No Making Available Right, No Royalties from Multichoice Signal Distribution

GRH Consulting Diagrammatical View of Broadcasting Copyright Satellite Signal Distribution

This blogpost has been prompted by two recent developments in Kenya and Namibia. In Kenya, the High Court recently delivered a ruling in the case of Music Copyright Society of Kenya Limited & another v Multichoice (K) Limited & another [2016] eKLR in which the court dismissed the copyright infringement suit filed by the collective management organisation MCSK against Multichoice. Meanwhile in Namibia, a recent report here reveals one of the reasons why Southern African Music Rights Organisation (SAMRO) which receives royalties from Multichoice has failed to distribute them to other concerned African copyright societies.

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ARIPO Adopts Arusha Protocol for the Protection of New Varieties of Plants

Ghana signs Arusha Protocol for the Protection of New Varieties of Plants 2015 ARIPO

The ARIPO Protocol for the Protection of New Varieties of Plants has been adopted by the Diplomatic Conference that was held in Arusha, the United Republic of Tanzania on July 6-7, 2015. Hence the name of the adopted Protocol is: Arusha Protocol for the Protection of New Varieties of Plants. A copy of the Arusha Protocol is available here.

According to ARIPO, the Arusha Protocol seeks to provide Member States with a regional plant variety protection system that recognizes the need to provide growers and farmers with improved varieties of plants in order to ensure sustainable Agricultural production. Eighteen Member States of the Organization were represented at the Diplomatic Conference namely; Botswana, The Gambia, Ghana, Kenya, Liberia, Lesotho, Malawi, Mozambique, Namibia, Rwanda, São Tomé and Príncipe, Sierra Leone, Sudan, Swaziland, United Republic of Tanzania, Uganda Zambia and Zimbabwe.

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High Court Suspends New Tobacco Packaging Regulations: Ruling in British American Tobacco Kenya Ltd v. Cabinet Secretary for Health & 2 Ors

British American Tobacco Kenya

Previously, this blogger discussed here the Tobacco Control Regulations 2014 made by the Cabinet Secretary for Health published under Legal Notice No. 169 of 2014 in the Kenya Gazette Supplement 161, Legislative Supplement No. 156 of 2014 and scheduled to take effect on 1st June 2015. In a recent development, the High Court has delivered a ruling in the case of British American Tobacco Kenya Ltd v Cabinet Secretary for the Ministry of Health & 2 others [2015] eKLR ordering that the implementation of these Regulations be temporarily suspended.

British American Tobacco (BAT), the Petitioner, moved the Constitutional and Human Rights Division of the High Court under certificate of urgency for various conservatory orders staying the coming into force and implementation and/or operation of the Tobacco Control Regulations 2014. Among BAT’s list of grounds for seeking the conservatory orders, there was a claim that the implementation of certain requirements in the Regulations would result in an infringement of intellectual property (IP) rights held by BAT.

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How Laughter Works: XYZ Show, Parody and Intellectual Property Rights in Constitutional Kenya

XYZ SHOW BUNI TV

“A society that takes itself too seriously risks bottling up its tensions and treating every example of irreverence as a threat to its existence. Humour is one of the great solvents of democracy. It permits the ambiguities and contradictions of public life to be articulated in non-violent forms. It promotes diversity. It enables a multitude of discontents to be expressed in a myriad of spontaneous ways. It is an elixir of constitutional health.” – Justice Albie Sachs in Laugh It Off Promotions CC vs South African Breweries 2005 (8) BCLR 743 (CC)

A parody, also called burlesque, satire or spoof, in contemporary usage is a work created to mock, comment on, or poke fun at an original work, its subject, author, style, or some other target, by means of humourous, satiric or ironic imitation. Parody, as a method of criticism, has been a very popular means for authors, entertainers and advertisers to communicate a particular message or view to the public.

In recent times, the popularity of parodies has brought this creative form of expression in direct conflict with the owners of the original works protected under intellectual property (IP) law, particularly copyright and trademark.

Read the rest of this article over at the CIPIT Law Blog 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.

 

Revisting Copyright Protection of Databases in Kenya

In a recent decision by the South African High Court in Board of Healthcare Funders v Discovery Health Medical Scheme and Others [2012], Discovery Health South Africa was found guilty of copyright infringement in respect of a database developed by the Board of Healthcare Funders (BHF) known as Practice Code Numbering System (PCNS). PCNS is a set of numbers or codes which identify all of the medical practitioners and medical service providers in RSA together with related data. As Darren of Afro-IP explains:
“The PCNS is a tool for facilitating payment under the medical aid schemes and assists in preventing fraud by, for example, verifying that a claimant is claiming an amount from the scheme within his or her scope of practice and discipline”

Prior to 2010, Discovery was a member of the BHF, and by virtue of this membership it received data from the BHF on a weekly basis. This information related to changes of medical practitioners and associated data. Discovery was accused of extracting substantial portions of this information from BHF’s PCN system and importing it into the relevant fields within its own database. Meanwhile, sometime in 2010, Discovery cancelled its BHF membership. Thereafter, BHF went to court claiming that Discovery was infringing BHF’s copyright because it was using the PCNS without a license, in addition BHF sought to have Discovery deliver up all the infringing material in its possession, and BHF also claimed royalty payments against Discovery. Discovery challenged BHF’s claim in court on five grounds which were all dismissed by the court. However, for purposes of the present discussion, the focus shall be on the first issue raised by Discovery namely that no copyright exists in respect of PCNS.

The court defines PCNS thus: ” a compilation in so far as it consists of the combination of a series of digits to form the PCN coupled with the data which then in its totality forms the PCNS”. It is therefore clear that PCNS is a database. A database is commonly defined as a collection of independent works, data or other materials arranged in a systematic or methodical way and individually accessible by electronic or other means. In terms of S1(1)(g) of South Africa’s Copyright Act, “literary work” includes: “tables and compilations including tables and compilations of data stored or embodied in a computer or a medium used in conjunction with a computer but shall not include a computer program”. Therefore PCNS may fall within the category of literary works and be protected along with other compilations, provided certain requirements are met.

There are two inherent requirements for copyright protection namely originality and material embodiment. The latter requirement means that the work must be reduced to material form in order to attract copyright. The former requirement namely originality requires that a work must emanate from the author himself and not be copied from another source. In South Africa, the test for originality is as follows: if an author has expended labour and skill in creating the work, it will enjoy copyright protection, notwithstanding the bland nature of the work . This test is based on the ‘sweat of the brow’ doctrine and was applied by South Africa’s Supreme Court of Appeal in the leading case of Haupt t/a Softcopy v Brewers Marketing Intelligence (Pty) Ltd [2006]. The court in this case made it clear that although originality requires that the work must originate from the author and not be copied from an existing source, this is not to say that every work which is not copied would qualify for protection in terms of the Act:

“Save where specifically provided otherwise, a work is considered to be original if it has not been copied from an existing source and if its production required a substantial (or not trivial) degree of skill, judgment or labour.”

At paragraph 30 of the Discovery Health judgment, the court cites with approval the reasoning in the Haupt case as adopted from the British case of Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964]:

“In deciding therefore whether work in the nature of a compilation is original, it is wrong to start by considering individual parts of it apart from the whole as the appellants in the argument sought to do. For many compilations have nothing original in their parts, yet the sum total of the compilation may be original.”

The South African Courts’ decision to apply the sweat of the brow approach in interpreting the Copyright Act’s requirement of originality means that local database owners (like BHF) enjoy the copyright protection of both original and non-original databases. However it has been argued elsewhere that this advantageous position enjoyed by database owners should be weighed against the short-comings inherent in the sweat of the brow doctrine. The Feist Publications Inc v Rural Telephone Services Co [1991] case, a seminal U.S copyright law decision, provides the strongest criticism of this doctrine. The court in Feist stated that:

The “sweat of the brow” doctrine had numerous flaws, the most glaring being that it extended copyright protection in a compilation beyond selection and arrangement — the compiler’s original contributions — to the facts themselves.

This criticism stems from the existence of a long-standing principle that copyright should not be extended to cover basic information or “raw” data. This well established principle is based on the idea that only the elements of a work that are original to the author will attract copyright. Therefore, in the case of facts, they are merely discovered but not created which means that no one may claim originality because facts do not owe their origin to an act of authorship. But in South Africa, under the sweat of the brow doctrine, the sheer industrious collection of facts is sufficient to attract copyright.

This central flaw in the sweat of the brow approach offers a glimpse of the serious consequences that South Africa could face. First and foremost, the very low threshold of originality ultimately discourages both large scale local and foreign investment in database creation. Also, given the growth in the protection of information all over the world, those South Africans that end up developing creative databases targeted for both local and international use will opt for jurisdictions that offer more comprehensive protection of their work. These negative economic consequences as a result of the sweat of the brow doctrine, call for a consideration of other approaches to database protection in existence in order to be able to determine which of these would be applicable in and suitable for South Africa. Nevertheless it is readily conceded that raising the standard of originality for databases will not necessarily encourage more investment in the database industry; such is the lesson from the European Community’s sui generis protection: the 1996 EC Database Directive.

Conclusion:

This Discovery Health case provides important insight into the nature and scope of protection enjoyed by databases under South African copyright law. As noted, the sweat of the brow approach adopted by South Africa rewards the hard work of individuals involved in compiling of data without segregating between factual compilations and other more ‘creative’ literary works. However, it is argued that this low originality threshold for database protection is tantamount to providing copyright protection over raw facts/data themselves and distorting the long established idea/expression dichotomy. In this connection, it is possible that Discovery Health’s database would also be copyrightable and BHF may find itself back in court again only to discover the current copyright law regime works both ways!