Endless wrangles in Kenya’s collective management system have made us all experts in copyright law. The thorny question of how and to what extent key players in the collective administration of copyright and related rights must comply with the Constitution remains a hotly debated topic. This brings us to a recent judgment by the High Court in the case of Laban Toto Juma & 4 Others v. Kenya Copyright Board & 2 Others Consolidated Kakamega Petition No. 3B of 2017 delivered on 13 July 2018. A copy of this High Court judgment is available here. Not surprisingly, both sides in this see-saw legal battle are claiming victory following the court’s final verdict. So, this blogpost will attempt to examine the key issues tackled by the court in its judgment as well as some of the questions that have been left unanswered.
The word ‘Disconnect’ (see caption image above) may be the title of the latest Kenyan blockbuster film but it also embodies the current raging debate over proposed changes to The Anti-Counterfeit Act No. 13 of 2008. In our previous blogposts here and here, we have largely dwelt on the demerits of the proposals contained in the Statute Law (Miscellaneous Amendments) Bill 2018, which if enacted, would radically affect intellectual property (IP) enforcement in Kenya, principally undertaken by Anti-Counterfeit Agency (ACA).
Meanwhile, some readers of this blog, who happen to be IP practitioners specialising in brand enforcement and anti-counterfeiting matters, have rightly pointed out that it is equally important to consider the merits of and benefits expected from the proposed changes to the Act if and when the omnibus Bill is enacted. In particular, this blogpost will focus on the proposals relating to offences and the ‘recordation’ requirements.
The raison d’etre of the collective administration or collective management system in copyright law is to bridge the gap between rights holders and users of copyright works. So, what happens when collecting societies, or as they are commonly called collective management organisations (CMOs), fail to carry out this core function and instead become poster children for corruption, mismanagement, lack of transparency, and abuse of power?
Back in 2013, Jonathan Band and Brandon Butler published an insightful article titled ‘Some Cautionary Tales About Collective Licensing’ which exposed the dark side of CMOs around the world. This blogger was pleased that some of our work in the context of CMOs in Kenya was featured in the article, specifically the on-going wrangles between Music Copyright Society of Kenya (MCSK) and literally everyone else including the copyright regulator, copyright owners, copyright users and even other Kenyan CMOs in the music industry.
“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).
Readers of this blog will recall a previous report here that the Anti-Counterfeit Agency (ACA) reinvigorated under the chairmanship of Polycarp Igathe took the unprecedented step of sending four of its senior officers on compulsory leave following numerous complaints from manufacturers, specifically, owners of intellectual property (IP) rights, against the officers who are allegedly engaged in misconduct and defeating the very purpose for which they were engaged in combating counterfeiting. The ACA officers sent on compulsory leave included; Deputy Director for Enforcement, Prosecution and Legal Services Mr. Johnson Adera, Assistant Director for Enforcement Mr. Abdikadir Mohamed, Anti-Counterfeit Inspector II Mr. Weldon Kiprotich Sigei and Anti-Counterfeit Inspector I, Mr. Sammy Arekai Sarich.
The good folks over at The Scinnovent Centre have just published a new study titled: “Industrial Property Rights Acquisition in Kenya: Facts, figures and trends”. This March 2015 study was carried out with the aid of a grant from the International Development Research Centre (IDRC) with the partnership, support and guidance of Kenya Industrial Property Institute (KIPI) and National Commission for Science, Technology and Innovation (NACOSTI). The study used KIPI’s database of all industrial property applications and grants since its inception in 1990 to date (2014) and sought to answer four key questions: (i) Where do the inventions come from? In other words who owns the industrial property protected in Kenya? (ii) How does foreign (international) applicants compare with national (domestic) applications? (iii) In which economic sectors are the most industrial property applications registered? (iv) what are the key challenges/ bottlenecks faced by the applicants?
The data analysed in the study consists of the records of KIPI registry database on the filings, grants and registration of the IP protections for patents (1990 – 2013); utility models (1993 – 2013) and industrial designs (1991 – April 2014). The samples consisted of 2388 patents, 396 utility models and 1392 industrial designs. The study does not include data relating to patent, utility model and industrial design applications filed and granted through African Regional Intellectual Property Organization (ARIPO).
A study commissioned by the International Chamber of Commerce (ICC) Business Action to Stop Counterfeiting and Piracy (BASCAP) initiative reports that Kenya’s current intellectual property (IP) rights regime performs poorly in international gauges, ranking 95th of 130 countries in the IPR Index and 106th of 140 economies in the Global Competitiveness Index 2010. The BASCAP report, “Promoting and Protecting the Value of IP in Kenya”, sets out BASCAP’s recommendations for policy and legislative changes needed to bring Kenya’s IP regime and IP enforcement efforts up to international standards.
The full 2013 BASCAP Report is available here.
+ Address deficiencies in criminal IP law and procedures, particularly fines and penalites in the Anti-Counterfeit Act
+ Improve border enforcement provisions in the Anti-Counterfeit Act
+ Address deficiencies in the Copyright Act, 2001, particularly penalties for infringement and delineation of KECOBO and ACA mandates.
+ Improve and expedite civil enforcement procedures, and procedures with respect to the Trade Marks Act, 2001.
+ Grant powers to the ACA to settle matters out of court under the Anti-Counterfeit Act, 2008 in addition the power to destroy counterfeit goods and impose fines.
+ Establish an inter-agency approach between the different Kenya Agencies administering and enforcing IP rights.
+ Establish an inter-agency approach with private sector coordination.
+ Expand IP-related administrative and technical capacity building
+ Increase public and political awareness of counterfeiting and piracy and the associated economic and social harm.