When the French government purchased the first photography patent, photography was declared ‘a gift to free the word’. These words would turn out to be somewhat prophetic, as photography would go on to have a resounding impact on the world. For instance, photography played a role in sensitizing people on the horrors of war, since for the first time, citizens of different countries were able to actually see the ravages of war that had before then seemed so far away. 180 years later, it is interesting to note how the law concerning photography has developed in Kenya. Does the state of applicable laws show our esteem for this gift or are we stifling it? In this blog, we discuss the law on photography in three broad themes: copyright; image rights and privacy; and security.
You will recall that only a few hours ago today, we covered the CopyrightX Week 3 Lectures on The Subject Matter of Copyright, including the Lecture on Copyright in Music captioned in the screenshot above. I reckon the full extent of the irony in the current impasse between Sony Music Entertainment (SME), YouTube and our beloved Terry Fisher will become much clearer to you once we cover “Fair Use” in Lecture 9 of the CopyrightX course. To add to the irony, for those of you that had NOT gone through this Week 3 Lecture video, the option of watching it on YouTube is no longer available – thanks to (Sony’s abuse of) copyright.
The Business Daily recently reported that Time Warner Inc and Kenafric are in talks to settle their copyright and trade mark infringement dispute out of court. It is reported that both parties recently appeared before the soon-to-retire IP-savvy Justice JB Havelock to request more time to conclude settlement discussions.
As we had previously discussed here, Cartoon Network Africa through its parent company, Time Warner had moved to the High Court to stop local confectionery giant Kenafric from using its cartoon “BEN 10” on the wrappers of its bubble gum products. Time Warner argued that the association of the chewing gum with its brands was damaging to the reputation of BEN 10 and goods branded with the label including toys, video games and clothing valued at Sh275 billion therefore Kenafric’s use of the name BEN 10 amounts to trade mark infringement of BEN 10 Trademarks. In addition, the sworn affidavit by Cartoon Network’s Vice President Louise Sams claimed that the unauthorised reproduction or adaptation or publication or broadcast or sale or distribution or possession or importation of the offending chewing gum by Kenafric constituted copyright infringement.
In its defence, Kenafric argued that the Cartoon Network products in question are registered under different classes under the Nice Classification hence Time Warner cannot challenge Kenafric given that the latter deal in different products. Kenafric also argued that the US firm has no local operations that can make consumers links its products with those of Kenafric, which are mostly sold within East Africa. All in all, Kenafric contended that the line of trade of the two companies is distinct and there are no similarities between their goods that can confuse customers.
In the meantime, many intellectual property (IP) commentators agree that Kenafric runs the risk of being dragged to court in similar fashion by the Coca Cola Company for its wrappers which appear to infringe on the “FANTA” and “SPRITE” marks. These infringing get-ups are available below:
Be it as it may, this blogger argues that Kenafric’s public experience with intellectual property enforcement should serve as a lesson to other commercial entities on how not to use the IP of other entities.
From a copyright perspective, literary and artistic works that make up a trader’s brand image cannot usually be used without that owner’s permission. Of course, the copyright owner may refuse to give permission for use of their work. In the case of Kenafric’s operations, it is clear that its uses would not fall within the scope of the fair dealing provisions and would not be subject to compulsory licensing through the Competent Authority. Therefore Kenafric would have to seek and obtain permission in writing to use, reproduce or adapt any trader’s copyright works.
Therefore, Kenafric would have to negotiate a licence to cover the use it intends to make of the work. This licence is essentially a contract between Kenafric and the copyright owner including the terms and conditions of use and payment or royalty for the use. The Copyright Act distinguishes between exclusive and non-exclusive licenses however the license must be in writing.
From a trade marks perspective, if Kenafric wants to use other people’s trade marks, it must obtain permission. Trademarks may be registered or unregistered. The registration of a mark gives the proprietor of that mark the exclusive right to the use of the trademark upon or in relation to the goods in respect of which it is registered, or in relation to services for the purpose of indicating that a particular person is connected, in the course of business, with the provision of those services. It follows that the proprietor of the mark may sue for infringement where there has been an unauthorised use of the registered mark. In addition, the registered owner of a trademark also retains the right to protect any reputation acquired through use by means of a passing-off action.
Therefore if Kenafric wants to use a trade mark, it must approach the owner and enter into a licence agreement with them. As one of the largest confectionary companies in the East African region, this blogger is of the view that Kenafric has sufficient bargaining power to negotiate favourable licensing terms and conditions with respect to both trade mark and copyright uses. As witnessed previously in the Mandela Foundation case against Zuji Travel Agency, globalization has made it easy for IP owners to detect IP infringement all over the globe, therefore the onus is on IP users to take all reasonable precautions to ensure that they obtain the necessary permissions and licenses from the IP owners.
In the case of most commercial entities such as Kenafric, formalized licensing arrangements provide a desirable win-win outcome for all parties involved as opposed to costly and lengthy court cases. What remains to be seen is whether Kenafric and other local companies will learn from the Ben 10 case.
Earlier this month, Yahoo! News reported that the South African consulate in Hong Kong wrote to a local travel company “Zuji” and demanded that it “immediately pulls a front-page advertisement featuring an image of a fist-pumping Nelson Mandela above the word “freedom””. The advert in question is pictured above.
According to the South Africans, the use of the stylized image — which also echoes the Barack Obama “Hope” poster — was an infringement of copyright held by the Nelson Mandela Foundation. A close-up of the advert is pictured below:
Byronie Guthrie from the South African Consulate is reported to have found the advert “quite strange”:
“We have seen the advertisement and have been in touch with the company involved, because Nelson Mandela’s image is never to be used for commercial use…In South Africa, even his own charities are discouraged from ever using his image for commercial use…”
In response to the Consulate’s letter, Zuji is reported to have stated that it would withdraw the ad immediately. Zuji further added that:-
“Zuji has nothing but the utmost respect for the late South African leader, Nelson Mandela, and would like to apologise for associating our advertising campaign with Mr. Mandela,”
Two key intellectual property issues arise from Zuji’s advert, namely whether Zuji’s advert amounts to trademark and/or copyright infringement?
From a copyright law perspective, the main issue for determination is the chain of title with regards to advert. If the advert was adapted from a picture taken of Mandela then the photographer would have a right of action against Zuji. Therefore the onus would be on the Mandela Foundation to prove that it has valid assignment agreements with respect to all photographs taken of the late Mandela. These assignments would have to be coupled with an objective demonstration that the stylized advert and a photography owned by the Foundation are substantially similar. This point is illustrated by the recent case of Shepard Fairey, which involved the famous “HOPE” campaign poster that had been adapted from a photograph taken by AFP.
What if Zuji developed the advert from scratch without infringing on any existing copyright work i.e. a photograph? In such a case, this blogger argues that the Foundation would be able to rely on trade mark law protection.
On the issue of trade marks, the Foundation may be able to rely on the common law remedy of passing-off. This action protects the reputation acquired through use of an unregistered mark. Therefore the common law protects through passing-off is the goodwill between a trader and its customers which the mark helps to sustain. Thus in the normal case of passing-off, the Foundation has to prove a reputation sufficient for members of the public to be misled by Zuji’s advert into thinking that the latter’s goods and services are associated with those of the Foundation. Consequently, the rights which an unregistered trademark owner such as the Foundation has against an imitator such as Zuji would exist only so long as the Foundation does not abandon its business.
Tonight the Brazil 2014™ FIFA World Cup™ (WC) kicks off in the South American nation of Brazil! As previously discussed here, FIFA has developed and protected an assortment of logos, words, titles, symbols and other trade marks to be used in relation to the 2014 FIFA World Cup™ (the Official Marks). In order to attract funding to stage such a large event, FIFA offers its partners, sponsors and supporters the exclusive rights to use of the Official Marks for promotional and advertising purposes.
In this post, we shall consider FIFA’s intellectual property (IP) rights in the broadcasts and public view of the WC. It is clear that all copyright and other (IP) rights subsisting in, and all goodwill associated with, broadcast coverage of the WC are exclusively owned by FIFA and protected by domestic and international law. In this regard, FIFA distinguishes between broadcasters who are defined as Media Rights Licensees and exhibitors who stage Public Viewing Events in relation to any matches of the 2014 FIFA World Cup Brazil™.
For broadcasters, FIFA offers exclusive rights to transmit live coverage of the games using the following platforms, namely internet, mobile, radio and television. Within Africa, FIFA has negotiated and concluded a Media Rights Agreement with the African Union of Broadcasters, the umbrella body of all State-Owned Broadcast Networks in Africa. Therefore in Kenya, the exclusive media rights licensee for TV and Radio is the Kenya Broadcasting Corporation (KBC). See full list of FIFA Media Rights Licensees here.
For exhibitors, FIFA defines a “Public Viewing Event”(PVE) as any event where broadcast coverage of the Competition is made available for exhibition to, and viewing by, an audience (whether members of the general public or otherwise) in any place other than a private dwelling. By way of example, exhibitions in bars, restaurants, stadiums, open spaces, offices, construction sites, oil rigs, waterborne vessels, buses, trains, armed services establishments, educational establishments and hospitals are not deemed to be commercial public viewing events if no further commercial activities (such as admission fees or sponsorship activities) take place in relation to the public viewing activities. However, 3D exhibitions and public viewing exhibitions in theatres and cinemas are excluded from the definition of PVE.
It is important to note that exhibitors staging either a Commercial PVE or Special Non-Commercial PVE will require a license from FIFA. A Commercial PVE is where the exhibitor stages a PVE for commercial purposes i.e. a direct or indirect admission fee is charged for the exhibition of the broadcast coverage; and/or sponsorship or other commercial rights of association are exploited relating to the event; and/or in any other way commercial benefit is gained from staging the event.
From an intellectual property perspective, exhibitors must be take note of two important copyright and trade mark issues. On the trade marks side, exhibitors of PVEs in “commercial establishments”, such as pubs, clubs and bars i.e. Non-Commercial PVEs cannot not use, nor authorise the use of, any Official Marks (or any part thereof) or any symbol, emblem, logo, mark or designation which, in FIFA’s opinion, is similar to, or is a derivation or imitation of, any of the Official Marks.
With regard to copyright, there are two requirements that exhibitors must comply with. Firstly, they must ensure that they use the signal of the official licensed broadcaster of the WC Competition in the respective territory for their PVEs. Secondly, they must ensure that their premises are licensed by the relevant collective management organisations (CMOs) for public performance and/or communication to the public of broadcasts. See the FIFA Regulations for Public Viewing Events here.
While the sale of world cup broadcast rights by FIFA is one of its most profitable revenue sources, digital piracy poses a serious threat to the economic value of broadcasting rights. In sports coverage, the value of the coverage is short lived as the viewers interest in a match peaks just before the final result is known. Thereafter, the results are known and interest falls dramatically. During the 2010 FIFA World Cup, over 18,000 illegal broadcasts were identified by FIFA during its tournaments. Further, 18,227 cases of digital piracy were recorded with the main infringement taking place through live user generated content (UGC) streams which made up to 90% of all infringements. FIFA being well prepared was able to remove 12,638 of the live UGC streams in real time. According to FIFA TV World Cup Office in Brazil, in addition to investing “considerable resources in delivering high-end products to its clients, “FIFA also makes great efforts to protect its rights and the rights of its media rights licensees by putting in place a wide range of monitoring systems, including, satellite monitoring, broadcast and Internet monitoring, as well as other measures to safeguard broadcast and other IP rights.”
When looking at worldwide events such as the world cup there is greater urgency to crack down on digital piracy, to ensure that a modern legal framework for right owners is in place and that outdated legislation does not prejudice the interests of broadcasters and sponsors and, ultimately, the financial well-being of sports organizations. South Africa was able to achieve this by having special courts specifically set up for the world cup ‘offences’ and while mainly dealing with criminal offences had the capacity to issue injunctions against the promoters and distributors of illegal broadcasts, trademark and copyright infringement within South Africa during the world cup.
In the Kenyan context, the government through relevant agencies including Kenya Copyright Board (KECOBO) will be called upon by exclusive licensees within Kenya to deal with any alleged violations of FIFA’s IP rights. However exclusive licensees are encouraged to adopt a more proactive approach by engaging with the government in setting up special monitoring and advisory teams to ensure that IP violators are dealt with in accordance with the law.
Media reports here and here indicate that musician JB Maina has accepted Safaricom’s out-of-court settlement offer of KES 15.5 Million in the case of John Boniface Maina v Safaricom Limited  eKLR. To recap briefly, the JB Maina case has been in court since 2010 when Safaricom was accused of copyright infringement in respect of musical works of JB Maina alleged to have been uploaded on Safaricom’s portals.
Prior to the reported settlement, the court had already granted JB Maina a temporary injunction restraining Safaricom from dealing in JB Maina’s works, in addition to awarding JB Maina the costs of the motion to be paid by Safaricom. Thereafter the court allowed JB Maina’s application for Anton Piller orders against Safaricom. These orders allowed JB Maina to enter Safaricom’s premises, inspect its machines, take records, make copies of records for purposes of gathering and preserving evidence necessary to prove his claim of copyright infringement. The final straw in the JB Maina case was an application filed by JB Maina for Safaricom Chief Executive Officer to be held in contempt of the anton piller orders issued by the court and committed to civil jail. This move prompted Safaricom to seek the leave of the court to allow for an out-of-court settlement of the suit with JB Maina.
With above information in mind, it comes as no surprise that Safaricom would be keen to pursue and conclude an out-of-court settlement in this matter with JB Maina. However this blogger argues that this settlement has left several critical issues unanswered:
1. The Separation of Infrastructure Provision from Content Provision
In this regard, Safaricom’s position has always been that it is an infrastructure provider that enables rights owners and their licensees to avail their music to end users. In the present case, the licensees are Content Service Providers (CSPs) who are duly licensed by the relevant collective management organisations (CMOs) to avail music. In this regard, Safaricom maintains that where licensed CSPs provide music using Safaricom’s infrastructure, it is enough that the CSPs produce to Safaricom all the required copyright licenses issued to it by the CMOs. It is on this basis that Safaricom enters into Content Provision Agreements (CPAs) with CSPs whereby the latter undertake to obtain all necessary licenses, rights of use, assignment and approvals from any relevant authorities and copyright owners for the provision of the Content and ensure that such licenses and approvals are updated and valid throughout the term of the CPAs. Critically, the CPAs state that CSPs undertake to defend and/or settle all intellectual property (IP) infringement claims brought against Safaricom and keep the latter fully indemnified.
In light of the above, Safaricom argue that as an infrastructure provider, it need not be licensed by CMOs or rights owners since the CSPs availing the music to end users are already licensed by CMOs and/or rights owners.
However, this blogger contends that the above argument is problematic for two main reasons, namely it betrays the widely accepted understanding of “communication to the public” and “infringement” under domestic and international copyright laws. In this regard, it is submitted that both functions of infrastructure provision and content provisions entail an exploitation of the right of communication to public and/or making available as defined under Article 8 of the WIPO Copyright Treaty and Section 2 of the Kenya Copyright Act. With regard to the issue of infringement, section 35 clearly contemplates two levels of infringement namely primary and secondary or direct and indirect. It is submitted that Safaricom may be liable for secondary or indirect copyright infringement as an infrastructure provider since it causes to be done or furthers the doing of an act which is controlled by the rights owners.
2. The Role of Content Service Providers
Safaricom advances two main reasons why it is averse to dealing directly with rights owners like JB Maina. Firstly, it argues that under the Kenya Information and Communication Act (KICA) read together with the Unified Licensing Framework gazetted in 2008, only CSPs who hold a current license from the Communications Authority of Kenya (CAK) are mandated to provide music to end users. Therefore Safaricom would only deal with CSPs and/or rights owners once they are duly licensed by CAK. Secondly, Safaricom appears to suggest the current arrangement of CSPs as middle-men is consistent with the provisions of the Kenya Competition Act i.e. preventing the monopolisation of content provision by a handful of CMOs or rights owners.
This blogger argues that this arrangement do not always work to the advantage of CMOs and rights owners since the CSPs are at liberty to under-state royalty payments received from Safaricom. Therefore, rights owners like JB Maina and CMOs like MCSK, KAMP and PRiSK must insist on dealing directly with Safaricom or at least having tripartite agreements where the copyright owners can be on the same level as the CSPs.
It is clear that JB Maina’s case raised important issues regarding rights owners that are not members of any of the music CMOs. However there are two other likely scenarios that would require Safaricom to deal directly with a rights owner. Firstly, where the rights owner is a member of a CMO but has selectively limited its assignments to the latter and/or the works to be administered by the latter. Secondly, where the rights owner has assigned all rights exclusively to both the CMOs and the CSPs (A frequent occurence!).
Kenya has had two High Court rulings in two separate cases in the space of two weeks, both dealing with copyright infringement in television shows. In this blogpost, these rulings will be analysed bearing in mind that both these cases are still on-going.
In the case of Oracle Productions Limited v Decapture Limited & 3 others  eKLR (the Magnate case), Oracle claimed Decapture and others have infringed the latter’s copyright in its reality game show. Oracle is the copyright owner of a literary work describing a reality game show styled “Young Entrepreneurs” and registered with the Kenya Copyright Board as KCB 0831. Decapture is the copyright owner of a literary work describing a reality game show titled “The CFC Stanbic Bank Magnate” (the Magnate show) and registered with the Kenya Copyright Board.
Oracle issued a notice to Decapture and others to produce at the trial the audio visual production of all the broadcast episodes of the Magnate show. Decapture did not comply with Oracle’s notice, necessitating the latter to file a notice of motion to compel Decapture to make the discovery on oath. As many may know, pre-trial discovery is provided in the law of civil procedure so as to allow litigants to be furnished with relevant and necessary documentary material before the trial so as to assist them in appraising the strength or weakness of their relevant cases, thereby expediting the hearing and reducing costs of litigation.
Decapture and the other defendants opposed the notice to produce on three main grounds, namely:
1) They should not be compelled to hand over its intellectual property to its competitor.
2) They has incurred a lot of expenses and cannot therefore provide the materials sought for free.
3) The materials sought are unnecessary and irrelevant since no copyright subsists in the plaintiff’s concept or idea.
The Court allowed Oracle’s application to compel discovery and stated as follows:
From the competing claims disclosed in the pleadings, the plaintiff [Oracle] obviously requires full discovery of the disputed materials to get a fair trial. I thus find the materials sought on discovery are relevant and necessary. The materials have been broadcast and I am at a loss how the intellectual property of the 1st defendant [Decapture] will be lost merely by discovery. The proposal by the 1st defendant [Decapture] to only play the productions in court on the date of the trial would ambush the plaintiff [Oracle]. It would leave the plaintiff holding the short end of the stick. The question of costs of making the copies is not beyond recompense if the 1st defendant [Decapture] or any other defendant prevails at the trial. In a synopsis, the defendant [Decapture] will not suffer prejudice not compensable in costs. The rights of the plaintiff [Oracle] to discovery outweigh that inconvenience.
This blogger is not in total agreement with this ruling in the Magnate case. It is disappointing that the court did not stop to interrogate the relevance and necessity of fixations of broadcasts being produced in a case where the alleged infringement relates to literary works. The ruling ought to have been clear on the purpose of the broadcasts in establishing copyright infringement of Oracle’s literary work otherwise the discovery would amount to a fishing expedition, at best.
In the case of Nonny Gathoni Njenga & another vs Catherine Masitsa & another  eKLR (the Wedding Show case), Nonny finds herself in a similar position as Oracle in the Magnate show case. Nonny is the copyright owner of a literary work describing a wedding show styled “The Baileys Wedding Show with Nonny Gathoni”. Catherine is the copyright owner of a literary work describing a wedding show titled “Samantha’s Bridal Show”.
Nonny successfully applied to court for an order restraining Catherine from infringing in any way on Nonny’s copyright in the literary work. Recently, Nonny was back in court claiming that despite the previous order, Catherine went ahead to infringe Nonny’s said copyrighted literary work in violation of the Court’s Orders. Therefore Nonny claimed that Catherine should be committed to civil jail for contempt of court. According to Nonny, the alleged infringement took place when Catherine caused the broadcast of Samantha’s Bridal Show.
In support of its case alleging copyright infringement, Nonny produced three (3) DVDs “taken not from one show but a series of shows over a period of time”. In reply, Catherine questioned the admissibility of the DVDs arguing that they were secured illegally and that they “constituted an infringement of property rights.”
Although the court ruled in favour of Catherine, the following passage in ruling is significant:
In light of the above analysis and having already stated above that the DVDs attached by the Plaintiffs are not accompanied by a Certificate as required under the evidence Act, it therefore follows that the said DVDs are inadmissible as evidence.
However, in the interest of justice, it is my view that the Plaintiffs are at liberty to produce such certificate for the admissibility of the said evidence. When that is done, the Court will be able to examine the evidence and evaluate the probative value of the said DVDs as well as the authenticity. The Respondent has alleged that the DVDs were obtained illegally, however that cannot be ascertained at this stage until the Certificate is filed and the Court is able to determine the source of the DVDs.
This blogger is not in total agreement with this ruling in the Wedding show case. First and foremost, the court appears to have made the same mistake as in the Magnate case ruling. The court in the Wedding show case appears to have accepted as a matter of both fact and law that the fixation of broadcasts by Catherine serves as automatic proof of copyright infringement in Nonny’s literary work. However, this blogger believes that the court will have an opportunity to redeem itself when it delves into the probative value of the DVDs. Secondly, there is an interesting issue that arises in the Wedding show case namely, whether KTN can file a counterclaim for copyright infringement as a result of the unauthorized fixation of its broadcasts by Nonny.
All in all, this blogger will be following the developments in these two cases closely.
IP Kenya has learned that John Katana, renowned musician and founder member of the legendary Kenyan band, “Them Mushrooms”, has obtained judgment in the Chief Magistrates’ Court against TV & Radio giant, Royal Media Services (RMS), in a case relating to infringement of copyright. The Court awarded Katana over KES 2,400,000 in damages for infringement of copyright with respect to the latter’s musical work titled “Kazi ni Kazi”, featured above.
The facts of this case are briefly as follows: sometime in 2005, Katana became aware that his song was used as a signature tune for a radio programme aired by Radio Citizen which is among the twelve radio stations owned by RMS. The radio programme dubbed “Chapa Kazi” aired virtually every day and at least five days in a week. Katana alleged that RMS had not obtained the license or authority from him or the members of his band to reproduce or use the said song in connection with the radio show. As a result, Katana contended that the song has now become unduly associated with RMS to the extent that no other broadcasting station wants to have anything to do with the hit song as most potential licensees believe that the song and the band have a relationship with RMS. Aggrieved by RMS’s actions, Katana testified that he approached RMS to complain and seek compensation but he was ignored. Thereafter, Katana filed a complaint with the Kenya Copyright Board (KECOBO), who in turn wrote to RMS on the matter but RMS allegedly declined to take any action. As a result, Katana claims that he was forced to take legal action to stop the infringement of his work and seek compensation.
Through his lawyer, Katana conservatively quantified the damages for the copyright infringement at a total of KES 5,000,000, which included loss of royalties which were calculated at a minimum of KES 300,000 per year assuming RMS had approached him for a license.
In response, RMS sought to rely on the “fair dealing” provision of the Copyright Act. RMS submitted that the radio show in question was educative in nature and was never used for profit-making. Other defences raised by RMS included that it had popularised Katana’s song through its use of his song on its radio station therefore Katana was a major beneficiary of RMS’s use of the song.
The judgment in the above case, John Katana Harrison v. Royal Media Services Ltd 6161 of 2009, sets an important precedent in the area of copyright law in Kenya. It is trite law that the right to authorize the inclusion of any musical works in an audio-visual work or a broadcast, which is known as a synchronization right, can only be authorised/licensed by the respective foreign or local copyright owners.
In reality, this blogger has observed with alot of concern that there are a number of production studios, broadcasters, marketing and advertising companies in Kenya that include musical works in their productions. The most common examples are the Wedding Shows that are aired on local television networks. These shows include a whole repertoire of well-known local and foreign musical works from various genres. Following the judgment in the Katana case, this blogger would advise all parties concerned in the synchronisation of musical works to ensure that express consent has been duly obtained and where necessary, the desired license agreements are in place.