is not at all the major or main feature of the advertisement. (…) The Plaintiff is not an artist and he was not bringing special skills so as to properly present the Defendant’s products. He was merely going about his business when he was filmed.”
On this point, this blogger concurs with the judge’s careful consideration of the definition of “performer”. Sikuku’s role in the audio-visual work cannot be likened to that of an extra in a movie or other production. While it is clear that Sikuku may fall within the category of “other person who acts, sings, delivers, declaims, plays in, interprets, or otherwise performs”, the missing part appears to be the subject matter of the “performance”. In the case of an extra, there is a script and an assigned role given to each “performer” such as “workman #1 operating heavy machine”, which would appear in the movie credits at the end of the movie.
On the issue of image/privacy rights, the court provides a useful analysis of the privacy clause in the Constitution of Uganda, which closely mirrors the privacy article in Kenya. In finding that there was no infringement of privacy rights, the court correctly reasoned as follows:-
“The court should consider whether photos of Employees taken in the course of their employment showing them at work cannot be used by the Employer for purposes of advertisement without consent or payment of consideration. The plaintiff should demonstrate that the filming or photo was taken in a private moment such us when eating or resting. Such a conclusion should be based on the terms of the contract. In the absence of the terms of any contract excluding an Employer from publishing photos and audio visual works of products including members of staff in a factory carrying out their work, the Plaintiff has no case presented before the court. As far as the rights to privacy is concerned, someone who works in a factory as contained in exhibit P1 and P2 cannot claim a right to privacy. The factory is owned by the Defendant and the Defendant can bring in people at any time to inspect the factory thereby excluding the rights to privacy.”
This month’s edition of the World Intellectual Property Organization (WIPO) publication “WIPO Magazine” contains an article on Egypt and Tunisia’s new constitutions which ‘recognize the importance of the knowledge economy and intellectual property (IP) rights’. This article by one Ahmed Abdel-Latif titled: “Egypt and Tunisia Underscore the Importance of IP” reads in part:
“For the first time, the constitutions of these two countries provide for the protection of IPRs although in different ways. In both constitutions, the wording is succinct: the Egyptian Constitution stipulates that the “State shall protect all types of intellectual property in all fields” (Article 69) and the Tunisian Constitution indicates that “intellectual property is guaranteed” (Article 41).”
In addition, the article notes that ‘both constitutions contain a number of clauses on the protection of culture, health, and heritage which can influence both the interpretation and implementation of the IP rights clauses’.
With regard to the “challenge of implementation” of the IP rights clauses in the two constitutions, the article astutely points out that:-
“(…) ultimately the manner in which these clauses are implemented through national laws and judicial decisions will be critical in ensuring that a balanced approach to IP protection is adopted; one which takes into account the level of development of each country and one which is supportive of their respective public policy objectives.”
At this juncture, it may be instructive for this blogger to share some views on Kenya’s experiences thus far with constitutionalised IP protection since it begun in 2010. The pre-2010 Constitution of Kenya did not capture concerns on innovation and IP. In that Constitution, sections 70 and 75 capturing the Bill of Rights provided substantive property guarantees limited to real property as opposed to technological innovations, cultural innovations and IP. However in 2010, there was a paradigm shift which resulted in the promulgation of a new Constitution. This new social contract expressly protects IP, innovation and technology transfer. For the first time in Kenya’s history, IP norms were constitutionalised. First, Article 260 (c) includes IP in the definition of “property”. Secondly, Article 40 (5) obliges the State to support, promote and protect the intellectual property rights of the people of Kenya. In the same breath, Article 69(1) (c) and (e) mandates the State to protect and enhance intellectual property, traditional or indigenous knowledge of biodiversity and the genetic resources of the communities and protect genetic resources and biological diversity.
Under Article 11(1), the Constitution recognises culture as the foundation of the nation and as the cumulative civilization of the Kenyan people and nation. And mandates the state to promote all forms of national and cultural expression through literature, the arts, traditional celebrations, science, communication, information, mass media, publications, libraries and other cultural heritage; recognise the role of science and indigenous technologies in the development of the nation; and promote the intellectual property rights of the people of Kenya.
Parliament is also mandated to enact a law to ensure that communities receive compensation or royalties for the use of their cultures and cultural heritage. This legislation should also be passed which recognise and protects the ownership of indigenous seeds and plant varieties, their genetic and diverse characteristics and their use by the communities of Kenya.
So far, it appears that the judicial branch of government has risen to the challenge of implementation of the constitutional IP provisions, with due deference to the executive branch aptly represented by the Kenya Industrial Property Institute (KIPI), Kenya Copyright Board (KECOBO) and the Anti-Counterfeit Authority (ACA). Notable court decisions directly related to constitutional IP protection include the Patricia Asero case (previously discussed here, here and here), the Digital Migration case (previously discussed here and here – this matter is currently before the apex court, Supreme Court of Kenya), the Sanitam case of 2012 (previously discussed here).
Away from the courts, KECOBO and KIPI are leading an inter-ministerial taskforce on Traditional Knowledge, Traditional Cultural Expressions and Genetic Resources. This taskforce has already finalised work on a draft Bill on the protection of TK and TCE (previously discussed here and here). In the meantime, several state agencies dealing with IP have held consultative forums to develop a National IP Policy (previously discussed here). Still within the Executive, the Ministry of Sports, Culture and the Arts has established a multi-stakeholder committee to finalise work on a draft National Music Policy (previously discussed here and here). It is hoped that the forthcoming merger of KIPI, KECOBO and ACA (previously discussed here, here and here) will increase the Executive’s capacity to spearhead the implementation of the various constitutional provisions relating to IP.
All in all, the road from adaptation to full realisation of constitutionally guaranteed IP protection is long, arduous and involves several levels of engagement.
Earlier this week, Amani Women’s Group posted a blog article here after receiving a Cease and Desist Demand Notice from Penny Galore Ltd. In the explicit Demand Notice, Amani is accused of infringing Penny Galore’s rights under both copyright and the law of passing-off with respect to the latter’s handmade necklace branded and marketed widely as the Kura Necklace. According to Penny Galore’s counsel, Coulson Harney, the necklace is “made up of bone quills that are creatively decorated around a ring necklace which is joined by a hook and comes in various colours such as grey, cream and black”.
Penny Galore alleges that Amani has substantially copied and/or reproduced the Kura Necklace Grey and that Amani are selling this infringing work at its shops to individuals and/or independent traders. Therefore Penny demands that Amani immediately stops all dealings with its alleged infringing necklace and that all pieces of the disputed Amani neckace must be destroyed. In addition, the Demand Notice requires that Amani provides a written promise not to infringe on Penny Galore’s rights in the Kura Necklace. Of course, Penny Galore’s counsel has threatened to sue Amani if the latter does not comply with the Demand Notice.
This blogger submits that this is an important lesson on protection of one’s intellectual property rights. From the little information that is publicly available, there is no doubt that Penny Galore has and continues to invest heavily in commercialising its products and its brand, both of which are protected under the intellectual property (IP) system. The sole fact that Penny Galore has engaged the services of (high-end) IP counsel in this matter demonstrates that it is willing to invest in protecting the IP rights subsisting its various products that have been made available to the public.
On the other hand, it is clear that Amani enjoys equal IP protection as Penny Galore with respect to its unique creations. Therefore, Amani can and should rely on the IP system to defend any unfounded claims made against its products by anyone, including Penny Galore.
Based on Penny Galore’s demand notice and Amani’s website alone, it is impossible for any third party, including this blogger, to ascertain what the alleged infringing necklace looks like and whether there is an objective similarity between the above necklace and the Kura Necklace. However, most IP commentators would agree that necklaces, in their material form, are the subject of copyright protection as artistic works defined in section 2(1) of the Copyright Act.
A good illustration of the required standard of proof for copyright infringement in an artistic work may be found in the case of Macmillan Kenya Publishers v Mount Kenya Sundries Ltd Civil Suit No. 2503 of 1995. In this case, Macmillan Kenya Publishers claimed its rights under copyright has been infringed with respect to its maps “Kenya Tourists Map”. Macmillan argued that the “Kenya Travellers’ Map” by Mount Kenya Sundries Limited was similar to the Macmillan’s maps save for some changes made in certain aspects of the maps’ details.
The court ruled in favour of Macmillan and stated as follows:-
As was pointed out in Alternative Media Ltd vs Safaricom Ltd (2005) 2 KLR 253, infringement of copyright arises not because the Defendant’s work resembles the Plaintiff’s, but because the Defendant had copied all or a substantial part of the Plaintiff’s work. In the case before me, the Plaintiff has submitted evidence which I find to be both sufficient and credible, that its maps (PEx 6 and PEx 7), were copied by the Defendant in the production of the Defendant’s map (PEx 8), and I find the Defendant fully liable for the infringement of the Plaintiff’s copyright.
The above-cited Alternative Media case is the leading case in relation to copyright infringement of artistic works. In that case, the court found that Safaricom had infringed Alternative Media’s rights under copyright with respect to artistic works created by the latter. These works of art were used by Safaricom on it’s 250 Shillings Scratch Cards without Alternative Media’s authority.
Regarding the law of passing-off, the central enquiry is whether the public is likely to be confused into believing that Amani’s necklaces are, or are connected with, those of Penny Galore. The underlying rationale behind passing off is to ensure that competitors within the same market do not engage in any acts aimed at interfering with the goodwill between each business and its customers.
Therefore although Penny Galore appears not to have registered its necklaces, the provisions of section 5 of the Trade Marks Act are clear that:-
“No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark, but nothing in this act shall be deemed to affect rights of action against any person for passing off goods.”
In the case of Githunguri Dairy Farmers Cooperative Society Limited v. Uplands Diaries Limited 2009 eKLR, the court found that the features and design of Uplands’ milk packaging were strikingly similar to Githunguri’s Fresha Milk packaging and that the latter’s market survey confirmed that there is confusion in the market.
In arriving at this ruling, the court stated as follows with respect to passing-off:-
The principles to bear in mind when considering a claim under the tort of passing off, is the plaintiff must prove reputation of good will connected with the goods which are known by the buyers by distinctive get up or feature. Secondly, the plaintiff must prove the defendant either intentionally or not, misrepresented to the public leading them to believe that the defendant’s goods are the plaintiffs. The plaintiff has also to prove that they have suffered damages because of the erroneous believe caused by the defendants’ misrepresentation.
The above principles may be useful to Amani as they craft a response to Penny Galore’s Demand Notice.
In light of the above, this blogger looks forward to seeing Amani’s comprehensive evidence showing that the Kura Necklace falls part of the traditional cultural expressions of African and Kenyan communities, as Amani appears to have suggested in its blog article. In the meantime, this blogger is not convinced by Amani’s attempts to portray its dispute with Penny Galore as “bullying” or a case of David versus Goliath.
It is indeed disappointing for Amani to resort to comments such as:
“Kenya is 50 years old and its seems we are still under control of people wanting to make money on the backs of poor wananchi, its not fair … Or may it is just if you have money and success, you think you are entitled to step on whoever you please while you try to make yourself richer”
All businesses, large and small alike, must be alive to possible IP issues in their operations and develop effective IP strategies. Perhaps this is an important lesson not just for Amani but other businesses in the creative and innovation sectors.
Australia’s Parliament is without doubt one of the most proactive legislatures in the world. In a few short years, it has made history as the first country to legislate on carbon taxes and now it is taking on the multi-billion dollar worldwide tobacco industry. In the above clip, circa 10:53, Richard di Natale, Senator from Victoria had this to say on the need to legislate further against ‘Big Tobacco’:
“The one frontier that has remained open to tobacco companies is on the packets themselves. They are little billboards of nastiness advertising their wares to passers-by from pockets, from kitchen tables, on dashboards of cars, all around the country. And smokers do see the branding on these packets potentially dozens of times a day. And this Bill will remove that opportunity. An opportunity for tobacco companies to compete on grounds of brand awareness and image.
The Tobacco Plain Packaging Act 2011, when it does come into law, will remove the ability of tobacco manufacturers to display logos, images and promotional text on their packs and will replace it all with a plain brown packet. Current health warnings will be enlarged and accentuated… Under the Act it will be an offence to sell a non compliant product with potential penalties in excess of one million dollars for a wilful breach of the act by a body corporate. Under the Act, the packet will be tightly controlled: they have to be made of cardboard, packs have to be rectangular, contain no embossing, the colour needs to be a drab dark brown and no trademarks will be allowed. The location and orientation of the branding variant name are strictly prescribed and the graphic warning will be enlarged to 70% of the front of the packet.
In short, this bill aims to ensure that the packet of cigarettes is as ugly as the product itself.” (Emphasis added)
Australia has now enacted this Bill into law.
Meanwhile here in Kenya, the Tobacco Control Act 2007 remains in force and section 21 of this Act contains the following provisions with regard to packaging of tobacco products:
“21 (2) Every package containing a tobacco product shall –
(a) have at least two warning labels of the same health messages, in both English and Kiswahili, comprising of not less than 30% of the total surface area of the front panel and 50% of the total surface area of the rear panel, and both located on the lower portion of the package directly underneath the cellophane or other clear wrapping;
(b) bear the word “WARNING” appearing in capital letters and all text shall be in conspicuous and legible 17-point type, unless the text of the label statement would occupy more than seventy percent of such area, in which case the text may be of a smaller but conspicuous type size, provided that at least sixty percent of such area is occupied by the required text; and
(c) bear text that is black on a white background or white on black background in a manner that contrasts by typography, layout or colour with all other printed material on the package.
(3) All the warning labels specified in the Schedule shall be randomly displayed in each twelve-month period on a rotational basis and in as equal a number of times as is possible, on every successive fifty packages of each brand of the product and shall be randomly distributed in all areas within the Republic of Kenya in which the product is marketed.
(4) The Minister may, by notice in the Gazette, prescribe that the warning, required under this section, be in the form of pictures or pictograms; (..)”
Returning back to Australia, in the recent case of JT International SA and BAT Australasia Limited v Commonwealth of Australia  HCA 30, Big Tobacco went to court challenging the constitutionality of the Plain Packaging Act. The High Court of Australia earlier issued orders ruling that “at least a majority of the judges” are of the view the plain packaging regime is valid under the Australian Constitution. The High Court rejected the arguments of Big Tobacco that there was an acquisition of property on less than just terms. See case citation here.
Meanwhile back to Kenya, BAT East and Central Africa Area Director Gary Fagan is reported as being “extremely disappointed” by the court] decision on the Australian Act which he termed as a “bad piece of law”. He adds that:
“”We fully support any form of evidence-based regulation but there is no proof to suggest plain packaging of tobacco products will be effective in discouraging youth initiation or encouraging cessation by existing smokers (…) In fact, plain packaging would only exacerbate an already significant illicit tobacco trafficking problem, and would have other significant adverse unintended consequences including driving down prices which would lead to increased smoking while reducing government tax revenue(…)”
As a matter of fact, earlier this year, IPKenya recalls government authorities raising the alarm over increased sale of counterfeit and smuggled cigarettes in Kenya. Kenya Anti-Counterfeit Agency (ACA) reported that cigarettes are rapidly becoming the most illegally traded product in the region, while health experts warned a health crisis could be looming. Local cigarette makers BAT-Kenya and Mastermind Kenya Ltd estimated that counterfeiters pocket upwards of US$1.05 billion (Sh100 billion) every year from sales across East Africa.
In deciding whether Kenya should or shouldn’t follow Australia’s bold legislative approach, IPKenya asks: Is destroying trade marks or brands of Kenyan cigarette companies in order to discourage the use of tobacco products reasonable and justifiable under the limitation clause in Article 24 of the Constitution?
Unlike in Australia, Kenya’s Constitution has over 3 specific provisions on intellectual property rights including the broad provision on the protection of right to property enshrined in Article 40. In this regard, the stand-out constitutional provision which would need some legislative and judicial interpretation is Article 40(5) which states: “The State shall support, promote and protect the intellectual property rights of the people of Kenya”. This provision alone could form the basis of a constitutional challenge by Kenyan tobacco companies if the government decided to propose a law similar to the Australia’s Tobacco Plain Packaging Act 2011. In addition, Big Tobacco in Kenya may chose to rely on other persuasive arguments mentioned above such as the potential increase of smuggled and/or counterfeit tobacco products and its effect on illegal and organised crime in the country.
If our government was desirous to push for such legislation, it would argue that intellectual property rights must be balanced with other fundamental rights and freedoms also enshrined in the Constitution. In a recent High Court case discussed by IPKenya here, the court considered the intellectual property rights of pharmaceutical manufacturers protected in the Anti-Counterfeit Act but held that the provisions of this Act denied Kenyans access to essential HIV medicines therefore it violates the right to life of Kenyans as protected by Article 26 (1), the right to human dignity guaranteed under Article 28 and the right to the highest attainable standard of health guaranteed under Article 43 (1). The rights under Articles 26(1), 28 and 43(1) of the Constitution in addition to Article 42 on the right to a clean and healthy environment can be relied upon by the State in support of a plain packaging law.
Within Africa, it is reported that South Africa’s government has already expressed its intention to follow Australia’s controversial new tobacco law.