[youtube=http://www.youtube.com/watch?v=U8g9sjYnSwU]

 

This blogger has recently had occasion to revisit the judgment in the case of Uganda Performing Rights Society v. MTN (U) Ltd, Civil Suit No. 287 of 2010. This case was discussed earlier this month over at the Afro-IP Blog under the title: “A step forward for Uganda’s copyright law – landmark case”, where it was concluded that:

“Although UPRS was not able to recover damages due to a technical glitch in its legal maneuvers, the fact that the Commercial Court came out with a pronouncement on the powers of a Collecting Society to demand for royalties in music performances, is a step in the right direction.”

One may wonder, what was this “technical glitch” that cost UPRS the case? What could UPRS have done differently?

Having perused the judgment of the Honourable Lady Justice Hellen Obura in this case, this blogger is of the view that there were some fundamental mistakes made by UPRS that serve as important lessons for those seeking to increase their odds of success in copyright litigation.

By way of background, Uganda Performing Rights Society (the plaintiff) is a collective management organisation established and operational since 1985 to advance the cause of copyright administration in Uganda. While MTN Uganda Ltd.(the defendant) operates as a telecommunications company in Uganda. It offers fixed, fixed wireless, and mobile telecommunication services; and broadband and pay phone services. The company was founded in 1998 and is based in Kampala, Uganda. MTN Uganda, Ltd. operates as a subsidiary of MTN International (Mauritius) Ltd.

On 23rd February 2008, UB40 performed a concert at Lugogo grounds in Kampala upon being invited and contracted by the defendant on the 24th of December 2007. The defendant had made gate collections and had not subsequently paid the plaintiff an amount that served as license fees for public performance. The plaintiff thus moved to court seeking to have 3% of the gross amount of gate collections as the special damages, general damages for infringement of copyright, interest and costs of the suit.

The agreed facts of the case were as follows:
1. There was a performance by the UB40 in February 2008 in Kampala.
2. The concert was held and attendance paid for upon entry.
3. There were no payments made to the plaintiff by the defendant for the UB40 concert.
4. The defendant paid UB40 for the performance.

The Court determined that there were three main issues for determination in this case:

1. Whether the plaintiff has a cause of action against the defendant.
2. Whether the plaintiff has locus standi to sue the defendant.
3. Whether the defendant is liable to pay royalties to the plaintiff.

The court found in favour of the plaintiff on issue number 2, however the crux of this case rested on issue number 1. In determining whether the plaintiff has a cause of action, the court stated that three sub-issues would have to be interrogated, namely:

i) the plaint must show that the plaintiff enjoyed a right
ii) that the right has been violated
iii) that the defendant is liable

The court agreed with the plaintiff that it had shown that it enjoyed a right and this finding was supported by its earlier finding on the plaintiff’s locus standi to sue the defendant. However, the court found that the plaintiff did not have a cause of action against the defendant because it could not prove the rights it enjoyed had been violated. At page 14 of the Judgment, the Court states:

It was the duty of the plaintiff to prove firstly; that members of the UB40 who performed in Kampala under the auspices of the defendant were the ones who had assigned their right of performance to PRS (UK) which the plaintiff is mandated to enforce in Uganda. Secondly; that the songs they performed were part of the music work that was assigned. Short of that there would be no infringement of the copy rights and as such no violation of the plaintiff’s rights under the contract (of reciprocal representation with PRS-UK).

The learned judge in this case rightly dismisses the plaintiff’s erstwhile legitimate claim for infringement on the basis that there was no evidence produced to show that the particular songs performed at the concert had been declared with PRS by the identified members of UB40. Therefore UPRS could not purport to solely rely on a contract of reciprocal representation between PRS and itself and assume that all the works performed had been declared at PRS and that all the performers at the UB40 concert were members of the PRS. This finding by the learned judge was fatal to the plaintiff’s case as it ruled out the defendant’s liability to pay royalties to the plaintiff in the absence of a cause of action against the defendant.

This blogger respectfully submits that a lesson to be drawn from this case is the importance of preparation. For UPRS, establishing a cause of action against the defendant would have required sending out agents to monitor the performances at the concert in question and making recordings of all the songs performed, names of performers and times of performances. This information would then form the basis of a standard form affidavit that would be sworn by one or more individuals present at the concert to verify the crucial details of the performances at the concert.

Still on the UPRS matter, there is also the question of local Ugandan works that may have been performed during the concert either during the intermissions or as openers before the main act. UPRS ought to have ensured that MTN Uganda is also made to account for the public performances of such works, if any, and not merely confine itself to the foreign works performed.

This blogger is of the considered opinion that it is not only other collecting societies that can learn from the UPRS case but also other types of litigants in copyright matters. Establishing the chain of title is central in any copyright infringement suit and the role of documentary evidence in this regard cannot be overemphasised. For UPRS, relying on the reciprocal agreement alone as evidence was clearly not enough. They ought to have been able to produce both deeds of assignment and declaration of work forms which would have objectively established the chain of title, in addition to evidence on the performances themselves. If these documents had been adduced, UPRS may have had a better chance of success in its suit. Unfortunately, UPRS and by extension its learned counsel were not prepared for the likes of learned Judge Hellen Obura and her commendable grasp of this complex area of law. As the old saying goes, good fortune often happens when opportunity meets with preparation.