Idea/Expression Murkiness: Court Ruling in Nation Media Copyright Suit over ‘LIT 360’ Simulcast Show

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Like clockwork, behind every mega corporate launch in Kenya is a law suit over allegedly ‘stolen’ intellectual property (IP). In a recent High Court ruling in Incognito Productions Limited & another v Nation Media Group [2018] eKLR, the learned judge appeared to sympathise with the Plaintiffs but not enough to grant their application for a temporary injunction against the Defendant, one of Kenya’s largest media conglomerates that recently rolled out a multi-million shilling project dubbed ‘Lit Music’.

The face of Lit Music (which is really just a record label) is ‘LIT 360’, a 1-hour programme made available simultaneously on Nation’s radio, television and digital platforms. LIT 360 was designed with the aim of talent scouting, soliciting and harvesting content, as well as distribution, marketing and promotion of musical talent. As readers may have undoubtedly figured out by now, the Plaintiffs’ claim is that Nation unlawfully appropriated their concept which underlies Lit Music and LIT 360 based on a series of confidential business proposals made to Nation by the Plaintiffs between July 2016 and March 2017.

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Mobile Developer Claims Copyright over Songa Music App by Safaricom, Radio Africa

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The recently reported High Court case of Evans Gikunda v. Patrick Quarcoo & Two Others [2018] was born out of a business deal gone bad. At the heart of this dispute is a music application (app) that the plaintiff (Gikunda) claims to have conceptualised, designed and developed between 2012 and 2016. However Gikunda joined the employ of the 2nd Defendant (Radio Africa Group Limited) in 2013 where the 1st Defendant (Quarcoo), the Chief Executive at Radio Africa, ‘persuaded Gikunda to partner with him to ensure that the product gets to market’.

According to Gikunda, Quarcoo proposed that that once Radio Africa’s Board of Directors sanctioned its participation in his app, they would share out the ownership of the app as follows: Radio Africa – 40%; Gikunda- 30%; Quarcoo- 20%; and the remaining 10% to a strategic partner. However, in mid-2016, Gikunda resigned from Radio Africa after which he alleges that Quarcoo and Radio Africa sold the app, without his knowledge, to the 3rd Defendant (Safaricom).

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Copyright Dispute over Safaricom’s “BLAZE” Campaign: Transcend Media Granted Anton Pillers Against Saracen Media

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“We wish to underscore the importance of fostering creativity through respect and protection of intellectual property rights of others. A nation cannot be built on disregard for originality and promotion of copy cats.” – Excerpt from a press statement by Transcend Media Group.

This blogger has come across the recent case of Transcend Media Group Limited v. Saracen Media Limited & 2 Ors Civil Case No. 3644 of 2016 in which Senior Magistrate E.K Usui has granted temporary injunctive orders sought by Transcend, the applicant against Saracen and the two other respondents. The court granted Anton Piller orders allowing Transcend to enter the premises of the respondents to preserve, seize, collect and keep machines, data, documents and storage material relating to Transcend’s copyright work under the supervision of Kenya Copyright Board (KECOBO) officers. In addition, the respondents have been restrained by the court from any further infringement, alienation, distribution and storage of Transcend’s copyright work pending hearing of the suit.

According to a Business Daily report here, the genesis of this copyright dispute is a Sh208 million tender by Safaricom seeking to procure the services of an advertising agency to handle the mobile network operator’s youth segment brand communication which is now called BLAZE. Transcend submitted its strategy proposal and creative body of works to Safaricom but lost the bid to Saracen. Transcend alleges that Safaricom awarded the business to Saracen and a Company (Fieldstone Helms Limited) owned by former Transcend staff who were involved in Transcend’s bid including the team leader. As a result, Transcend claims that Fieldstone Helms is now “illegally implementing” Transcend’s intellectual property (IP).

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Kenya’s Leading IP Professionals According to 2015 Edition of World Trademark Review 1000

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“As more and more companies look to Africa for strategic growth, and as intellectual property (IP) becomes increasingly important to the continent’s economic agenda, trade mark activity in Kenya – the gateway to the East African market – has flourished.” – World Trademark Review 1000 – The World’s Leading Trademark Professionals.

In a previous blogpost titled “Fading Giants and Rising Stars: Opinion on Performance of Intellectual Property Law Firms in Kenya”, we considered some eleven Kenyan law firms known to have established IP practices, namely Kaplan & Stratton Advocates (K&S), Hamilton Harrison and Mathews Oraro Advocates (HHM Oraro), Iseme Kamau & Maema Advocates (IKM), Ndungu Njoroge & Kwach Advocates (NNK), Coulson Harney Advocates (CH), Daly & Figgis Advocates (D&F), Gichachi & Company Advocates (G&C), Simba & Simba Advocates (SS), J.K Muchae & Company Advocates (JKM), CFL Advocates (CFL) and Muriu Mungai & Company Advocates (MMC Africa). From the data presented, it was clear that the erstwhile dominance of K&S has receded with CH leading the way in trade mark prosecutions.

WTR 1000 2015 Firm Rankings kenya This week the 2015 World Trademark Review 1000 rankings were published online here. These WTR 1000 rankings confirm this blogger’s view to the effect that “heightened competition has raised standards even higher across the board.” Nine firms made it to this year’s WTR 1000 list ranked as follows: 1. CH (Gold); 2. IKM (Gold); 3. K&S (Gold); 4. CFL (Silver); 5. D&F (Silver); 6. HHM Oraro (Silver); 7. MMC Africa (Silver); 8. NN&K (Silver) and 9. S&S (Silver).

Among the three Gold Band firms in Kenya, CH’s review is the longest and most praiseworthy. The first two sentences alone of CH’s review contain a litany of superlatives like “unmatched”, “frontrunner” and “brightest” while CH’s Head of IP, John Syekei is described as “enormously popular throughout the region”. Syekei is once again ranked in the Gold Band of WTR 1000 Individuals behind IKM’s William Maema and K&S’s Peter Hime, who remains the top ranked IP professional in Kenya.

With its recent merger, HHM Oraro has become the largest firm in Kenya (17 Partners) and now has a whooping total of about ten (10) IP-savvy lawyers on its roster. This blogger expects HHM Oraro to attain the coveted Gold Band ranking if the merger is able to capitalise on its size and expertise to secure consistent big ticket commercial IP work. HHM Oraro’s swanky new website is available here.

It is impressive that CFL is ranked first among the Silver Band firms, which is truly a testament to the outstanding job being done by IP Partner Lorna Mbatia. Mbatia is credited with building “excellent relations with a raft of prominent US law firms, as well as top players in South Africa” which has made CFL “one of the fastest-growing trademark practices around.” According to WTR 1000 sources, Mbatia “has forged close ties with key personnel at different IP registries across East Africa; as a result, she is a great choice for clients with regional requirements.”

MMC Africa’s review stands out among all other ranked firms given its creative approach to IP practice. According to WTR 1000 sources, MMC has moved from being “reliant on instructions from foreign companies” to “fielding requests from an increased number of locals, thanks to its extensive non-billable work in educating domestic entities on the importance of trademark protection”. MMC’s IP Team is led by Nancy Karanu who is credited as an “effective motivator of her team” and “forward-thinking associate” Peter Kamero. Kudos to MMC’s Kamero who is the only Associate in the WTR 1000 Individuals rankings.

WTR 1000 2015 Individuals Rankings Kenya

This blogger wonders whether D&F, a newcomer on the WTR 1000 list, will survive the fierce competition among IP law practices. In this regard, many will recall the exodus of four key partners from D&F to CH in late 2014, including Njau Mukuha who is cited by the WTR 1000 as the Partner who “oversees the IP practice” at D&F. As D&F regroups, the three-way contest between indigenous firms NNK, G&C and SS will continue for the top spot among the Silver Band law firms.

Watching World Cup 2014 in Kenya: FIFA’s Media and Public Viewing Rights

Tonight the Brazil 2014™ FIFA World Cup™ (WC) kicks off in the South American nation of Brazil! As previously discussed here, FIFA has developed and protected an assortment of logos, words, titles, symbols and other trade marks to be used in relation to the 2014 FIFA World Cup™ (the Official Marks). In order to attract funding to stage such a large event, FIFA offers its partners, sponsors and supporters the exclusive rights to use of the Official Marks for promotional and advertising purposes.

In this post, we shall consider FIFA’s intellectual property (IP) rights in the broadcasts and public view of the WC. It is clear that all copyright and other (IP) rights subsisting in, and all goodwill associated with, broadcast coverage of the WC are exclusively owned by FIFA and protected by domestic and international law. In this regard, FIFA distinguishes between broadcasters who are defined as Media Rights Licensees and exhibitors who stage Public Viewing Events in relation to any matches of the 2014 FIFA World Cup Brazil™.

Read the full article here.

Intellectual Property and Anti-Homosexuality Law Collide: The Case of David Robinson vs. Red Pepper Uganda

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In a recent article in the New York Times here, it is alleged that Ugandan tabloid newspaper Red Pepper infringed the copyright of Denver David Robinson, the photographer behind the photographic project titled: “We Are Here: LGBTI in Uganda” which was published by The Advocate, an American L.G.B.T. magazine here.

From an intellectual property (IP) perspective, this blogger aims to discuss Robinson’s claim against Red Pepper and the extent to which the provisions of fair use under Ugandan copyright law would be applicable. In addition, this blogger will also consider the moral rights issues that may arise in this case.

Read the full article here.

Intellectual Property and Outdoor Advertising in Kenya

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Businesses often spend much time and money to create a successful advertising campaign. It is important to protect your intellectual property (IP) assets, so that others do not unfairly copy or free-ride upon your innovative creations.” – Lien Verbauwhede, WIPO.

Like in many parts of the world, the advertising sector in Kenya is the new battle-ground upon which businesses compete to creatively and uniquely pass on relevant information to customers so as to facilitate and positively influence their buying decisions. It is generally agreed that for an advertisement to be effective, it must first get noticed, and then be remembered long enough to persuasively communicate the unique selling proposition of a product or service, so as to make potential customers into actual ones. Outdoor advertising, in particular, is considered a cost effective way of giving messages the maximum exposure. Outdoor advertising includes billboards, outdoor signs, printed messaging, street banners, posters, brochures etc.

This blogger has noted an increase in the number of creative new outdoor advertisements by both medium-sized and large companies leading to a surge in the number of billboards along streets, highways in urban areas. Billboards are so far the preferred medium for outdoor advertising. there are several types of intellectual property rights that are involved in billboard advertising. For instance, most of the creative content on the billboard (writing, pictures, art, graphics, lay-out) may be protected by copyright along with any advertising slogans which may also be protected by trademark law.
In addition, industrial design law may be crucial for protection of billboards. Industrial designs cover the three dimensional form of billboards provided that such form gives a special appearance to a product of industry and can serve as a pattern for a product of industry. In the case of ENG Kenya Ltd v Magnate Ventures Ltd (2009), both the plaintiff and defendant carried on business in the outdoor advertising sector and the plaintiff alleged that the defendant had infringed on the plaintiff’s design for ‘suburban signs’. The court held that the registration of the plaintiffs’ design at the Kenya Industrial Property Institute (KIPI) was proof enough that the design was unique and capable of registration. The plaintiff could therefore claim exclusive right to the design. The court further stated that the defendant copied the plaintiffs’ design in bad faith.

For printing and branding companies, it is important to be very conscious of IP issues in their various advertising solutions. In this regard, the case of Alternative Media Ltd v Safaricom Ltd (2004) is instructive. The plaintiff, who is in the business of advertising graphic designing and media communication solutions, sued the defendant claiming copyright infringement on the plaintiff’s design that it had submitted to the defendant as a proposal to be used on the 250 airtime scratch cards. The court held that the defendant had indeed infringed on the plaintiff’s rights under copyright law because the design they used on their airtime scratch cards was substantially the same as the one submitted by the plaintiff to them as a proposal.

Another exciting area of outdoor advertising is transit advertising. This blogger has previously highlighted the Triple P Media project which involves advertising fused with high-quality custom-made audio and audio-visual content playing in public service vehicles (PSVs) countrywide, in addition to other public places like supermarkets, malls, banking halls, bars, clubs, restaurants etc. There is also the promising innovation by FlashCast Ventures, who have developed a method of scrolling advertisements via LCD displays installed in PSVs. These LCD screens are fitted with global positioning system devices hence messages are programmed to be location specific. This means it is possible to preset a commercial on a supermarket to run when the bus is within its proximity and broadcast special offers, promotions, and goods available. Although geo-local transit advertising may not meet the threshold of absolute novelty required for patent protection in Kenya, there may be other aspects of FlashCast that may be patentable or eligible for industrial design and utility model protection.