#ipkenya Weekly Dozen: 01/06

Nigeria World Cup Nike Kit Sold Out 2018

  • Nigeria’s World Cup kit sells out in 15 minutes [BBC]
  • Rwanda’s £30m Arsenal sponsorship divides opinion [The Guardian]
  • Uganda imposes tax on social media use [Reuters]
  • Cameroon: 3rd Meeting of the ARIPO-OAPI Joint Commission on Intellectual Property [In French]
  • Tanzania: AY and Mwana FA awarded Sh96 million against telco giant [SDE]
  • Court rules SONY is not a well-known brand in Kenya [Business Daily]
  • Music Copyright Society of Kenya Now Banned from Collecting Music Royalties [Captain Obvious]
  • New South African IP Policy Text Now Available [Official]
  • Some concerns on advertisements in Ethiopia [The Herald]
  • Running the gauntlet: making wise patenting decisions [Dennemeyer IP Blog]
  • MaXhosa v Zara [Stellenbosch IP Chair]
  • Winners of the 2017 ATRIP Essay Competition Announced [ATRIP]

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!

High Court Declares Appointment of Anti-Counterfeit Agency Inspectors Unconstitutional

anti-counterfeit-agency-aca-mombasa-ask-show-2015-2016-kenya

“In my view fresh appointments to the positions of inspectors must be open to the public and such positions must be advertised. It therefore does not matter whether the interested parties were handpicked by the Board or Mr Igathe [Former Chairman of ACA Board of Directors]. The era of handpicking persons and appointing them as public officers was in my view buried with the retired Constitution and has no place in the current constitutional dispensation.” – Odunga J at para. 39.

In a recent judgment in the case of Republic v Anti-Counterfeit Agency Ex parte Moses Maina Maturu [2016] eKLR, the High Court quashed Gazette Notice No. 9451 published on 24th December, 2015 appointing several individuals (enjoined in the suit as interested parties) as inspectors of Anti-Counterfeit Agency (ACA). According to ACA, the present suit was a scheme to paralyze its operations instigated by persons who have been behind several court cases, which ACA has been forced to defend thereby directing its resources away from the fight against counterfeiting.

Continue reading

In Regulation We Trust: Kenya Copyright Board Proposes New Set of Administration and Enforcement Provisions

kenya copyright board kecobo

To date, Kenya Copyright Board (KECOBO) has published two sets of draft proposals of amendments to the Copyright Act on collective management organisations (CMOs) available here and on intermediary liability for internet service providers available here. KECOBO has now published a third set of draft legislative proposals namely a draft copyright regulations 2016 available here. These three sets of draft proposals will be the subject of a day-long consultative public forum to be held next week on February 11th 2016 at the Auditorium of NHIF Building starting at 8:00am. For those who will not be able to attend the public forum, KECOBO has set up an email account to receive your comments on the drafts, which is: publicforum@copyright.go.ke. This blogpost is a commentary of the key features of the draft copyright regulations 2016 proposed by KECOBO.

Continue reading

High Court Upholds Freeze of Collecting Society’s Bank Accounts: Ruling in MCSK v Chief Magistrate, Inspector General

Music-Copyright-Society-of-Kenya-MCSK-CEO-Maurice-Okoth People Daily

This blogger has recently come across an astute ruling by the High Court in the case of Music Copyright Society of Kenya v Chief Magistrate’s Court & Inspector General of Police [2015] eKLR. Justice L. Kimaru sitting in the High Court was approached by the authors’ collecting society, Music Copyright Society of Kenya (MCSK) to stay orders issued by the Magistrate’s Court freezing all the bank accounts of MCSK following a request by the Serious Crimes Unit under the Directorate of Criminal Investigations (DCI). DCI requested that MCSK’s accounts be frozen as it investigates complaints made by MCSK members in regard to alleged misappropriation and theft of funds at the collecting society.

After carefully evaluating the facts before him, Kimaru J ruled that the investigations were lawful and based on several complaints received by DCI from MCSK members and that the orders to freeze MCSK’s accounts were within the precincts of the law.

Continue reading

Kenafric ‘Fuma’ Footwear Denies Counterfeiting Claims by Puma

Kenafric Fuma Footwear

This blogger has previously blogged here and here about Kenafric’s fatal attraction to well-known trade marks, to put it mildly. The latest victim of Kenafric’s attraction is none other than Puma AG Rudolf Dassler Sport (Puma for short). In this connection, this blogger came across a recent ruling in the case of Kenafric Industries Limited & another v Anti-Counterfeit Agency & 3 others [2015] eKLR.

In this case, Puma through its representative Paul Ramara lodged complaints at Anti-Counterfeit Agency (ACA) against Kenafric for trade mark infringement. ACA and Ramara went to Kenafric’s premises and demanded to check the same for goods in the name of Puma a demand Mikul Shah a director at Kenafric declined to comply with due to the fact that his company had not been served with any Court order directing the said search and entry. Consequently, Shah was arrested, taken to Ruaraka Police Station and charged with the offence of obstruction and released on bond.

Continue reading

High Court Affirms Role of Collecting Society in Copyright Enforcement: Case of Ruma Lodge v. MCSK

This blogger has recently come across a recent judgment of the High Court in the case of Maurice Owino Onyango v Music Copyright Society of Kenya [2015] eKLR. In this case, Music Copyright Society of Kenya (MCSK), the sole collecting society or collective management organisation (CMO) for authors, composers and publishers of musical works, was the respondent in an appeal in the High Court challenging the decision of the Magistrates’ Court in a case filed against MCSK for malicious prosecution. Majanja J sitting in the High Court found in favour of the CMO and upheld the judgment of the lower court.

A copy of the judgment is available here.

Continue reading

Copyright Society Successfully Appeals Malicious Prosecution Suit

Music Copyright Society of Kenya MCSK Press Conference

This blogger has recently come across a recent judgment of the High Court in the case of Music Copyright Society Of Kenya v Tom Odhiambo Ogowl [2014] eKLR. In this case, Music Copyright Society Of Kenya (MCSK), the sole collective management organisation for authors, composers and publishers of musical works, lodged an appeal in the High Court challenging the decision of the Magistrates’ Court in a case filed against MCSK for malicious prosecution. Majanja J sitting in the High Court found in favour of the CMO and set aside the judgment of the lower court. A copy of the judgment is available here.

On January 17, 2011, MCSK moved to the Ogwol’s premises at Sofia Estate, Homabay Town and impounded his electronic equipment on the ground that he was operating a business without a public performance licence issued by MCSK. On the next day, Ogwol was arraigned and charged at the Homabay Senior Residents Magistrates Court with the infringement of copyrighted musical works contrary to section 38(2) as read with section 38(7) and 38(8) of the Copyright Act, Act No. 12 of 2001. According to MCSK, its officers visited Ogwol’s premises and found that he was operating a hall where local and international videos were being shown and played to the paying public. MCSK alleged that Ogwol did not display or produce a Public Performance Licence issued by MCSK permitting him to relay copyrighted works in his premises. When confronted by MCSK officers accompanied by the Police, Ogwol is said to have “vanished from the premises” whereupon his electronic gadgets were impounded and subsequently this caused him to be charged. After the hearing of the prosecution case, the presiding magistrate found that the prosecution had not established a prima facie case and that Ogwol had no case to answer consequently he was acquitted under section 210 of the Criminal Procedure Code (Chapter 75 of the Laws of Kenya).

Following his acquittal, Ogwol instituted civil proceedings against MCSK for malicious prosecution. According to Ogwol, his arrest and arraignment in court at the hands of MCSK was actuated by malice and that as a result of the trial, he incurred expenses. In making its judgment in favour of Ogwol, the court found that: “[the] defendant [MCSK] and the agents [of] the 2nd defendant [Attorney General] by insisting to charge the accused yet no artistic author was identified fell short of the statutory obligation. By doing this they had no probable and reasonable cause for arresting and charging the accused. I further find that malice was proved.”. The Magistrate awarded Ogwol the sum Kshs. 200,000.00 as general damages against MCSK.

Aggrieved by this judgment in the Magistrates’ Court, MCSK filed the present appeal in the High Court. MCSK’s main contention was that the learned magistrate erred in law and in fact by making a finding on liability for malicious prosecution when none was proved. In particular, MCSK’s contention was that Ogwol had failed to prove that there was no reasonable and probable cause in instituting the criminal proceedings therefore judgment ought to have been entered against him in the lower court. In this connection, counsel for MCSK submitted that the reason for Ogwol’s arrest and charge was that he did not have or display a valid public performance licence from MCSK, a fact which Ogwol did not dispute. As a duly registered CMO under section 46 of the Copyright Act, it was submitted that MCSK went to Ogwol’s premises in order to enforce compliance with the Copyright Act, particularly the provisions of section 35 that all public performances of music required a licence which licence Ogwol did not have. Therefore MCSK contended that there was no proof of malice and that mere acquittal of the respondent was insufficient to prove malice.

JUSTICE DAVID MAJANJA

In a concise well reasoned judgment, High Court Justice Majanja finds favour with MCSK’s arguments and dismisses the judgments of both magistrates in the criminal and civil suits. Here are some of the poignant findings made by the learned judge on appeal:

“…Whether there was reasonable and probable cause is to be determined from the nature of the charge preferred by the police. The respondent [Ogwol] was charged with the infringement of copyrighted musical works contrary to section 38(2) of the Copyright Act (….)

In essence, the provision makes it an offence to cause the performance of a literary, musical or audio visual work protected by copyright in public where such a performance constitutes an infringement. While displaying a licence is one way of showing that owner of the premises has permission to cause the copyrighted work to be performed publicly, it is by no means necessary as the accused is entitled to show he acted in good faith and had no reasonable ground for supposing that copyright would or might be infringed.

With profound respect to the learned magistrates who dealt with the criminal and civil case, the offence had nothing to do with membership of a copyright society. The offence was prosecuted by the police and it applies in respect of all and any works where copyright subsists. A Collection Society, such as MCSK, is charged with collection of royalties on behalf of its members and safeguarding its members’ interests by ensuring that persons who play music publicly are duly licenced and if they are not, they are prosecuted and that is why lays a complaint with the police. It is entitled to lodge complaints with the police where reasonable grounds exist.

On the issue whether there was reasonable ground for belief that the respondent had violated section 38(2) of the Copyright Act, the respondent admitted that he was operating a business showing football matches to the public. He admitted that he was aware that he had to have a licence and to display it. The showing of football matches to the public is an “audio visual work” under the provisions of section 38(2) of the Act. A perusal of the proceedings in the criminal case show that the respondents shop was showing movies and playing music in the background. In view of the clear admissions by the respondent and the evidence, I find that there was reasonable and probable cause that that an offence had been committed under section 38(2) of the Act and the MCSK officers were entitled to lay a complaint against the respondent.”

Finally, the learned judge finds that the mere fact that a person has been acquitted of the criminal charge does not necessarily connote malice on the part of the prosecutor. Therefore Ogwol had no basis in law to claim that MCSK acted with malice by causing his arrest and arraignment in court.

This blogger is happy that MCSK elected to thoroughly litigate this matter and obtain a judicial pronouncement which ought to guide future cases in this area of copyright law.

Editor’s Note: At the time of this publication, this blogger served as MCSK General Counsel. All views expressed herein are his own and not those of MCSK

Anton Piller Orders Issued Against Kenya Broadcasting Corporation and One FM for Intellectual Property Rights Breach

IPKenya has been informed that the Music Copyright Society of Kenya (MCSK) conducted raids on two broadcasting stations, namely the popular urban radio station, One FM and the national broadcaster, Kenya Broadcasting Corporation (KBC) on January 31, 2014. These raids were carried out after MCSK successfully obtained Anton Piller orders in suits filed for copyright infringement.

In its application for Anton Piller orders against the two stations, MCSK’s lawyers relied on the following two grounds:

“1. The Defendant is engaged in and will continue to be engaged in unlawful broadcasting and reproduction of copyrighted musical works falling within the Plaintiff’s repertoire. Therefore this application seeks to enable the Plaintiff to take inventory and seize digital database(s) and libraries of musical works, related records and documents in the premises of the Defendant.

2. The Plaintiff has a well-founded apprehension that infringing copies of fixations of copyrighted musical works and related materials in possession of the Defendant will be hidden, disappear or will not be available at the time of the hearing unless this matter is heard as a matter of urgency and the orders sought granted.”

In the case of KBC, MCSK alleges that the national broadcaster owes over KES 3,000,000 in royalty arrears since 2012. This figure encompasses the controlled music content in KBC’s television station Channel One as well as its radio station. However, according to MCSK, the case of One FM illustrates the most flagrant infringement of copyright as the radio station has never taken out a broadcasting license from MCSK despite being in operation for several years. One FM’s royalty arrears are estimated to be well over KES 4,000,000.

On hearing the application by MCSK, the Court sitting at Milimani ordered that an order be issued under section 37 of the Copyright Act allowing MCSK by itself, its servants, employees or agents to access or enter the offices or premises of the Defendnat to observe and take inventory of all musical works the infringing stations broadcast.

A copy of the court order obtained against KBC can be viewed below. A similar order was issued against One FM:

KBC COURT ORDER

In a recent press statement, the Chief Executive at MCSK states:

“MCSK has over the past years been negotiating with some of the defaulting broadcasters and it was after lengthy negotiations where ONE FM, KBC and others in the pipeline, failed, refused and / or neglected to comply with the legal requirement for taking of broadcasting license from MCSK. There are several other broadcasting stations that have been lined up for Court action if they do not acquire the MCSK license such as MEDIA MAX LTD, SOUND ASIA.

MCSK shall be seeking a permanent injunction to restrain both ONE FM and KBC from broadcasting any and all musical works in KENYA since MCSK controls both local and international works. This could then mean that both ONE FM and KBC will be off air when the permanent injunction is granted.

It really would be a shame since the two media houses have positioned themselves as promoting local music yet they are not paying royalties. The local musicians who they seek to promote cannot at all benefit since no monies are paid to them by MCSK since no royalties are paid by the said media houses.”

Comment:

The recent Annual Global Economic Survey of Authors’ Society Royalty Collections by International Confederation of Authors and Composers Societies (CISAC) reveals that 7.8 Billion Euros was collected worldwide. 75% of these collections were from public performance royalties, which is predominantly made up of collections from broadcasters. Within the CISAC African region, MCSK is ranked in the top 3 highest royalty earners despite broadcasters in Kenya being among the lowest royalty payers in proportion to their music usage. It is estimated that MCSK stands to collect over KES 110,000,000 in royalty arrears from television and radio broadcasters spread throughout the country.

Current statistics from the Communication Commission of Kenya (CCK) indicate that there are over 100 licensed FM frequencies and over 15 TV frequencies therefore MCSK ought to be collecting about KES 52,000,000 annually in broadcasting royalties alone!

This situation will become even more interesting as Kenya expects a sharp rise in broadcasters once digital migration finally receives the green light from the Court of Appeal.