Customs Officers Cannot Enforce Intellectual Property Rights: Court of Appeal Judgment in Kenya Revenue Authority v Doshi Iron Mongers

doshigroup-630x315

In the case of Kenya Revenue Authority v Doshi Iron Mongers & another [2016] eKLR, the Court of Appeal was called upon to determine whether Section 5 of the Customs and Excise Act gives an officer of the Appellant (KRA) under the Act powers, rights and privileges akin to those given to a police officer in execution of his duties under Cap 84 of the Laws of Kenya, in particular that such an officer can enforce intellectual property (IP) rights including raids, arrests and seizure of goods not listed under Schedule 8 of the Customs Act.

In the lower court, the respondents had complained that their warehouses in Mombasa and Nairobi were raided between 1996 and 2006 by the appellant for no rhyme or reason, purporting to search for counterfeit, substandard and uncustomed goods particularly ‘BIC’ biro pens, battery cells, and other items at the behest of companies such as Haco Industries who were the assigned users of the trade mark.

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Court Upholds Anti-Counterfeit Agency Raid and Seizure: Shikanisha Shoes Collection v Attorney General

simba land counterfeit shoes timberland shikanisha nakuru kenya ACA anti-counterfeit agency raid 2016

How to spot ‘fake’ Timberland shoes 101

Following the high profile raid and seizure of a ‘fake’ shoes shop in Nakuru (see video footage here), the court has delivered a recent judgment in the case of Paul Kihara Nduba t/a Shikanisha Shoes Collection v Attorney General & another [2016] eKLR in which the owner of the Nakuru shoes shop challenged the enforcement actions taken by the Anti-Counterfeit Agency (ACA). The Petitioner sought several declaratory orders from the court to the effect that Section 23 (c) of the Anti-Counterfeit Act No. 13 of 2008 is unconstitutional and inconsistent with Articles 23 (2), 25 (c) and 31 (a) of the Constitution of Kenya and that ACA acted in excess of and in violation of Section 31 (a) and (b) of the Constitution.

In determining this petition, the court addressed the following issues: 1) Whether this petition is competent; 2) Whether the seizure of the Petitioner’s goods by ACA was lawful; and 3) Whether the Petitioner is entitled to the orders sought in the petition.

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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.

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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.

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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.

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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