Category Archives: Intellectual Property

Intellectual Property Rights in Pandemics: The Case of the Novel Corona Virus in Developing Countries

06 Monday Apr 2020

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By Mercy King’ori

Background 

The novel Coronavirus has spread from China to other countries in the world. The virus which was first detected in December 2019 in the Wuhan region in China is not sparing even developing countries. There is no known cure for the disease, however, pharmaceutical companies are working to help develop a cure. There are only numerous clinical trials of drugs being done with the hope that a cure will be found. Currently,  the response to the outbreak in many countries has been to stop flights to and from badly affected areas. At a medical level, the response has been to manage the symptoms of the disease for those infected. Additionally, countries are establishing centres within existing health facilities to deal with any suspected cases. Of particular interest in this pandemic are developing nations whose medical systems are known to be strained. Most African nations categorised as developing are improving their capacity to detect and cope with it. While this is noteworthy, the writer cannot help but wonder whether the same progress will be made in the event a cure is discovered. How accessible will the drugs be to developing nations to deal with a pandemic? 

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BLOGGING & CONTENT LICENSING

01 Wednesday Apr 2020

Posted by in Creative Commons Kenya, Intellectual Property, Social Media and the Law

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By Cynthia Nzuki

Share your knowledge. It’s a way to achieve immortality.

Dalai Lama

Introduction

In the age of social media and use of online platforms, blogging has proved to be a trail blazer. It has not only expanded the creative industry, but also created jobs for many people and expanded businesses for many companies. A blog is a website containing a writer’s or group of writers’ own experiences, observations, opinions, etc.[1]; this is often represented in words coupled up with images. The content in blogs thus attract intellectual property rights, in the form of copyright. This is because their subject matter are works that are eligible for copyright protection.[2]

In this piece we will look at licensing of the content of blogs and what an entrant blogger should look out for and consider when starting their blog.

What is licensing?

Licensing is the granting of formal permission for one to use something belonging to another without violating their rights.[3] In this case, an owner of a work(s) grants a third party the right to use their work(s) under defined terms and conditions.

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Innovation in Kenya: Why Corporations in Kenya/ Kenyan Corporations Should Engage with the Patent System.

11 Wednesday Mar 2020

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By Mercy King’ori

Typically, corporations more than individual inventors, are known to spearhead inventions and make use of the patent system as a tool of protection. In fact, statistics on patent applications and grants indicate that most patenting activity is done by companies more than individuals.[1] Nevertheless, the situation is not uniform throughout the world. According to a study interrogating whether patents and utility models encourage innovation in Kenya, it showed that the number of individual inventors applying and receiving patents is more than corporations.[2] However, despite more individuals applying and receiving patents, the number of patents is still low and there is a high rate of abandonment of patents.[3]  The study reveals that more individuals were granted utility model certificates than corporations. Additionally, it reveals that despite corporations having fewer patents in Kenya, there is still inventive work happening in the companies.

To anyone who has interacted with news of innovation levels in Kenya, this might come as a surprise since Kenya has been and continues to be hailed as a hub of innovation. Infact, the Global Innovation Index (GII), continuously ranks Kenya among the highest of the African countries.[4] This is despite the mentioned low number of patents. However, this can be attributed to the fact that the level of innovation in a country is not measured by the level of patenting activity only.[5] The 2019 GII indicated that there are other indicators of innovation in a country such as the amount of venture capital deals in a country, level of high technology imports, mobile app downloads and political and operational stability among other indicators.[6] According to GII, patent applications is just one of the sub- indicators under the sub-pillar of knowledge creation which is under the larger pillar of “knowledge and technology outputs”.[7] The GII uses uniform indicators to rank all the countries. For example, under the sub-pillar of knowledge creation where patent applications fall, it shows that Kenya ranks as number 72 out of the 130 countries.[8]

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The Anti-Counterfeit Authority Operational Overlap in Protection of Intellectual Property Rights in Goods and Services in Kenya

19 Wednesday Feb 2020

Posted by in Guest Post, Intellectual Property

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By *Perpetua Mwangi

The fact is that there is a market for counterfeit products that has contributed to the expansion of this outlawed industry. More often than not, consumers are not able to access legitimate brands because on one hand, they are misled by counterfeiters and on the other hand, legitimate brands are outside their means hence consumers settle for versions of the brands they desire. In fact, the market for counterfeit products is vast and readily accessible, occasioning unfair competition.

During past Jamhuri Day Celebrations, the Head of State issued an executive order to investigate intellectual property (IP) infringement and destroy counterfeits on sight. He reiterated that counterfeits are a major impediment to the growth of the manufacturing sector, which is the first pillar among the ‘Big Four’ Agenda. This kind of political goodwill reinforces the legislative commitment in addressing intellectual property rights (IPRs) infringement.

With the explosion of technology, counterfeiters are benefiting from the digital space. Whilst, it is a logistical nightmare for law enforcement and, for brand owners seeking to protect and enforce their IP, reputation and revenue streams.

Introduction

On 20th November 2019, Justice John M. Mativo of the High Court’s Judicial Review Division, delivered a judgment in Republic V. Anti-Counterfeit Agency Ex-Parte Caroline Mangala T/A Hair Works Saloon.[1] The sum effect of the judgment is that the common law right of passing off is a form of infringement of IPRs in goods and services thath amounts to counterfeiting under the Anti-Counterfeit Act.

The Applicant, Caroline Mangala, a Kenyan business lady operating a beauty shop called Hair Works Saloon (sic), sought Judicial Review Orders against the Anti-Counterfeit Authority, whose officers seized beauty products by the brand Makari De Suisse on the basis that they were counterfeit.  The crux of her application was that the seizure was unfair, illegal and tainted by bad faith considering that she had submitted samples of the same products to the Kenya Bureau of Standards (KEBS) to ascertain whether they were counterfeit or not, to which KEBS confirmed the product being of acceptable standard. The application occasioned chance for the court to address intellectual property issues as below.

  1. IP Considerations in Anti-Counterfeit Regulations

JO Global Venture Limited allegedly agents of M/s Victoria Albi Incorporated and alleged owners of the trademark Makari De Suisse filed a complaint with the Anti-Counterfeit Authority (ACA) alleging trademark infringement. As a general rule, for one to pursue complaints in IP Regulations, registration is a key starting point on issues of locus.

In fact, Section 5 of the Trade Marks’ Act precludes parties from seeking redress for a trademark violation, unless that mark is registered. The Applicant argued that the Complainant was not a registered owner of the mark Makari De Suisse in Kenya under the provisions of the Trade Marks’ Act, even though an application had been lodged and still pending examination at the Registrar of Trade Marks. The Applicant’s main argument was that the Complainant did not have a duly registered trade mark in existence capable of laying a basis to lodge a complaint for infringement.

Among other legal issues, the Court considered the correlation between counterfeiting and standardization of goods. Though standardization of products is a mandate of KEBS, it does not oust the mandate of ACA in curbing counterfeiting. The Court agreed that there are times when goods will be substandard but not counterfeit, or counterfeit but not substandard or both counterfeit and substandard. [2]

In PAO & 2 Others v Attorney General[3] the Court held that the test as to whether goods are counterfeit lies in Section 2 of the Anti-Counterfeit Act.  Therefore, even in cases where products have passed the required standards after laboratory tests by KEBS, the ACA may still pursue issues of counterfeit, especially to ensure that there is no IP violation, whether under the Trade Marks’ Act or in common law.

  1. Presumption of IPR Ownership

Section 26(5) of the Anti-Counterfeit Act, provides that where the subsistence of IPRs in respect of suspected counterfeit goods or the title or interest in IPRs is in issue, the complainant shall be presumed to be the owner of the copyright or the related right, until the contrary is proved.

Therefore, an interpretation of the foregoing provision reveals that to file a complaint at ACA on the basis of IP rights violation, one does not need to prove registration of the same mark. This is unlike the requirement to prove registration under Section 5 of the Trademarks Act.  

This means that the ACA in dealing with counterfeiting also enforces protection of IPRs, which is an overlap to the provisions under the Trade Marks’ Act.  Essentially, counterfeiting includes making any goods that are imitations of protected goods without the authority of the owner of the IPR.

  1. Fate of unregistered IPRs

As a rule of thumb, there is need for every IP owner to take necessary steps to ensure that their rights are legally enforceable. Registration offers one way of proving the existence and ownership of the rights at any one given time. Failure to register IPRs often leaves room for infringement and consequently, unnecessary and lengthy litigation.

That notwithstanding, there is a doctrine of “common law Trademarks’’, as held in Capital Estate and General Agencies (Pty) Ltd & others v Holiday Inns Inc. & others.[4]This doctrine is to the effect that, the fact that in a particular case there is no protection by way of patent, copyright or registered design, does not license a trader to carry on his business in unfair competition with rivals. Therefore, though subject to several disputes and arguments, one cannot purport to unfairly utilize another’s intellectual property rights on the basis that they have not been registered.

The common law tort of passing off can be used to enforce unregistered trademark rights. One only needs to satisfy the “Classic Trinity-reputation and goodwill, misrepresentation, and damages“ as established in Reckitt & Colman Ltd v Borden Inc. (Jif Lemon case)[5].

  1. Conclusion

The effect of the recent judgment is that there is now a mixed approach in enforcement of IPRs. A quick glance at the mood set in the judgment reveals the possibility of multiagency regulation and coordination in enforcement of IPRs. The ACA and KIPI can collaborate to ensure that no one benefits from other people’s IPRs unfairly.

Protection of IPRs is not only guaranteed by mainstream Intellectual Property Regulation Instruments like the Trade Marks’ Act but also the Anti- Counterfeit laws in Kenya as interpreted by Justice Mativo. The Anti-Counterfeit Authority has a mandate to ensure protection of IPRs. The mandate is exercised whether the IPR is registered or not owing to the presumption of ownership by the complainant. Once the presumption is questioned, there is an avenue for separate proceedings, either before the Courts or before the Registrar of Trade Marks’ to make a determination as to ownership.

*Ms Perpetua Mwangi is the Head of the Intellectual Property Division at Simba and Simba Advocates. 

[1] [2019] eKLR, Judicial Review No. 325 of 2018.

[2] Ibid 2 at paragraph 25

[3] [2012] eKLR

[4] 1977 (2) SA 916 (A) at 925H)

[5] [1990] 1 All E.R. 873.

DIGITAL RIGHTS IMPLICATIONS OF THE COPYRIGHT (AMENDMENT) ACT (2019)

05 Wednesday Feb 2020

Posted by in Access to Information, Copyright, Intellectual Property

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By Godana Galma

INTRODUCTION

The Copyright (Amendment) Act (2019) (the Act) introduced a Notice and Takedown (NTD) regime in the country’s legal system. Most jurisdictions have adopted NTD as the legal standard to address copyright infringement within cyberspace.[1] This blogger commends the Act for addressing the interests of copyright holders with regard to online infringement. However, apart from copyright, there are other rights that are affected by the structure set out in the Act.

While previous posts relating to the Act have dealt primarily with Intellectual Property considerations, this piece will attempt to highlight both the direct and indirect implications of the Act on digital rights. This analysis will be used to formulate recommendations on how to achieve a balance between copyright and digital rights.

DIGITAL RIGHTS

RIGHT OF ACCESS TO INFORMATION

The right to access information enables citizens to obtain information held by state agencies. In some instances, it extends to private persons. It is based on the premise that governments hold information not for themselves but on behalf of the public. Information-access laws foster transparency and accountability in decision making allowing citizens to participate in governance.[2]

In Kenya, this right is enshrined in Article 35(1) of the Constitution of Kenya (2010)[3] and the Access to Information Act (2016).[4]

This blogger opines that the above right is directly limited by Section 35B (5) which states,

“An Internet Service Provider (ISP) shall disable access to the material within forty eight business hours unless it receives a counter notice fulfilling the requirements set out for a takedown notice and contesting the contents of the takedown notice.”

When an ISP complies with a takedown notice, a number of parties are affected. They are: the person issuing the notice, the ISP, the content publisher and other internet users who want to view the content.

This provision recognizes the interests of content publishers by implicitly providing for the remedy of issuance of a counter notice.[5] However, it fails to provide mechanisms through which content can be reinstated.  In so doing, it ignores the interests of other internet users who may want to access the content. Once a takedown notice is implemented, such individuals have no recourse whether or not actual infringement is upheld. To the extent that there is no restorative mechanism, the NTD structure limits the right of access to information.

In contrast, the United States’ Digital Millennium Copyright Act (1998) recognizes the information-access rights of these other users and providing an elaborate structure through which content may be restored by ISPs.[6]

Additionally, there is no mandate for the Kenya Copyright Board or ISPs to maintain records or a repository regarding NTDs. Availing such information is important not only for users but also for the general public’s right of access to information.[7]

RIGHT TO FREEDOM OF EXPRESSION

Freedom of expression is the right to communicate or express ideas, opinions or beliefs through any media without restraint.[8] This right protects an individual’s autonomy to form his/her own worldview from unjustified censorship.[9] Free speech is constitutionally recognized in Article 33.

This blogger contends that the NTD structure has an indirect effect on the freedom of expression. The framing of certain provisions in the Act promote a culture of censorship.

 Section 35A (1) (b) (v) provides,

“An ISP Provider shall not be liable for infringement…so long as the ISP removes or disables access once it receives a takedown notice…”  

This provision conditions the grant of safe harbor[10] on compliance with takedown notices.Under the Act, an ISP has a maximum of 48 hours to comply with takedown requests.[11] Section 35B (6) further states,

 “An ISP which fails to take down or disable access when it receives a takedown notice shall be fully liable for any loss or damages resulting from non-compliance to a takedown notice without a valid justification.”

While this section gives ISPs a defense to non-compliance, it fails to define what constitutes ‘valid justification.’ Section 35B (10) further provides,

“An ISP Provider shall not be liable for wrongful takedown in response to a valid takedown notice.”

While ISPs face severe criminal sanctions for failure to takedown content, they enjoy immunity against wrongful takedown.

These provisions, when read together, incentivize ISPs to act in a certain manner. First, they condition safe harbor on compliance with takedown notices. Secondly, they give ISPs an extremely short window within which to comply with notices. Lastly, they grant ISPs protection against liability arising out of wrongful takedown. This deliberate framing of these provisions places ISPs in a precarious position. ISPs are forced to weigh the immediate danger of losing their safe harbor against the perceivably lesser threat of upsetting their users.

Thus, there is a general propensity for ISPs to lean on the side of caution and censor the content in question regardless of whether actual infringement has occurred.  While the Act does not explicitly impede free speech, it deliberately promotes a culture of censorship within the conduits of such speech. This is what this blogger refers to as the indirect effect on free speech.

RIGHT TO PRIVACY

The right to privacy is an individual’s right against undue intrusion into fundamental personal matters by public or non-public bodies. Privacy protects us from having information on personal matters unduly publicized or revealed.[12] The digital right to privacy has come under focus in light of the invasive culture pervading the information age. The right to privacy is enshrined in Article 31 of the Constitution.[13]

While privacy is the foundation of a number of individual freedoms, perhaps its most crucial element in modern times is the protection of personal data.[14] In this regard, Parliament passed the Data Protection Act (2019) which provides the legal and institutional mechanism for the protection of personal data.

As with free speech, the Act does not expressly set out to limit the right to privacy. However, the particular wording in certain provisions may indirectly affect the privacy rights of users. Section 35A (1) (c) (ii) states,

“An ISP shall not be liable for damages arising from material stored at the request of the recipient of the services, as long as it is not aware of the facts or circumstances from which the allegedly infringing activity or infringing nature of the material is not apparent”

This blogger pays particular emphasis to this provision as it imposes liability upon ISPs where the infringing nature of the material is ‘apparent.’ The particular wording of this provision can be said to impose a kind of ‘constructive knowledge’[15] obligation on ISPs.[16]

As private entities, ISPs should not be tasked with public enforcement roles.[17] They cannot be expected to determine whether content on their platform is actually infringing as this constitutes a judicial role. Imposing such duties may force them to aggressively police their servers for any sign of infringement. The privacy implications of this scenario are apparent (no pun intended).

In such instances, conducting a surveillance on the activity of users may inadvertently reveal a user’s personal information such as identity and location data.[18] Therefore, by imposing public roles on ISPs, the Act may indirectly infringe on the privacy rights of users.

RECOMMENDATIONS

The Acthas to a great deal, addressed the plight of copyright holders in terms of protecting their works in the digital sphere. However, in so doing, it has directly and indirectly affected other rights of content publishers and other internet users. Drawing from this analysis, this blogger makes certain recommendations.

First, there is need for fundamental reforms to the NTD structure and to develop a framework that embodies interests of all concerned parties.  Rather than incentivizing ISPs to protect themselves, the Act can achieve a degree of balance by imposing correlating duties to protect the interests of other parties i.e. privacy and information-access. This framework may also relieve ISPs of public roles such as the aforementioned constructive knowledge obligations. Such reforms will ensure that ISPs aren’t encouraged to infringe on the rights of other parties in the name of compliance.

This blogger also calls for greater transparency in the takedown notice process. An ideal framework should integrate the interests of other internet users by providing an elaborate process through which content can be restored. Additionally, this piece suggests the development of a process for recognition of a representative body for ISPs. This body should be tasked with a number of obligations such as keeping records. This blogger draws this suggestion from the South African Electronic Communications and Transactions Act (2002) which lays down a clear procedure for recognition of a representative body.[19] Whilst the Act alludes to the recognition of an umbrella association,[20] it does not explicitly define its roles nor the conditions for its recognition. Such a procedure would go a long way in promoting transparency and accountability in the takedown process.

(An upcoming post will focus on the place of automation and the effects of utilizing robotic processes in implementing takedown notices.)

[1] The NTD model introduced by the Digital Millenium Copyright Act (1998) has largely become the standard with nations adopting its basic structure. It was adopted in Europe through the EU’s Electronic Commerce Directive (2000).

[2] P. Gathu, H. Kahindi, ‘Access to Information in Kenya’ Tranparency International,Adili, Issue 155 at https://tikenya.org/wp-content/uploads/2017/06/adili-155-access-to-information-in-kenya.pdf

[3] Article 35 provides (1) Every citizen has the right of access to (a) information held by the State; and (b) Information held by another person and required for the exercise or protection of any right or fundamental freedom.

[4] This Act provides a framework to facilitate disclosure of information held by public entities and private bodies. For instance an individual can seek to access details regarding the government’s revenues and spending which they can obtain from the Budget Documents availed by the National Treasury.

[5] The right to issue a counter notice, though not directly stated, is implied in Section 35B (5) of the Act

[6] S.512, Digital Millenium Copyright Act (1998)

[7] Article 19, ‘Kenya: Copyright (Amendment) Bill 2017’ at https://www.article19.org/resources/kenya-copyright-amendment-bill-2017/

[8] Duhaime’s  Law Dictionary, ‘Freedom of Expression’ at http://www.duhaime.org/LegalDictionary/F/FreedomofExpression.aspx

[9] A. Barak, ‘Freedom of Expression and its Limitations’ Kesher / קשר, No. 8, 1990, pp. 4e–11e at https://www.jstor.org/stable/23902900

[10] A safe harbor is a provision in legislation that provides protection from liability or penalties upon fulfillment of certain conditions. Safe harbor provisions are used to protect parties who act in good faith but violate the law on technicalities beyond their reasonable control.

[11] Section 35B (5), Copyright (Amendment) Act 2019

[12] ‘Right to Privacy’ Wex Definitions, Legal Information Institute at https://www.law.cornell.edu/wex/right_to_privacy

[13] Article 31 of the Constitution provides, “Every person has the right to privacy, which includes the right not to have—(a) their person, home or property searched;(b) their possessions seized;(c) information relating to their family or private affairs unnecessarily required or revealed; or(d) the privacy of their communications infringed.”

[14] Excerpt from B. Rossler, ‘The Value of Privacy’ (Cambridge: Polity Press 2005) as cited by Justice Odunga in ANM & another v FPA & another [2019] eKLR at http://kenyalaw.org/caselaw/cases/view/174597/

[15] Constructive knowledge is a legal term for information that a party is presumed by law to have and which is obtainable by reasonable inquiry.

[16] ILP Abrogados ‘Actual Knowledge, Constructive Knowledge, Imputed Knowledge and To the Seller´s Knowledge in a Purchase Agreement’ at https://www.ilpabogados.com/en/actual-knowledge-constructive-knowledge-imputed-knowledge-and-to-the-sellers-knowledge-in-a-purchase-agreement/

[17] ISPs are mere private entities offering services to their clients for consideration. As such, they should not be burdened with the obligation to enforce copyright. This mandate falls within the purview of public entities such as KECOBO.

[18] Content recognition and filtering tools generally rely on fingerprinting and watermarking technology, which entail ‘real-time’ monitoring and identification of infringing material before blocking access. These tools conduct a surveillance of network packets thereby revealing personal information. See https://www.tandfonline.com/doi/full/10.1080/13600869.2018.1475906?af=R

[19] Section 71, Electronic Communications and Transactions Act (No. 25 of 2002)

[20] Section 35B (2) (h) Copyright (Amendment) Act (2019)

THE BEER BOTTLE BATTLE: AN INTELLECTUAL PROPERTY RIGHTS PERSPECTIVE OF THE KEROCHE AND EABL BEER BOTTLE CONTENTION

29 Wednesday Jan 2020

Posted by in Intellectual Property, Trademark

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By Cynthia Nzuki

In the words of Benjamin Franklin Beer is proof that God loves us and wants us to be happy. However, in an unhappy turn between Kenyan beer brewers and rivals Keroche Breweries (Keroche) and the East African Breweries Limited (EABL) before the High Court, Keroche sued EABL claiming, amongst others, that EABL wanted to patent and own the 500ml euro brown beer bottle used in the packaging of beer.[1] EABL embossed beer bottles[2] that have the universal shape with its unique EABL initials to prevent rivals from using them. EABL also put up an advertisement informing the public of ownership of bottles and bottle crates that were embossed with their trademark; stating that they would institute legal action against anyone found using these bottles. Keroche argued that the exclusive use of the brown bottles was irrational, unreasonable, an abuse of intellectual property and misuse of dominance. See the news piece here.

An importance of intellectual property rights is that it sets businesses apart from competitors. The case between Keroche and EABL is a classic example and illustration of this. EABL products are well distinguishable from those of Keroche by the use of their trademark.[3] Trademarks are recognisable signs and symbols that identify certain products to be from a specific source. The action of EABL embossing their mark on the bottles is an assertion that the bottles with their marks on them belong to them. Could this be the case?

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Origin of Man, Creation Theory and Patent Law in Kenya: What would it look like?

23 Thursday Jan 2020

Posted by in Intellectual Property, Patent

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By Caroline Wanjiru

Intellectual property is a product of human creativity. How ideas are expressed. But how far back can we trace creativity? It begun with human beings. Today we theorise on this based on the creation theory supported by the Charles Darwin theory on the origins of man.

The creation theory is based on religion, a divine deity who created everything and is found in most religious books. The Bible, in the book of Genesis, states that in the beginning, the earth was formless, void and filled with darkness and then through proclamation, God-the divine deity, created light, water, skies, living creatures and dry land. The dry land was called the earth. God then made wild animals of every kind and everything that creeps upon the ground of every kind. In Genesis chapter 1:26-27, God said, let us make humankind in our image, according to our likeness; and let them have dominion over the fish of the sea, and over the birds of the air and over cattle, and over all the wild animals of the earth and over every creeping thing that creeps upon the earth. With this God created humankind in their image, male and female, they created them. The creativity here rests wholly in creation of human beings and their complexities including the intricate nervous system, brain, the complex female reproductive system and all human parts. Is this where it began? How does IP law relate to this creativity?

Our discourse begins here today. Intellectual property theories propose that when one reduces their ideas/creativity into a tangible form-expression of ideas, they are entitled to receive periodical and monopolistic rights over the said creation. If the human beings are the result of a creative process of the divine deity, can we argue that the latter owns or at some point owned the IP in the human body, if any?

This blogger theorises that if there were IP rights in a human body, it would include patents, as we know of them today. Patent law protects inventions that are novel, industrially applicable and not obvious. Section 2 of the Industrial Property Act (IPA) defines an invention to mean a new and useful art, process, machine, which is not obvious, or an improvement thereof capable of being used or applied in trade or industry and includes alleged invention. According to the Bible, there were no human beings in existence before the first human being was created; this would make the human body/being novel. It would not be an obvious creation as the existing or prior art comprised of wild animals which although bear some similarities to the humans, the latter bear distinct characteristics such as the female reproductive system. The human being was created and conferred with rights to control and rule over all that was/is on earth, therefore passing the test of industrial applicability of the invention.

The reference to “…let us make humankind in our image, according to our likeness and proceeding to make/create a human being” in the creation story presupposes the involvement of others who are not the creator referenced in the bible. This would raise the concept of joint ownership over the creation. Where an invention is as a result of more than one person, then the ownership in the creation is vested in the persons involved in the process. To claim ownership, one must have contributed through application of skill and labour.  Therefore, if a person simply reviews creative work and makes minimal edits such as spellings and sentence formations, they would not be entitled to joint ownership. However, where such review contributes substantially to the work, then the person making such contribution maybe entitled to claim ownership. Under section 30 of the IPA joint ownership of inventions would be where more than one person jointly make an invention. Section 63 provides that where there are joint owners, exploitation of the patent rights shall be equal amongst them unless otherwise provided. Joint ownership is a question of fact and varies from case to case.

So, for how long would these rights exist? IP Protection is not an eternal right[1]. Section 60 of the IPA, provides that a patent shall expire after twenty years. In the case of human being creation, the divine deity’s probable patent in Kenya would expire after 20 years from its date of application was filed with KIPI. After this period, an invention falls to the public domain meaning that anyone is/would be free to use the invention without infringing on the owner’s rights. The Centre for Genetics and Society defines human cloning to production of a genetic copy of an existing person. In the absence of any laws preventing it, human cloning can be considered infringement where the rights of the divine deity are protected under patent law. In support of the Big 4 Agenda, KIPI periodically publishes a list of expired patents whose technologies are free for commercial use by the public without infringing on the patent owners rights. 

For purposes of computing the term and validity of the patent, the question then arises as to when the creation actually happened. Ideally, a patent application should be filed every time there is an invention or when there is an improvement of the existing invention(s). In the creation theory, each human being is said to be created in the image of the divine deity. This has three possibilities, first, that the divine deity is unique and morphs after every creation making every one human being created in their image a novel invention. Take for instance the fingerprints, it is said that every human being has different or unique design of their fingerprints. Is this an invention? Second, that the first human being created had all the components of a human being all subsequent humans are the same. Third that the subsequent humans are improvements to the first ones invented. In the first and third scenarios where there is an invention but an existing patent, the grant of patent would not be automatic. If the inventions are novel, they would have to be subjected, independently, to the patentability test as discussed above.

Fingerprints as a component of the human body would be considered as an invention capable of patent protection. The concept of the fingerprints in itself would not be patentable, as it has existed with previous human beings, but the process of making or producing the fingerprints may qualify for patent as long as it is novel/unique with each human being. This would be a process patent. The product being the different or unique appearance of the fingerprints in every human being, would be a question for industrial design protection. Industrial design is a form of IP that is available for any composition of lines which gives a special appearance to a product and can serve as a pattern for a product in the industry[2].

Where inventor introduces new aspects to an invention to improve its functionalities, those improvements are considered inventions for purposes of patent protection.  In the case of the human body, genetic mutation is often possible with time and as a response to the environment that the human is in. In the 1800s, Charles Darwin’s publication On the Origin of Species presented a systematic explanation on the evolution of man.[3] Darwin posits that evolution of man (species) is was a result of natural selection where organisms change over time in accordance with the prevalent environmental conditions in order to increase their ability to compete survive and have offspring[4]. It is therefore possible that the human body has improvements which are natural and independent of their creation. Such naturally occurring improvements would not qualify for patent protection[5].

Where improvements qualify as inventions for patentability purposes, their registration allows for the extension of the life of a patent beyond the 20-year period. This practice is called evergreening. Evergreening prevents patents from getting/falling into public domain and results in extending the IP monopoly granted by the State as long as their improvements are registered as patents.

So where would these patents be enforceable?

Patent protection is territorial. This means that patents are limited to the geographical territory/country where a grant has made. Registration must be obtained in all the countries the owner wishes to trade in. For instance, a patent issued in Kenya is not enforceable in Uganda. The concept of an international patent therefore does not exist in law.

There are countries that have adopted one law to govern all of them on patent registration. Such countries often have one office that receives, examines and grants patents on their behalf. Here the patent granted by such an office covers the countries subject to the one law on registration. French speaking African countries have joined hands to form OAPI that administers IP rights in the region[6]. In Europe, there is European Patent Office that centrally grants patents[7].   

To facilitate the ease of filing applications, countries enter international and regional cooperation arrangements where an applicant can apply to register a patent in several countries without having to travel or engage an agent there. In the international scene, we have the Paris Co-operation Treaty (PCT), which allows individuals from the member States to apply for a patent in all its 153 contracting States. Regionally we have the Harare Protocol where individuals in member States can apply for a patent through ARIPO to its 19 contracting States. In the case for PCT and ARIPO applications, the applications are centrally received and forwarded to each member State to examine and either grant or refuse an application. The decision is then communicated through the central office to the applicant. Kenya is a signatory to the PCT convention and the Harare Protocol.

In the case of the divine deity patent, the application must be made in all countries where the human being is to be released.

Can we patent human beings really?

Lastly, it is important to note that section 26 of the IPA Kenya expressly disqualifies inventions contrary to public order, morality, public health and safety, principles of humanity and environmental conservation from patent protection. Human cloning has since its introduction, been consistently and overwhelmingly opposed for various reasons including public morality.  Examples under section 26 would include inventions of disease causing viruses and related methods of production and process of developing or creating a human body.

In the coming blog pieces, we shall endeavour to trace where we are going with human creativity. Specifically we shall explore the related IP questions around artificial intelligence created in the likeness of the humankind. Feel free to send in your thoughts on the same.

[1] It is at times argued that trademark protection is not limited by time as registration of a trademark is renewable for an indefinite period after it is granted.

[2] See Section 84 of the Industrial Property Act

[3] P. Sloan, “Darwin: From Origin of Species to Descent of Man” The Stanford Encyclopedia of Philosophy (Summer 2019 Edition) at https://plato.stanford.edu/entries/origin-descent/

[4] Ibid

[5] Section 21 (3) (a) of the IPA excludes discoveries from inclusion as inventions, hence patentable

[6] OAPI has 17 member States that are signatories to the Bangui Protocol establishing the regional offices and central registration framework for Patents in the region. See http://www.oapi.int/index.php/fr/

[7] EPO has 38 member states including the 28 EU member states. For more see https://www.epo.org/about-us/at-a-glance.html

Victims of their own success: Has M-PESA become a generic trademark?

11 Wednesday Dec 2019

Posted by in Intellectual Property, Trademark

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By Caroline Wanjiru

On 27th November 2019 the President of the Republic of Kenya released the Building Bridges Initiative Report (BBI Report) which is a document prepared and compiled by the Building Bridges to Unity Advisory Taskforce (Taskforce). The mandate of the Taskforce included collecting information from Kenyans on various national matters. To participate in this process, we have opened our Jadili platform inviting comments on the BBI Report to ensure our voices count. To comment or discuss the report please visit the Jadili Website and make your voice count. This post is not about the BBI Report though but on the content of the said report.

A list of abbreviations and acronyms assists the reader to understand how the words have been used and applied in the document. On page 6 of the report under abbreviations and acronyms, there is reference to ‘MPESA-Mobile Money Transfer Service in Kenya’. This reference presupposes that M-Pesa is not proprietary and does not tell the reader who owns it, if any. It leaves room for open interpretation for instance that there M-Pesa is a Kenyan service-owned by Kenya; that there are no other mobile money transfers in Kenya; presupposes that it is a public good, and not related to an individual. These statements may be correct and has associated legal implications for M-Pesa.

So why is this abbreviation/acronym significant?

M-PESA is a mobile-based money transaction service offered by Safaricom. It is proprietary to Safaricom. The service, which is available to all Safaricom subscribers, allows them to deposit, transfer, withdraw and pay for goods and services using a mobile phone. M-Pesa word is a derivation of the words ‘mobile money’ put together as M for mobile and Pesa (Swahili) for money. M-Pesa fame has continuously grown since its launch and has won several accolades especially within the country. See the success of M-Pesa story here. Is this why the BBI Report referred to it?

As mentioned, M-Pesa is owned by Safaricom one of the communications companies in Kenya. As a proprietary right, Safaricom has fought legal battles to protect its rights in the word. However, in 2014 Safaricom removed the exclusivity clauses in all its M-Pesa Agents’ contracts allowing the latter to operate other mobile money transfer services owned by other communications companies in Kenya. The exclusivity removal was a few months shy of the decision by Competition Authority requiring the removal of the exclusivity. This means that an ‘M-Pesa Shop’ can be offering other services other mobile money transfer services. From this, the question becomes, has the word M-Pesa been used so frequently that it has become generic for mobile money transfer service as referred to in the BBI Report?

In ordinary Kenyan conversations, it is possible to hear Kenyans use the word M-Pesa loosely to mean transfer of money on their mobile phones. We pose the question, how many of us have used the following phrases on column A to mean the phrase on column B?

A B
How much
should I Mpesa
you? 		Asking how much to transfer to another on
mobile platform
Can I M-Pesa
you? 		Asking if payment can be done on the mobile
platform, mostly as an alternate to cash
transaction.
I will M-Pesa you the
balance 		Confirming that money will be sent on the
mobile platform
Who should we
M-Pesa? 		Asking who should be the recipient of the
monies on the sent on the mobile platform
When is the deadline to M-Pesa? When is the deadline to transfer monies on the mobile platform
I will M-Pesa you from
the bank 		Monies will be sent from a bank account
but to a mobile phone

These are a few examples. The phrases under column A utilize the word “M-Pesa’ as a verb to mean ‘transfer of monies over a mobile platform’. Whilst Safaricom owns Mpesa, there are admittedly other platforms owned by the other communications companies whose services in this instance fall under column A. The last phrase has been used to mean that the transferor will send monies from their bank account over the mobile platform and/or that they will be physically in the bank when transferring the monies.  

The BBI Report, a document authored after collecting views nationwide and without referring to Safaricom has used the word M-Pesa as a verb to mean mobile money transfer service in Kenya. On Page 113, the Report explains that ‘M-Pesa enables cash and voucher transfers in every part of the country’. Whilst this is not synonymous to the above uses, one wonders why the authors of the Report could not attribute the platform to Safaricom.

Is it not a good thing that M-Pesa is so used?

Yes and no. It is a good thing that as a brand, M-Pesa has stood out; has been associated with great achievements and has made Kenyan lives better.  However, the above common uses of the word makes M-Pesa synonymous with mobile money transfer. It risks it becoming generic or associated with the ‘act of transferring money over a mobile platform’. Should this happen, there are several risks that come to fore:

  1. The word loses its distinctiveness, which is one of the requirement under law for the registration of trademarks in Kenya. See section 2 of the Trademark Act.
  2. If registered as a trademark for mobile money transfer, the trademark becomes generic, descriptive, and susceptible to removal from the register of trademarks on these grounds.
  3. All other communication companies, financial institutions and generally anyone offering ‘M-Pesa-like’ services become entitled to use the word to describe their mobile money transfer platforms. The trademark now falls in the public domain.
  4.  Safaricom loses the proprietary rights in the word M-Pesa and therefore unable to enforce any trademark rights against any third party who uses the word M-Pesa for mobile money transfer.  
  5. Inclusion of the word M-Pesa in dictionaries- English and Kiswahili as a verb meaning to ‘transfer money over a mobile platform’ and its equivalent in Kiswahili.

In the past, words such as escalator, aspirin, cellotape, Xerox, kerosene were all once trademarks with private rights vested in individual proprietors. Today, these are common words used daily but not to describe the specific goods or services despite that being their original purpose. These words on their own cannot be registered as trademarks as they would be considered descriptive.   

In 2011, Twitter had a similar battle over the word ‘tweet’ where the word was challenged for being used to refer to ‘advertising in connection with Twitter and therefore incapable of serving as a mark owned by Twitter Inc. Even though, this matter was eventually settled out of court, Twitter in its returns to the US Securities and Exchange Commission, reported one of their risks to be that one of its trademarks could lose their value. They ‘risked that the word ‘tweet’ could become so commonly used [generic] that it becomes synonymous with any short comment posted publicly on the internet’. Had this happened, Twitter Inc. could have lost the proprietary rights that came with the trademark ‘tweet’.

In conclusion, we pose the question: Is M-Pesa synonymous to transfer of money over a mobile phone platform in Kenya? Will it become a victim of its own success?

The author would like to recognize open conversations on the subject she had with Mr. Mwangi.

WHAT CAN I GET AWAY WITH? EXCEPTIONS TO COMPUTER PROGRAMME COPYRIGHT INFRINGEMENT

04 Wednesday Dec 2019

Posted by in Copyright, Intellectual Property

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By Cynthia Nzuki

Introduction

Software and computer programmes have become a huge part of our daily lives. They drive significant elements of our lives. For example, we now use software and computer programmes such as word processing, accounts software, asset management software and so on. This is replicated in schools, homes, social places and so on. The programmes help us carry out various tasks as they make our work easier. Those who develop the software and the programmes expend their time and resources and as such, protection is important.

The Copyright Act defines a computer programme as a set of instructions expressed in words, codes, schemes or in any other form, which is capable, when incorporated in a medium that the computer can read, of causing a computer to perform or achieve a particular task or result.[1] Think of it this way: when a person is instructing another on what to do and how to execute it, the instructions should be in a language that the recipient understands; otherwise, there would be a communication breakdown due to language barrier. Similarly, a software or a computer programme is the language computers understand are able to execute tasks.

In Kenya, protection of computer programmes is within the copyright regime.[2] They are categorized as literary work. Of the various challenges that face the software industry, the major one is infringement or simply put theft and piracy. Principally, any unauthorized copying of software and computer programmes is infringement. Infringers obtain copies of a given computer software through unauthorized means, modify and augment the duplicated software code in undesirable ways, including insertion of malicious logic, backdoors, and exploitable vulnerabilities. This exposes consumers to harm and affects the businesses of software developers and software developing industries.

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Internet Service Providers (ISPs) and Copyright in Kenya: Commentary on the Copyright Amendment Act 2019

23 Wednesday Oct 2019

Posted by in Copyright, Intellectual Property

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By Caroline Wanjiru

This post forms part 2 of our series on the Intellectual Property considerations in the Copyright Amendment Act. The IT considerations, focusing on digital rights will be addressed in a follow up series.

ISPs and Take Down Notices

Section 35B covers take down notices, their form, content, addressees etc. A take down notice is a request to an ISP by a copyright holder (complainant) to remove infringing content.

  1. The take down notice shall:
  1. Be in writing and addressed to the ISP or their agent.
  2. Contain the name and address of the complainant.
  3. Signed by or for the complainant.
  4. Contain specific details of the copyrighted works subject of infringement or which is to be removed.
  5. Identify the rights being infringed, for instance the broadcast, production rights etc.
  6. Set out the details of the content to be taken down and the location of this content.
  7. Be accompanied by a sworn statement attesting to the ownership of the content, validity of the rights under e) above, good faith on the complainant and the efforts (albeit unsuccessful attempts) made to the entities responsible for making the content available remove the content; and
  8. be copied to the Board Communication Authority and the recognized ISP umbrella body.

Comment: Conspicuously missing is a requirement to include the alleged infringer (who is the ISP subscriber hence the addressing of the notice to the ISP) in the notice to take down. Such inclusion would notify and provide an alleged infringer of the notice and the option to ‘challenge’ a take-down notice issued to their ISP. There exists a relationship between the ISP and their subscribers contractual or otherwise. The obligation to notify the subscriber, if any, shifts to the ISP (see below). It is not clear as to why such a requirement would be excluded yet the requirement of a sworn statement by the complainant would be presumptive that they have attempted to reach the alleged infringer to remove the infringing content. Would the subscriber not be entitled to demand to be heard before the notice is effected? If yes, at what point would they be heard yet the notice is to be effected within 48 hours? Article 47 of the Constitution of Kenya provides that every person has a right to fair administrative action, this right includes the right to be heard.

  1. A take down notice will be deemed delivered
    1. Next business day following physical delivery at an ISP’s registered office.
    2. 2 days after the day post if by registered post.
    3. Immediately if sent by electronically to a designated ISP address.

Comment: This provision has serious implication for the ISPs as it dictates when the 48 hours of compliance starts running. Where an ISP has provided a designated address, time starts running immediately a complainant sends it. It is not clear what would happen if there is delivery failure, if it is sent on a day that the ISP is closed for business or is even intercepted by a third party. While this blogger appreciates the fact that electronic transmission is instant, she acknowledges that there are circumstances that may interfere with the ISPs ability to receive the electronic notification. Legislating on time of delivery elevates time to a statutory requirement which carries weighty consequences. Time is truly of essence. However, having such a statutory requirement is an open invitation to breach. This is best left to the industry to regulate. The Board in charge of regulating ISPs may issue policy directions on the same therefore introducing implementation flexibilities.

  1. An ISP shall upon receipt of a valid take down notice, notify the person responsible for making the infringing content available and provide them with a copy as soon as is practicable.

Comment: This provision is vague, yet its content creates a duty for the ISP. The mandatory requirement, albeit on their cost, for the ISP to find or establish mechanisms within which to ‘notify’ an alleged infringer that they have received a takedown notice from the complainant. It’s unclear if the notification should be in the same manner as received from the complainant. For instance, if the takedown notice is received electronically, can the ISP notify the alleged infringer by mail? The latter would mean that time is substantially altered. Yet it is a possibility.

The notification should be immediate or as soon as is practicable. In light of subsection 5 which mandates an ISP to take down content within 48 hours, what is immediate? What takes precedence? Taking down the content or serving the notice on an alleged infringer? If this should be as soon as practicable, whose practicality is it? The complainant whose interest is to have the content taken down; the ISP whose primary interest would be first to serve their clients, must act within 48hours and disable access to the content; or the alleged infringer whose interest is to have the content online at all time and who may be benefiting economically from the content, who may require ‘reasonable’ time to file a counter notice? Lastly, if it is the ISP’s practicability, can they take down the content i.e. comply with the law and then serve notice later? The option of having the notice sent ‘as soon as is practical is ambiguous capable of more than one interpretation.

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