2018 Proposed Amendment to The Protection of Traditional Knowledge and Cultural Expressions Act

TK and TCE Act Kenya Amendment Bill 2018

The Statute Law (Miscellaneous Amendments) Bill, 2018 seeks to make various, wide-ranging amendments to the existing intellectual property (IP) law-related statutes. The Bill contains proposed amendments to the following pieces of legislation: The Industrial Property Act, 2001 (No. 3 of 2001), The Copyright Act, 2001 (No. 12 of 2001), The Anti-Counterfeit Act, 2008 (No. 13 of 2008) and The Protection of Traditional Knowledge and Cultural Expressions Act, 2016 (No. 33 of 2016). The Memorandum of Objects and Reasons for the Bill is signed by Hon. Aden Duale, Leader of Majority in the National Assembly and it is dated 29 March 2018. This blogpost will focus on the proposed changes proposed to The Protection of Traditional Knowledge and Cultural Expressions (TKCE) Act.

In our previous commentary on the TKCE Act (see here), we raised concerns about the lack of an implementation and enforcement framework thus terming the Act as an ‘orphan’ with no clear parent Ministry. Two years later, the 2018 Bill now proposes to amend section 2 of the TKCE to state that ‘the Cabinet Secretary for the time being responsible for matters relating to culture’ shall oversee the implementation and enforcement of the TKCE Act.

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#ipkenya Weekly Review (18th-25th May, 2014)

gado cartoon anglo fleecing corruption AG

Since our last weekly review, the Minister in charge of Copyright and Related Rights in Kenya namely, the Attorney General has under siege for his alleged involvement in the Anglo Leasing contracts scam. This blogger has the full story here. As always, your comments are invited.

Meanwhile in the intellectual property (IP) world, here are some of the top news and views from Kenya and beyond:-

– OpenAIR presents its findings at WIPO Seminar on Intellectual Property & the Informal Economy [WIPO YouTube]

– Copyright Society of Nigeria signs historic royalty agreement with 400-member umbrella body for broadcasters [COSON]

– No More Substantive Examination of Utility Models in Kenya [AfroIP]

– Hidden Treasure and the New Colonialism: Why South Africa Must Protect Its Intellectual Property [SACSIS]

– Nigeria: Nollywood from an intellectual property perspective [WIPO Magazine]

– Kenya: The Maasai ‘Shuka’ Has Evolved Into A Brand [The Star]

– South African Tech firms can now transfer intellectual property offshore [TechCentral]

– Tanzania: Copyright Society and Revenue Authority devising a banderole system for copyright administration [TZ Daily]

– Nigerian Economy Loses N82 Billion Yearly to Software Piracy – BSA [Daily Independent]

– Kenya: The First Thing We Do, Let’s Kill All The Lawyers [BrainstormKE]

– IP Rights and Digital Content: Kenya’s New Headache [ModelEmployee254]

Kenyan Cattle Herdsboy Seeks Petty Patent Protection for “Lion Lights” Invention

turere-1-600x397 by WildlifeDirect

For those who may not know, IPKenya’s friend Dr Isaac Rutenberg is the voice behind a series of blog articles over at the Afro-IP blog dubbed “Diary of A Patent Lawyer in Kenya”. In his latest entry, he explains that he was “helping a 14-year old Kenyan attempt to secure IP rights after he had designed a system useful in rearing domestic livestock as well as in wildlife conservation.” He further discloses: “At our inventor’s [the 14-year old Kenyan’s] request, and with the guidance of a local wildlife conservation group, we prepared and filed a Utility Model Certificate application.”

This blogger is strongly convinced that the Utility Model (UM) application in question is in respect of the “Lion Lights” invention by young Richard Turere and supported by WildlifeDirect, in particular CEO, Dr. Paula Kahumbu.

Earlier this year, the Daily Nation published a story about a 13 year old boy Richard Turere: “the young Maasai boy who figured out how to scare off lions by irritating them with flash lights.” According to WildlifeDirect, a local wildlife conservation group, Turere was discovered while the group was working on a project to find new ways to reduce human lion conflict in the Kitengela area just south of the Nairobi National Park in Kenya.

Turere’s invention was born out of a necessity to protect his family’s cattle herd from carnivorous predators, especially lions since they lived right on the edge of the Nairobi National Park. Turere is said to have used his knowledge of lions’ fear of flashing lights to devise an automated lighting system made up of torch bulbs, a box, switches, an old car battery and a solar panel. According to reports, Turere’s lights are “designed to flicker on and off intermittently, thus tricking the lions into believing that someone was moving around carrying a flashlight”.

Lion Lights Invention Richard Turere Wildlife Direct

It is reported that “since Turere rigged up his “Lion Lights,” his family has not lost any livestock to the wild beasts, to the great delight of his father and astonishment of his neighbours.” This invention has become very popular and “around 75 “Lion Light” systems have so far been rigged up around Kenya”. With the support of WildlifeDirect, Turere has presented his invention at the well known TED Conference in 2013 and obtained a scholarship to one of Kenya’s top private preparatory schools.

Comment:

Right off the bat, this blogger was pleased with some of the the comments in the original Daily Nation story about Lion Lights where a couple of ordinary Kenyans wondered whether Turere had obtained patent protection for his invention.

Lion Lights Invention DN comments

These comments demonstrate an increased awareness of intellectual property, its value and the importance of securing IP rights.

Secondly, I salute Dr Rutenberg and his team over at CIPIT for the good work they are doing in helping Kenyans like Turere to identify, understand, protect and promote their IP rights using the various IP systems available in Kenya.

QOTD: Do You Own the Rights to Artistic Works Purchased at the Maasai Market?

 

maasai-market-by-bulinya

The “Maasai market” (not represented here) is an open-air market where shoppers can find curios, paintings, drawings, clothes and fabrics with Kenyan prints, jewellery and wood-carvings, hand-made by local artisans. The venue for the Maasai Market rotates between different shopping centres and other locations within Nairobi. For tourists and locals alike, the prices at Maasai Market are very negotiable subject to one’s bargaining prowess and ability to haggle down to the last cent. No receipts are issued for purchases made at the Maasai Market nor should a purchaser expect any warranties or guarantees on items sold at the Maasai Market.

This leads us to our question of the day (QOTD) which is:

If someone buys a painting from an art gallery the Maasai market, do they simultaneously buy the copyright and all rights under that copyright? Can the artist subsequently make copies or postcards of the painting that he/she sold? Can the buyer make postcards of the painting and sell them?

From the explanations above, it is clear that all works sold at Maasai market are subject to copyright protection mainly under the category of artistic works. Further, it must be assumed that these artistic works are sold either by the authors themselves, authorised agents or representatives of the authors.

One possible answer to the QOTD would be in the affirmative on condition that the purchaser waits fifty years after the end of the year in which the author of the artistic work dies. In the event that the identity of the author is unknown (which may be the case with Maasai market works), the purchaser would have to wait 50 years from the end of the year in which the artistic work was first created/published.

However, this blogger submits that there is a better answer to the QOTD. In the context of a Maasai market purchase, it appears that that there is no clear assignment of copyright and exclusive license to carry out any of acts controlled by copyright, including reproduction, adaptation and making of derivative works i.e. post cards. This is because section 33(3) of the Copyright Act provides that such assignment of copyright and exclusive license must be in writing signed by or on behalf of the assignor or licensor of the Maasai market work, as the case may be.

Nonetheless, this blogger argues that the purchaser of a Maasai market work enjoys a non-exclusive license to do any act the doing of which is controlled by copyright. According to section 33(4) of the Act, this non-exclusive license need not be in writing and may be oral or inferred from conduct. The Act however provides that such non-exclusive license may be revocable at any time unless granted by contract.

Therefore, for any IP lawyer, the solution to the uncertainty in ownership of rights to Maasai market works may be resolved by simply having something in writing along the lines of:

“I,……the Author hereby irrevocably assigns, conveys and otherwise transfers to…… the Assignee, and its respective successors, licensees, and assigns, worldwide, all right, title and interest in and to the works, and all proprietary rights therein, including, without limitation, all copyrights, trademarks, patents, design rights, trade secret rights, economic rights, and all contract and licensing rights, and all claims and causes of action with respect to any of the foregoing, whether now known, or hereafter to become known.”

This may be food for thought next time you’re strolling past the Maasai market and something catches your eye.

Benefit Sharing Deal for San & Khoi Communities Should Inspire the Maasai

Tom Lalampaa and Prince William

The Atlantic published an article titled: “The Maasai People Take Back Their Brand” in which it highlights the efforts of UK-based non-profit Light Years IP in helping the Maasai “trademark its customs and name and claim a share of profits” made from the use of its name by European companies such as Land Rover and Louis Vuitton. Readers of this blog will no doubt confirm that this misleading article by the Atlantic appears to have gone viral and has been widely shared, re-posted, tweeted and retweeted. (See previous stories on the “Maasai brand” by the Guardian and BBC.)

While the Atlantic article continued to flood the internet, the news24 network in South Africa issued a press release announcing that a benefit-sharing agreement was signed between Cape Kingdom Nutraceuticals, the South African San Council (SASC) and the National Khoisan Council (NKC). Michael Stander, Managing Director of Cape Kingdom Nutraceuticals – a Cape Town-based company that acquires and processes the buchu plant in South Africa – is quoted as having said that:

Read the rest of this article here.

The Maasai Intellectual Property Initiative: Why Should Others Do Pro-Bono IP Work For Kenya?

AFRICA IP TRUST EVENT 2013 INVITE MAASAI IP INITIATIVE LIGHT YEARS IP

In a recent media report titled: “Maasai elders swap Kenya for Holborn Viaduct”, the global law firm Hogan Lovells has reportedly invited Maasai elders to the United Kingdom (UK) as part of its intellectual property (IP) pro bono work. As the report explains:

The firm has been doing intellectual property (IP) pro bono work, led by partner Sahira Khwaja, to try to secure a trademark for the tribe after the recognisable Maasai image has been used repeatedly used in advertising campaigns without any of the spoils making their way back to the tribe itself.
Lovells is working with Elders from the Maasai of Kenya and Tanzania through charity Light Years IP,  which helps developing country producers win ownership of their intellectual property – should they choose to.

Light Years IP is a non-profit organization dedicated to alleviating poverty by assisting developing country producers gain ownership of their intellectual property and to use the IP to increase their export income and improve the security of that income. The Maasai Intellectual Property Initiative (MIPI) was founded by Light Years IP who designed a 7 point plan and IP strategies for the Maasai to achieve control over their iconic brand.

According to Light Years IP CEO, Ron Layton:

…the Maasai people have not yet decided on trademark ownership or appointment of Hogan Lovells to carry out trademark work. The Maasai elders are visiting London to obtain information to assist their community make such decisions. Above all, Light Years IP seeks for respect to be shown to the Maasai. Hogan Lovells are assisting Light Years IP in a range of work.

Comment:

First off, this blogger is ashamed that Kenya’s leading IP firms would rather religiously ‘network’ at International Trademark Association (INTA) Annual Meetings than take up worthy pro-bono IP matters such as MIPI.

Read the rest of this article on the CIPIT Law Blog here.