Recently, the much-awaited judgment in the case of Makate v Vodacom (Pty) Limited  ZAGPJHC was delivered by the South African High Court in Johannesburg. The case revolves around the “Please Call Me” (PCM) service whereby Vodacom allowed its subscribers to send FREE messages to anyone on all South African networks, asking them to call you. The idea behind this nifty service come from a former Vodacom trainee accountant Nkosana Makate who went to court seeking compensation from the telecommunications giant for the idea.
The thrust of Makate’s case was to enforce against Vodacom an oral agreement in terms of which the Vodacom (which was ostensibly represented by Geissler, as Makate claims) would take and test the idea and if it was successful, pay Makate an amount to be negotiated between by both parties, but which represented a share of the revenue generated by the product that was to be developed based on the idea.
The court, in its judgment, was prepared to accept an agreement with Geissler on the terms alleged by Makate had been concluded. However, the court ultimately held that Vodacom was not bound by the agreement entered into by Geissler since Makate had not shown that Vodacom made any representations as to Geissler’s authority to represent Vodacom in conclude the agreement or, even if it had, that the representations were such that Makate should reasonably have acted upon them. The court also found that Makate’s claim was time barred i.e. the debt claimed by Makate had prescribed in terms of the South African Prescription Act. This blogpost considers several intellectual property (IP) issues related to this case and possible lessons for Kenyans who come up with creative and innovative ideas within the course of employment.
Read the full article here.
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.
On this subject of well known marks, this blogger invites readers to listen to audio recordings of the presentations made by KIPI trade mark examiners during a workshop held in January 2014 available here. Readers may also wish to download Caroline Muchiri, Advocate’s powerpoint presentation made in February 2014 available here.
Below are my reactions (in bold) to some of the issues addressed in Caroline’s presentation
Read the full article here.
Editor’s note: This article is a commentary on the LSK CLE on Competition and Consumer Law on Feb 8, 2014 at the Hilton, Nairobi. Audio recordings of the various presentations made during the CLE have been uploaded here.
From an intellectual property (IP) perspective, the enactments of the Competition Act, 2010 and the Consumer Protection Act, 2012 have played a major role in balancing the interests of IP owners and IP users in Kenya. The Competition Act is a broad piece of legislation as it seeks to promote and safeguard competition in the economy whilst protecting consumer rights. The Consumer Protection Act was enacted with a view to consolidate various consumer protection provisions scattered in several pieces of legislation. In this regard, the 2012 Act governs the protection of the consumer and aims to prevent unfair trade practices in consumer transactions.
In this discussion of how IP intersects with consumer protection law and competition law, the point of departure is the Constitution of Kenya, 2010. The rights of the various categories of IP rights holders are guaranteed under Article 11, 40 and 69 of the Constitution, whereas the rights of IP rights licensees as users are guaranteed under Article 46 of the Constitution.
However it is important to note that, under Article 24 of the Constitution, none of these rights enshrined in the Bill of Rights are absolute in nature. This Article provides that a right in the Bill of Rights can be limited by law where that limitation is reasonable and justifiable in an open and democratic society, taking into account certain factors relating to the nature, extent, importance and purpose of the limitation.
In this connection, it is submitted that the Competition and Consumer Protection Acts introduce several limitations to the rights of IP owners, discussed below.
In the Competition Act, restrictive trade practices are defined to include any agreement, decision or concerted practice which amounts to the use of an intellectual property in a manner that goes beyond the limits of legal protection. However the Act provides for the grant of exemption for certain restrictive practices in respect of intellectual property rights. This blogger wonder whether de jure monopolies such as collective management organisations would be required to apply and obtain such exemptions.
In addition, the Act defines the abuse of dominant position to include abuse of an intellectual property right. This latter point is discussed by Guserwa, SC at 4:37 in the audio recording below, labelled: “Competition Law Issues in the Legal Profession”.
With regard to the provisions on extra-territorial operation and mergers in the Act, it is important to note the use of the word “asset” which is defined in section 2 as follows:
” “asset” includes any real or personal property, whether tangible or
intangible, intellectual property, goodwill, chose in action, right, licence, cause
of action or claim and any other asset having a commercial value;”
Another important section of the Act is part VI which deals with consumer welfare. This blogger submits that these consumer welfare provisions may have the effect of limiting some of the rights enjoyed by IP owners. These provisions are further enhanced by the Consumer Protection Act. Therefore it is noteworthy that the provisions in the Competition Act relating to false or misleading representations and unconscionable conduct are covered in the provisions relating to unfair practices under the Consumer Protection Act.
From an IP perspective, the consumer law provisions in these two Acts interact with IP at both international and national levels. At the international level, these consumer law provisions give effect to Kenya’s obligations under the Article 10bis of the Paris Convention. These obligations are reinforced by Article 2 of the TRIPs Agreement. At the national level, these consumer law provisions give effect to three IP legislations, namely the Copyright Act, the Trade Marks Act and the Anti-Counterfeit Act. In this context, this blogger argues that the definition of “supplier” in the Consumer Protection Act is broadly defined such that it includes owners of IP rights. Therefore the obligations and duties imposed on suppliers can therefore be extended to IP owners in their normal course of trade.
This blogger has learned that KECOBO is in the process of the review its CMO Guidelines titled “Guidelines for Licensing Collective Management Organisations”. These CMO Guidelines are available on KECOBO’s website here. Therefore, this blogger hopes to provide an in-depth examination of the Guidelines while making comments on important areas and issues connected with the Guidelines.
In coming up with these Guidelines, KECOBO explains in the opening paragraph that it is mandated under the Act to license and supervise CMOs in Kenya so to ensure that CMOs carry out their core function, namely the collection and distribution of royalties. It is noteworthy that since 2011 when the Guidelines were introduced, KECOBO has been enforcing these Guidelines against CMOs despite the fact these guidelines have no force of law. It is therefore advisable that KECOBO causes the inclusion of these Guidelines in Regulations to be made by the Minister (Attorney General) under section 49 of the Act.
Notwithstanding the legal force of these Guidelines, this blogger has the following comments to make on the Guidelines:
1. Title: this blogger suggests that the title of the Guidelines be amended to include “and Supervising”.
2. Public Notice: KECOBO may wish to include a time frame within which notices shall be published to increase KECOBO’s accountability and transparency. In addition, KECOBO may wish to specify which platform(s) will carry the public notices eg. local dailies with national circulation, KECOBO’s official website, KECOBO notice board?
3. Licensing: In the spirit of transparency and accountability, KECOBO may consider including a time frame within which licenses shall be processed once all application documents are submitted.
4. New Applications: The requirement under (g) appears vague and KECOBO may consider specifying what documents would be required to satisfy that the applicant has the “capacity for collection and distribution of the royalties”.
5. Renewal of License: To avoid duplication of documents submitted by licensed CMOs, the requirements of (a) and (b) should be removed. In the alternative, the requirement (b) should be qualified for cases where the memorandum and articles of association have been amended.
With regard to requirement (i), submitting individual deeds of assignment for each and every member may be onerous for most CMOs due to the sheer bulk of documentation to be produced. At any rate, KECOBO may decide to verify the deeds during an inspection visit to ensure that it corresponds with the list of members submitted.
6. Revocation of a license: The CMO Guidelines have made several additions to the grounds provided under the Act. However the wording and punctuation of this list of grounds for revocation is ambiguous as it does not disclose whether all the ten (10) listed grounds must be present for revocation or whether the presence of one or several grounds is sufficient.
In sum, this blogger submits that the Guidelines play an important role of supplementing the existing legal provisions on licensing and supervision of CMOs found in the Copyright Act, 2001 and Copyright Regulations, 2004. However these Guidelines ought to be given the force of law in order for KECOBO to enforce them against CMOs.
Editor’s note: The author currently works with MCSK however the views, opinions and analyses expressed herein are solely those of the author and are not those of his employers, both past and present.
Many years ago, this blogger landed in South Africa as a wide-eyed 20-something law student. With a meager budget to survive on, many of my classmates and South African friends may have forgiven me for making abundant use of PCM. PCM is short for “Please Call Me”, a revolutionary service whereby Vodacom allowed its subscribers to send FREE messages to anyone on all South African networks, asking them to call you. PCM was a great way of getting in touch when you didn’t have any airtime to make calls or send SMSs. It suffices to say that this nifty PCM function really came in handy in cases of emergencies.
Presently, media reports indicate that Vodacom is embroiled in a David-vs-Goliath law suit with a former employee who claims that he came up with the idea of PCM and is now seeking compensation from the telecommunications giant. The ex-employee’s name is Nkosana Makate and from various media reports, this is what we know so far.
Read the rest of this article here.