Idea/Expression Murkiness: Court Ruling in Nation Media Copyright Suit over ‘LIT 360’ Simulcast Show

Like clockwork, behind every mega corporate launch in Kenya is a law suit over allegedly ‘stolen’ intellectual property (IP). In a recent High Court ruling in Incognito Productions Limited & another v Nation Media Group [2018] eKLR, the learned judge appeared to sympathise with the Plaintiffs but not enough to grant their application for a temporary injunction against the Defendant, one of Kenya’s largest media conglomerates that recently rolled out a multi-million shilling project dubbed ‘Lit Music’.

The face of Lit Music (which is really just a record label) is ‘LIT 360’, a 1-hour programme made available simultaneously on Nation’s radio, television and digital platforms. LIT 360 was designed with the aim of talent scouting, soliciting and harvesting content, as well as distribution, marketing and promotion of musical talent. As readers may have undoubtedly figured out by now, the Plaintiffs’ claim is that Nation unlawfully appropriated their concept which underlies Lit Music and LIT 360 based on a series of confidential business proposals made to Nation by the Plaintiffs between July 2016 and March 2017.

Weaves Fly in Trade Mark Fight Between Darling and Angels Hair

 

In Kenya’s cut-throat hair business, three competitors (the purveyors of hair extensions branded ‘Darling’, ‘Angels Hair’ and ‘Sistar’ respectively) have distinguished themselves through aggressive marketing and strategic litigation over their brands. In a previous blogpost here, we highlighted an interesting High Court case where the Sistar hair maker filed a trade mark infringement suit against both its rivals, Style Industries (of the ‘Darling’ fame) and Sana Industries, known for ‘Angels Hair’.

In this latest installment, we focus on the recently reported High Court ruling in Style Industries Limited v Sana Industries Co. Limited [2018] eKLR in which the Plaintiff (Style) was partially successful in its application for both injunctive relief and Anton Piller orders against the Defendant (Sana) for infringement of its ‘VIP COLLECTION’ trade mark.

Fire in the Sky: Law Society Shamelessly Remains Mum in Copyright Claim

‘Fire in the Sky’ (pictured above) is a stunning photograph of Nairobi’s skyline lit up against the backdrop of New Years’ fireworks. In April 2018, this work by Reinhard Mue aka Rey Matata was unlawfully copied and used by Law Society of Kenya (LSK). In June 2018, Reinhard wrote to LSK complaining about infringement of the rights to his copyright work and threatened to take legal action. To-date, LSK and its elected leaders have failed to respond to Reinhard at all, either formally or otherwise. As a member of LSK, this blogger is disappointed that the LSK leadership has allowed such a straight-forward matter to become a public spectacle.

Mobile Developer Claims Copyright over Songa Music App by Safaricom, Radio Africa

The recently reported High Court case of Evans Gikunda v. Patrick Quarcoo & Two Others [2018] was born out of a business deal gone bad. At the heart of this dispute is a music application (app) that the plaintiff (Gikunda) claims to have conceptualised, designed and developed between 2012 and 2016. However Gikunda joined the employ of the 2nd Defendant (Radio Africa Group Limited) in 2013 where the 1st Defendant (Quarcoo), the Chief Executive at Radio Africa, ‘persuaded Gikunda to partner with him to ensure that the product gets to market’.

According to Gikunda, Quarcoo proposed that that once Radio Africa’s Board of Directors sanctioned its participation in his app, they would share out the ownership of the app as follows: Radio Africa – 40%; Gikunda- 30%; Quarcoo- 20%; and the remaining 10% to a strategic partner. However, in mid-2016, Gikunda resigned from Radio Africa after which he alleges that Quarcoo and Radio Africa sold the app, without his knowledge, to the 3rd Defendant (Safaricom).

Ten Years Later: Dismal Performance Scorecard for Kenya’s Anti-Counterfeit Agency

In 2008, Anti-Counterfeit Agency (ACA) was birthed as Kenya’s TRIPS-plus experiment to spearhead intellectual property (IP) rights enforcement by coordinating efforts among various state agencies. In our humble opinion, ACA deserves no score higher than 3/10 for its performance in fulfilling its overall statutory mandate in Kenya.

It was envisioned that ACA would be a shining example of an inter-agency approach to IP rights enforcement with private sector coordination. Ten years later, it is safe to say that ACA has failed to live up to its potential. The reason? Two words: Institutional Corruption.

Kenyan Company Seeks to Stop Barclays ABSA Bank Rebrand in Trade Mark Suit

In the recent High Court case of ABSA Kenya Limited v Barclays Bank of Kenya [2018] eKLR, a Kenyan company has failed to temporarily halt the proposed name change of Barclays Bank to Absa. ABSA Kenya claimed that it had received cancellation of lucrative transactions due to confusion created by the planned rebranding by Barclays Bank. However the learned judge in this case dismissed the plaintiff’s application for interim injunction to ‘restrain Barclays from using, representing, infringing, advertising or in any manner whatever the trade mark and the name ABSA or its derivatives, deductives, corollaries devices and/or anxilliaries in Kenya or in any other place or at all.’

Private Prosecutor Can Appear as Witness in Same Criminal Copyright Suit: Case of Albert Gacheru Kiarie and Wamaitu Productions

A recent judgment by the High Court in the case of Albert Gacheru Kiarie T/A Wamaitu Productions v James Maina Munene & 7 others [2016] eKLR is likely to have profound ramifications for the enforcement of intellectual property (IP) rights in Kenya. At the heart of this case is a catalogue of widely popular vernacular songs such as “Mariru (Mwendwa Wakwa Mariru)” which is featured in the video above by Gacheru and produced by the latter’s company, Wamaitu.

According to Gacheru, his music and those of other rights holders he was involved with through his Wamaitu label have all been the subject of piracy and copyright infringement for many years. From 2004, Gacheru was the complainant in a criminal copyright infringement case (Criminal Case No. PP 06 of 2004) and was later granted permission to privately prosecute the case but he was then barred from continuing to undertake the private prosecution for the reason that he intended to serve as a witness in the same case. Gacheru appealed this decision insisting that he should be allowed to act as private prosecutor and witness in his case. The present judgment settles this 12 year old dispute on this matter.

How A Typo Cost Safaricom the “OKOA STIMA” Trade Mark in Favour of Colour Planet

Recently, a leading newspaper published a story here stating that Safaricom Limited had obtained interlocutory orders against Colour Planet Limited stating that the latter was “forbidden from interfering with any contracts Safaricom has under the banner Okoa Stima, suggesting to any third party that Safaricom does not have the right to use the name Okoa Stima.” The rest of the story is filled with several contradictory and confusing facts regarding trade mark searches made, trade mark applications filed and trade mark registrations with respect to the Okoa Stima mark by both Safaricom and Colour Planet.

This blogpost is intended to set the record straight on the specific issue of the chronology of events at the Trade Mark Registry of Kenya Industrial Property Institute (KIPI) involving both Colour Planet and Safaricom between March 2015 and January 2016. For intellectual property (IP) practitioners, this post may also serve as a cautionary tale on the importance of care and caution when handling your clients’ matters pending before KIPI.

Collecting Societies Demand Whopping 170 Million Shillings from Leading Broadcasters in Copyright Infringement Suits

KECOBO Renews Registration of KAMP and PRiSK as CMOs. L-R: Justus Ngemu – KAMP Chairman, Clifford Wefwafwa – KAMP GM, Marisella Ouma – KECOBO ED, Angela Ndambuki – PRiSK CEO, Robert Kimanzi – PRiSK Chairman.

This blogger has confirmed a recent media report that the two related rights collecting societies: Kenya Association of Music Producers (KAMP) and Performers’ Rights Society of Kenya (PRiSK) have simultaneously taken five broadcasting organisations to court for infringement of copyright. The five identical suits HCCC No. 322, 323, 324, 325 & 326 of 2015 have been filed in the Commercial Division of the High Court against Royal Media Services (RMS), Nation Media Group (NMG), Standard Group (SG), MediaMax Network (MMN) and national broadcaster, Kenya Broadcasting Corporation (KBC).

PRiSK and KAMP claim that they are mandated to collect license fees on behalf of the performers and producers of sound recordings and duly notified the five broadcasters that it is under an obligation under Sections 27, 30A, 35(1)(a), 25 and 38(2) and 38(7) of the Copyright Act to pay licensing fees in respect of sound recordings and audio-visual works broadcast to the public. In this regard, the collecting societies claim that the broadcasters have all failed and/or neglected to pay the requisite license fees to KAMP and PRiSK from the year 2010 until and up to the year 2014.

Preliminary Objections in Copyright and Industrial Property Cases: High Court Ruling in Vermont Flowers EPZ v. Waridi Creations

Recently the High Court made a ruling in the case of Vermont Flowers (EPZ) Limited v Waridi Creations Limited HCC 524 of 2014, a patent and copyright infringement suit filed by the Belgian-owned Vermont Flowers against Waridi Creations, a company formed by Vermont’s former Kenyan employees. A copy of the ruling is available here.

Vermont Flowers made an application for an injunction and Anton Piller orders on the basis that it is the registered owner of various copyrighted and patented manufacturing processes and designs and that Waridi Creations had infringed those copyrights and patents. However Waridi Creations, through the very able representation of Senior Counsel, successfully used the preliminary objections of jurisdiction and locus standi (standing) to have Vermont’s application dismissed.

According to media reports, Vermont Flowers claims that its former employees Godino Mwasaru, Nelson Oware and Jennifer Mumo formed Waridi Creations. Vermont Flowers further claimed that the ex-employees were on the verge of exporting a large consignment of flowers vases that have been branded with Vermont’s logo and were likely to destroy evidence of the copyright infringement. An interesting fact is the reported criminal suit instituted by Vermont Flowers against the ex-employees who are now Waridi’s Directors. In this criminal suit, it is reported that Vermont Chairman testified under oath that “Vermont had no registered invention or patent in Kenya and that the floral vases are not copyright protected in any country in the world”.

In the ruling, the court makes several important points on the jurisdiction objection in patent suits and the locus standi objection in copyright suits.

In addressing the jurisdiction of the Industrial Property Tribunal, the judge states as follows:

“The Industrial Property Tribunal under section 106 has been conferred with jurisdiction by statute to grant relief of; 1) injunction to restrain infringement of patent or registered utility or industrial design; 2) damages or 3) any other relief provided in law in respect of infringement of patent or registered utility or industrial design (…) my considered view is that such applicant [for grant of patent] like the Applicant here [Vermont Flowers], has protection in law and may apply for injunction to stop infringement or claim compensation for infringement of the invention under published application for grant of patent, as if a patent had been granted for that invention, as long as he can show that the person, without his authorization, performed any of the inventions, claimed in the published application, and that the said person, at the time of the performance of the act, had; a) actual knowledge that the invention that he was using was the subject matter of a published application; or 2) received written notice that the invention that he was using was the subject matter of a published application, such application being identified in the said notice by its serial number. The Applicant made an application for grant of patent through application No KE/P/2012001715, paid the relevant fee and notification of filing date of the application was given by the Managing Director of the Kenya Industrial Property Institute to be 3/2/2012. The Applicant, therefore, is covered by the jurisdiction of the Tribunal in the Industrial Act and they should refer the claims which form part of the application for grant of patent to the Tribunal. The Application before me in so far as it relates to the grant of patent under Industrial Property Act should be and is hereby referred to the Industrial Property Tribunal for relief.

I wish to reinforce my decision above through the following rendition. See and consider section 55 of the Industrial Property Act. (….) Note that section 55 refers to acts of infringement under section 54 as some of the acts of infringement which can be restrained by an injunction. Therefore, an injunction to restrain infringement of patent or utility model or industrial design is issued at first instance by the tribunal under section 106 of the Act. And therefore, as the Applicant is also the applicant for grant of patent under the Act, I am persuaded and I have so held that the Tribunal has statutory jurisdiction over the claims which have been presented before this court. The claims herein fall within section 55(c) of the Industrial [Property] Act.”

The learned judge also hints at possible areas for legislative action to aid proper interpretation of the law:

” I do not think section 55(c) intended the relief thereto to be canvassed or sought only after registration of the patent or certificate of utility model or industrial design. I think, the law wanted to provide for remedy and protection to an invention of an applicant whose application has been published. The said section is a basis for an injunction to restrain a person who without authorization, performed any of the inventions, claimed in the published application as if a patent had been granted for that invention. I wish, however, to see legislative intervention towards clarifying the section by providing some measure of protection to utility or design for which registration has been filed and accepted by the MD of the Institute. Section 19 of the Companies Act will provide some lead here; on written application being received, the name is reserved for sixty days pending registration of the company. However, such reservation should be subject to prior users of the invention or contemporaneous inventions.”

The learned judge makes an identical finding in a recent ruling in the case of Naili East Africa Limited v Samuel Kariuki & another HCC 295 of 2014 where the plaintiff sought injunctive relief to restrain the Defendants from infringing the rights under the Industrial Property Act in an invention described as “The aquatic plant removal apparatus which includes a heavy duty marine net preferably made of carbon fiber. To the net are attached to a winch, the winch being mechanically driven by deriving its rotary power from a tractor, a lorry or electric motor”. A copy of the ruling is available here.

In addressing the issue of standing to institute a copyright infringement suit, the judge states as follows:

“As long as the Applicant [Vermont Flowers] is claiming exclusive licensee of copyright which is not domestic registered copyright, the assignment must be accompanied by a letter of verification from the Board. None has been provided. That requirement is critical and its importance is well understood when one considers two things; 1) the international obligations of the nation to provide for adequate and effective protection of rights of copyright owners; and 2) the provision of section 33(2) on assignments and testamentary disposition of copyright (….) The nature of intellectual property and the strict requirements of the law make it absolutely necessary that the licensee should plead his status that he is an exclusive licensee; give all particulars of the licence as well as the copyright for which he has been granted exclusive licence by the owner. (….) It is readily discernible from the plaint and the application without probing for any evidence, that; there is not specific pleading in the plaint on exclusive licensee and the specific copyrights on which the licence is granted; yet the application and the affidavits filed thereto introduces exclusive licensee or assignment. As long as that situation has not been clarified by amendment of the plaint, the application for injunction lacks a foot on which to stand.”

This fatal error by Vermont Flowers compounded with the apparent poor drafting of its pleadings are not punished with a dismissal of the entire suit and in this regard the learned judge states that: “I hereby uphold the preliminary objections but in respect of the application only. (….) I will not extend these finding to the plaint as the plaintiff [Vermont Flowers] can always amend the plaint to measure up to the legal thresholds in such cases. That course will also give the plaintiff an opportunity to have its day in court.”

This blogger will continue to follow the developments in this case.