In our previous blogpost here, we discussed an agreement between Kenya Wildlife Service (KWS) and global biotech firm Novozymes A/S entered into in May 2007 entitling Denmark-based Novozymes to access and exploit for commercial purposes genetic resources, enzymes and micro-organisms within national parks, national reserves and other protected areas within Kenya.
In a recent media report, Chief Administrative Secretary in the Ministry of Environment William Kiprono has urged the Baringo County government to ‘demand full disclosure of all the money from the royalties deal.’ Kiprono reportedly said that the micro-organisms collected from Lake Bogoria ‘should have been of great benefit to the community’ and that ‘the county government should revisit to see if the amount paid to the community living around the lake is commensurate with the billions of shillings the bio-tech industries are getting from the enzymes.’
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.
On 11th November, 2016, pursuant to Special Issue of Kenya Gazette Supplement No.185 (National Assembly Bills No. 45) the Attorney General published the Statute Law (Miscellaneous Amendments) (No. 2) Bill 2016. It is recalled that this Bill is intended to “make minor amendments which do not merit the publication of separate Bills and consolidating them into one Bill”. The Bill proposes to amend several intellectual property (IP) laws including Industrial Property Act, 2001 (No. 3 of 2001), Copyright Act, 2001 (No. 12 of 2001) and Anti-Counterfeit Act, 2008 (No. 13 of 2008).
This blogger has come across a recent judgment in the case of Mercy Munee Kingoo & Anor v. Safaricom Limited & Anor [unreported] Malindi High Court Constitutional Petition No. 5 of 2016 delivered by Mr. Justice S.J Chitembwe on 3rd November 2016. At the heart of this Petition was the claim that section 30A of the Copyright Act is unconstitutional. This Petition raised two important issues for determination: firstly, whether the petition is ‘res judicata’ in light of two earlier decided High Court Petitions (discussed previously here and here) in which section 30A was not found to be unconstitutional and secondly, whether the amendment of the Copyright Act and introduction of section 30A is unconstitutional for failure to observe the principles of public participation.
Maurice Okoth, former MCSK CEO (left) with his lawyer at the High Court for the delivery of the judgment.
Recently, the High Court delivered its judgment in the case of Republic v. The Director of Public Prosecutions and 4 Others Ex Parte Shamilla Kiptoo and 2 Others HCMA 510 of 2015 (Consolidated) in which the court granted the orders of certiorari and prohibition sought by the Applicants namely Maurice Okoth, Music Copyright Society of Kenya (MCSK) former Chief Executive Officer (CEO), James Maweu Mutisya, former MCSK Board Director, Lillian Njoki Thuo, MCSK Management Accountant, Peter Kisala Enyenze, MCSK Regional Manager and Shamilla Kiptoo, Nasratech Limited Managing Director (and Okoth’s wife).
The order of Certiorari granted by the court quashes the decision, declaration and directive of the Director of Public Prosecutions (DPP), Directorate of Criminal Investigations (CID), Inspector General of Police (IG), Chief Magistrate’s Court and the Attorney General (collectively referred to as the Respondents) to prefer criminal charges against the Applicants based on the facts contained in the Charge Sheet dated 18th November 2015 in Criminal Case No. 1904 of 2015 – Republic v. Dan Maurice Mwande Okoth & 6 others. The order of Prohibition granted by the court directed to the Respondents prohibits the prosecution of the Applicants based on the facts contained in the Charge Sheet dated 18th November 2015 in Criminal Case No. 1904 of 2015 – Republic versus Dan Maurice Mwande Okoth & 6 others. Finally, the court ordered the costs of the application to be borne by the DPP, CID and IG.
Recently, Kenya Law reported the case of Clips Limited v Brands Imports (Africa) Limited formerly named Brand Imports Limited  eKLR which involved three disputed trade marks: ATLAS, FANTASTIC and ALPHA registered in class 16 in Bahrain, Saudi Arabia, Yemen and Kuwait by Clips Kenya’s parent company, Hoshan. From 2010 to-date, Clips Kenya has been trading in goods bearing Hoshan’s marks under a Royalty Agreement in existence from 2009. However, in 2013, Brands Imports registered all three disputed marks in Kenya which led to Hoshan commencing expungement proceedings before the Registrar of Trade Marks.
In the intervening period, Brands Imports, the registered proprietor of the disputed marks in Kenya, wrote a letter to Clips Kenya demanding a 5% payment of royalty. In the letter, Brands Imports threatened to lodge complaints with government authorities to prevent Clips Kenya from continuing to import and sell in Kenya the goods bearing the disputed marks. According to Clips Kenya, Brands Imports’ actions amount to unlawful interference of it’s business and that it could rely on the ‘prior use defence’ provided in section 10 of the Kenya Trade Marks Act.
Previously we reported here that two content service providers and three individual copyright owners had filed a constitutional petition at the High Court challenging the content of the equitable remuneration right in section 30A of the Copyright Act, the application and implementation of section 30A by the collective management organisations (CMOs) and the manner of licensing and supervision of the CMOs by Kenya Copyright Board (KECOBO).
Recently in the case of Petition No. 317 of 2015 Xpedia Management Limited & 4 Ors v. The Attorney General & 4 Ors Lady Justice Mumbi Ngugi (known to many readers for her landmark decision on anti-counterfeit law and access to medicines here) delivered a judgment at the High Court dismissing claims by content service providers and the copyright owners that the contents and implementation of section 30A are unconstitutional.