Court of Appeal Settles 20 Year Copyright Dispute: Case of Mount Kenya Sundries v Macmillan Publishers

Macmillan Memorial Library Kenya

A recent judgment by the Court of Appeal in the case of Mount Kenya Sundries Ltd v Macmillan Kenya (Publishers) Ltd [2016] eKLR involved a copyright infringement claim with respect to two maps of Kenya produced between 1985 and 1990 by the Respondent, Macmillan (now known as Moran Publishers). At the High Court, Macmillan had successfully proved that Mount Kenya had reproduced and sold its maps without its authorisation contrary to the Copyright Act. This High Court decision has been discussed previously here.

In the present appeal, the court reconsidered the evidence, evaluated the submissions of both parties in order to determine several key issues including locus standi (standing to sue), copyright ownership of the maps and copyright infringement of the maps.

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Lessons for Kenya: South African Copyright Tribunal Sets Aside License Tariff for Use of Sound Recordings

PicknPay

It is recommended that a tariff to be set by the tribunal should neither be too high nor too low, but a tariff which the owners of the royalty will realise profits on the one hand and the consumers will purchase voluntarily. It is hard, in my view, to satisfy the preferences of either party. It has already been indicated that I am not tasked to judge as to which case is superior in law but to set a tariff that may be said to be reasonable. – Foschini Retail Group (Pty) (Ltd) and 9 (Nine) Others v South African Music Performance Rights Association (0003/2009) [2013] ZAGPPHC 304 at Paragraph 76.

Recently this blogger reported a major victory for Kenya’s related rights collective management organisations (CMOs) when the court upheld their statutory mandate to license for the communication to the public right (See here). It is clear that the majority of these disputes between the related rights CMOs and users arise because the latter contest the license fees charged by these CMOs. The genesis of this contestation stems from the users’ perceived “double taxation” of paying both a copyright CMO on the one hand and the related rights CMOs on the other hand.

In this regard, this blogger has argued on several occasions (see here, here and here) that the Competent Authority must be immediately operationalised to deal with the rising cases of CMO-user disputes. Meanwhile, in South Africa, the Copyright Tribunal (equivalent to the Competent Authority under the Kenya Copyright Act) has recently issued a landmark judgment in which it set aside the license tariff for retailers as fixed by the South African Music Performance Rights Association (SAMPRA) holding that the tariff was not reasonable and proceeded to set a tariff to be applied by SAMPRA. In addition, the Copyright Tribunal ordered SAMPRA to pay the the retailers’ costs of referring the matter to the Tribunal.

For Kenya, this judgment is of great importance as the tariff determined by the Copyright Tribunal in South Africa is significant lower than that of the concerned related right CMO in Kenya. Therefore this blogger submits that there is a need for a review of all tariffs set by related rights CMOs using the methodology of the South African Copyright Tribunal.

In the present case, the retailers, namely Foschini Retail Group (Pty) (Ltd), Pepkor Retail Limited Stores, Just Kor Fashion Group (Pty) (Ltd), Mr Price Group Limited, Pick ‘n Pay Retailers (Pty) (Ltd), Truworths Limited, New Clicks SA (Pty) (Ltd), Dunns Stores, Metrotoy (Pty) (Ltd) and Young Designers Emporium (Pty) (Ltd) contended that SAMPRA had unilaterally set a tariff, and that it basically adopted a take-it-or-leave-it approach, when demanding payment. The retailers claimed that the tariff was inflated and without economic justification. They said that they had tried to negotiate with SAMPRA, but that the parties had been unable to reach agreement, hence they referred the matter to the Copyright Tribunal for determination.

As many know, the South African Music Performance Rights Association (SAMPRA) is a national, non-governmental, organization that licenses to third parties specific copyrights that vest in record companies that are members of the Recording Industry of South Africa (RiSA). It is therefore clear that SAMPRA’s equivalent in Kenya is the Kenya Association of Music Producers (KAMP).

In response to the retailers’ contentions, SAMPRA claimed that its tariff was reasonable. It stated that its tariff was bench-marked with international best practice, with reference to the UK, Australia and Canada being mentioned. SAMPRA’s tariff was based on the square meterage of the ‘audible area’, in other words those parts of the store where the music can be heard even if they are inaccessible to customers. Therefore according to SAMPRA’s tariff, the annual fee for a store of 51 to 100 square metres was ZAR 1000.00, whereas the annual fee for a store of 201- 300 square metres was ZAR 2000.00.

The Tribunal agreed with the retailers that the SAMPRA’s tariff was too high, even compared with lower tariffs in developing countries such as Australia. The Tribunal also agreed with the retailers that SAMPRA’s take-it-or-leave-it approach in setting its tariff was wrong both under the Copyright Act and the Collecting Society Regulations. In this connection, the Tribunal found that it would not be in the interest of justice to “cut and paste” the international practice without engaging the market forces prevailing in South Africa.

Therefore the Tribunal was of the view that tariff to be set must be a tariff that “optimizes public welfare”, in other words “a tariff that is neither too high nor too low, by which the service providers would realize profits, whereas the consumers would purchase voluntarily”. The Tribunal therefore set a tariff which, for example, saw the annual cost for shops of 50 to 100 square metres drop down to ZAR 389.00, whereas the annual fee for shops of 200- 300 square metres was set at ZAR 620.00.

As alluded to above, the tariff set by the Tribunal does not compare favourably with KAMP’s tariff here in Kenya. According to KAMP’s recent tariffs available here, the annual cost for shops of 50 to 100 square metres is currently set at KES 6500.00 which is approximately ZAR 650.00. In other words, a Kenyan shop half the size of a South African shop pays twice as more in license fees per year.

In light of the above, this blogger submits that there is a pressing need for the relevant government agencies to intervene and regulate the license tariffs, terms and conditions imposed by CMOs in Kenya to protect the public interest.

Nestle S.A. v Cadbury UK: The Problem with Registering Colour Trade Marks

cadbury dairy milk chocolate

“….unconventional or “exotic” marks, such as colours, sounds and smells, give rise to conceptual problems, which are not encountered with more conventional trade names and logos. As the registration of a trade mark creates a form of intellectual property conferring a potentially perpetual monopoly in the mark and excluding everybody else from use in various ways, the point of principle has some public importance.”

Recently, the England and Wales Court of Appeal in the case of Société Des Produits Nestlé S.A. v Cadbury UK Ltd. [2013] overturned a decision of the High Court to proceed with an application to register a trade mark for Cadbury’s chocolate, which featured a specified shade of the colour purple. In particular, the trade mark applied for by Cadbury was shown as a rectangle, which is a purple block when reproduced in colour, and described as:-

“The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.” [Emphasis Mine]

Read the rest of this article here.

A Kenyan Perspective of South Africa’s Draft National Policy on Intellectual Property

South_africa_parliament1

As many IP enthusiasts may have heard, South Africa has recently published a Draft National Policy on Intellectual Property (IP) (hereafter the Policy). Within the Kenyan context, this blogger has previously questioned the need for a national IP policy particularly in light of the recognition given to IP in the Constitution. However, for the purposes of this post, the policy provides a good basis for a comparative analysis of the state of IP in both South Africa and Kenya as well as possible recommendations to strengthen IP laws.

In the area of patents, Kenya’s IP office undertakes both formal and substantive examinations of patent applications whereas in South Africa, the Policy recommends the establishment of a substantive of a substantive search and examination of patents to address issue of “weak” vs “strong” patents. The policy’s recommendation to amend South African patent law to include pre-and post-opposition would also be instructive to Kenya.

Read the rest of this article here.

Legal Protection for TV Formats: Another Sui-Generis Area of Intellectual Property Law?

Dads Can Cook TV Kenya

Imagine this scenario: You’re a budding creator and film producer who develops this brilliant reality show which is being aired in one of our local TV channels. At the end of the first season of your hit show, the TV broadcaster discontinues your show. One month later, you discover that the same TV channel or a rival TV station has premiered its own show which is a carbon copy of your own show which they discontinued. What recourse would you have under intellectual property law?

At the CIPIT Seminar #KnowUrIP, Mr. Martin Munyua (@MartinMunyua) the editor and creator of the hit TV show “Dads Can Cook” painted this very same scenario drawn from his real-life experiences. The topic of TV format protection in Kenya may becoming pertinent as local creators and innovators continue to create programming content at a level that compares favourably both regionally and internationally. Domestically, the growth and expansion of the TV industry has resulted in cut-throat competition among broadcasting houses who increasingly demand for new and original programming content. Many TV viewers in Kenya may recall the case of two similar shows on two rival networks namely, “Mali” and “Lies That Bind” on NTV and KTN respectively. This case illustrated the level of competition among TV networks and how popular TV shows, concepts, formats and themes can be copied, replicated, modified across these networks to capture a larger share of viewership.

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

The Maasai Intellectual Property Initiative: Why Should Others Do Pro-Bono IP Work For Kenya?

AFRICA IP TRUST EVENT 2013 INVITE MAASAI IP INITIATIVE LIGHT YEARS IP

In a recent media report titled: “Maasai elders swap Kenya for Holborn Viaduct”, the global law firm Hogan Lovells has reportedly invited Maasai elders to the United Kingdom (UK) as part of its intellectual property (IP) pro bono work. As the report explains:

The firm has been doing intellectual property (IP) pro bono work, led by partner Sahira Khwaja, to try to secure a trademark for the tribe after the recognisable Maasai image has been used repeatedly used in advertising campaigns without any of the spoils making their way back to the tribe itself.
Lovells is working with Elders from the Maasai of Kenya and Tanzania through charity Light Years IP,  which helps developing country producers win ownership of their intellectual property – should they choose to.

Light Years IP is a non-profit organization dedicated to alleviating poverty by assisting developing country producers gain ownership of their intellectual property and to use the IP to increase their export income and improve the security of that income. The Maasai Intellectual Property Initiative (MIPI) was founded by Light Years IP who designed a 7 point plan and IP strategies for the Maasai to achieve control over their iconic brand.

According to Light Years IP CEO, Ron Layton:

…the Maasai people have not yet decided on trademark ownership or appointment of Hogan Lovells to carry out trademark work. The Maasai elders are visiting London to obtain information to assist their community make such decisions. Above all, Light Years IP seeks for respect to be shown to the Maasai. Hogan Lovells are assisting Light Years IP in a range of work.

Comment:

First off, this blogger is ashamed that Kenya’s leading IP firms would rather religiously ‘network’ at International Trademark Association (INTA) Annual Meetings than take up worthy pro-bono IP matters such as MIPI.

Read the rest of this article on the CIPIT Law Blog here.

The intellectual property tale of how Kenya almost lost the Kikoi fabric

Recently, the Standard did a feature titled “How Global Coalition saved Local Fabric” in which it called for pro-active measures and long-term strategies to avert the loss of Kenya’s intellectual property assets to foreign entities.

“The country has seen one of its most indigenous products, Kiondo, snapped by international companies and nobody knows which one is next, whether is Kikoi, Maasai shuka, Akala, Akamba carvings, Gusii soap stones or Nyatiti, an eight stringed plucked musical instrument.” – Standard.

IPKenya has in the past argued for both IP-oriented protection measures (in the short term) and a sui-generis regime (in the middle and long terms) to deal with the issue of Kenya’s traditional knowledge products.

But for those who are not familiar with the Kikoi story in particular, here’s how it went:

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