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Emerging Issues in Enforcement of Copyright Infringement in Africa: Kenya as A Case Study

24

JUN

2022

ABSTRACT

Long before the institution of formal legal frameworks for the safeguard of intellectual property (IP) rights, the protection of products of creative ingenuity, had been acknowledged as having pride of place. For example, within Bruce Bugbee’s formidable work, The Genesis of American Patent and Copyright Law[1], are accounts of copyright protection in ancient times — one of which is the case of Vitruvius (257–180 B.C.E.), who revealed intellectual property theft during a literary contest in Alexandria. While serving as judge in the contest, Vitruvius exposed the false poets who were then tried, convicted, and disgraced for stealing the words and phrases of others.[2]

The foregoing paragraph does more than dabble in history. It elucidates, aptly, the prodigious value of copyright as a facet of IP, lending strength to why it must be effectively protected. To this extent, modern legal regimes have put in place systems for the protection of original works of copyright, alongside enforcement procedures for possible violations.

With attention on Africa, and Kenya in particular, this paper succinctly considers the concept of copyright, what the law considers infringement, and the measures in place for the enforcement of copyright. In the final analysis, this paper highlights the challenges that frustrate effectiveness in enforcement and propose recommendations on the way forward.

COPYRIGHTS AND AFRICA

Intellectual property is a pivotal instrument which propels the advancement of a brand. This is especially so regarding the protection of all forms of Intellectual property in the business of a brand. While there is no general intellectual property law that applies to Africa as a whole, most African countries have their own intellectual property laws which have proved instrumental in enabling creative endeavours in these countries.

The protection and enforcement of copyright is of crucial importance to the development of the creative/content industry.[3] The World Intellectual Property Organisation (WIPO) defines Copyright as a legal term used to describe the rights that creators have over their literary and artistic works,[4] which comprise “every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression.”[5]

National laws in Africa typically set out the works eligible for copyright protection. Under the Nigerian Law,[6] works eligible for protection include literary works, musical works, artistic works, cinematograph films, sound recordings and broadcasts. Similarly, under the Kenyan Copyright Act 2001 (as amended in 2019), copyright vests in respect of literary works, musical works, artistic works, dramatic works, audio-visual works, sound recordings, and broadcasts.[7]

As captured above, copyright refers to a specific class of rights that creators have.

These rights are bifurcated into moral and economic rights. The non-commercial, non-assignable moral rights, which vest in and are strictly retained by the authors of original work, comprise the right to claim authorship of a work;[8] and the right to object to any distortion or modification of a work, or other derogatory action in relation to a work, which would be prejudicial to the author’s honour or reputation.[9] The economic rights, on the other hand, consist of the exclusive right, in relation to a work, of reproduction, distribution, public performance, broadcasting or other communication to the public, translation, and adaptation.[10] Copyright infringement occurs when someone does or causes another to do any of the foregoing acts without the licence or authorisation of the owner of the copyright.[11] The case of Microsoft v Microskills[12] accurately exemplifies the point. In that case, the defendant was found to have infringed on Microsoft’s copyright by selling, offering for sale, and distributing its software without authority. The end of the matter saw an award of Ksh.250 million in damages in favour of Microsoft.

Africa is rising with double-digit growth figures in many countries; the continent represents an untapped, dynamic, fast-moving, and competitive market that businesses can scarcely ignore.[13] This in turn has led to an increased investment into the African markets, and of course, in IP rights of brand owners. On the other hand, the counterfeit market in Africa has grown drastically, making the task of curbing the rise in infringement of intellectual property works more difficult. To this end, African countries through laws, policies and institutions have put in place measures to combat this menace. This article places particular focus on Kenya, thus, the next paragraph would consider the copyright enforcement measures in Africa with spotlight on Kenya.

Copyright Enforcement Measures in Africa: Spotlight on Kenya

Very recently, the Kenya Copyright Board announced that its inspectors in collaboration with MultiChoice Kenya, effected arrests at Kilua Beach Hotel, Mombasa and seized 16 decoders and other contrivances used for distributing infringed DSTV signals.[14] It is not uncommon for states to have readily available enforcement procedures/measures under their laws to provide for effective action against infringement and compel observance or compliance to the law. This is evidenced in Kenya by the exercise of the power of the Kenya Copyright Board to seize infringing items of copyright. This power is exercisable by the Board pursuant to the Kenyan Copyright Act which vests in the board the powers to enforce copyright and other related rights in Kenya.[15]

ENFORCEMENT OF COPYRIGHTS IN KENYA

Generally, enforcement measures are broadly grouped as civil remedies, criminal remedies, and border measures.

  • Civil Remedies (Provisional and Final)

It is commonplace for a party whose copyright has been or is being violated to approach the court for redress by way of a civil action. Such a party may seek for and be granted by ex-parte applications, court orders such as Anton Piller orders, which are generally meant to prevent the frustration of litigation, whether through irreparable damage to the plaintiff prior to the determination of the action or through interference with the court’s process, e.g., by destruction of evidence by the defendant.[16]

The Kenyan Copyright Act provides for the procurement of Anton Piller orders in Section 37. It is constantly employed in copyright claims, as exemplified in the case of Paul Odalo Abuor v Colourprint Ltd & Textbook Centre.[17] The plaintiff therein was the author of a book titled, White Highlands No More – A Modern Political History of Kenya. He discovered that the defendants were printing and distributing copies of his book, without his permission, so he instituted an action. In addition to an ex parte order restraining the defendants, the plaintiff sought for and was granted an Anton Piller order, which allowed the suspected infringing goods, the equipment used to produce them, and other pieces of evidence to be seized, following a search of the defendants’ premises.

Final orders in the form of perpetual injunctions, damages, and account for profits, follow upon complete determination of a suit. In Alternative Media Ltd v Safaricom[18], an action was brought by Alternative Media against Safaricom for the use of the former’s artwork without authorisation. When judgment was given in the plaintiff’s favour, the court not only awarded damages, but also issued an injunction stopping Safaricom from using the work and ordered that the infringing works be withdrawn from the market.

  • Criminal Sanctions

Under national systems in Africa, in addition to civil remedies, copyright legislation usually provides criminal penalties for violations or infringements. The Kenyan Copyright Act creates offences in respect of the infringement of copyright in Section 38, and establishes the Kenya Copyright Board in Section 3, (the “Board”), vesting in it regulatory and enforcement powers.

With enforcement of copyright and related rights as one of its core mandates, the Board’s structure comprises a legal and compliance department staffed with lawyers specialised in copyright and related rights, and copyright inspectors[19] seconded from the National Police Service and trained in investigation of infringement.[20] Through the instrumentality of its personnel, the Board sees to the investigation, arrest and prosecution of copyright offenders in Kenya.

The Board has been very active in discharging its duties, having the needed assistance of other law enforcement agencies and right holders. As earlier indicated, the Board’s collaboration with MultiChoice Kenya recently led to the arrests of violators at Kilua Beach Hotel, Mombasa, seizing 16 decoders and other contrivances used for distributing infringed DSTV signals. Similarly, in 2019, one Mr. Peter Imbati Esiaba was sentenced to a jail term of 5 years for distributing decoders that streamed content which infringed on DStv rights. The efforts of the Board resulted in his arrest, earlier in 2013.

In 2014, the Board conducted several raids and prosecuted over 200 cases of infringement. Only between April and June the following year, it carried out 19 raids regarding copyright infringement relating to illegal broadcasts, literary works and sound recordings; with 12 of the cases proceeding to court for prosecution.[21]

It should be noted that criminal prosecution is not at the instance of the Board alone. Like any other offence, prosecution may be done by the Attorney-General, public prosecutors, the Police, and even private individuals. Penalties range from imprisonment for a maximum period, in any case, of 10 years, to imposition of fines – KSh800,000 at the most; or to both.[22]

  • Border Measures

These measures normally precede resort to civil or criminal actions and are relevant in the realm of international trade. They come into play when goods are being exported out of or imported into the country and involve action by customs authorities. Border measures allow right owners to approach customs authorities to ensure that suspected infringing goods are detained and not released into circulation. This gives right owners reasonable time to institute actions against suspected infringers, while checking the risk of market penetration by the infringing goods.[23]

In Kenya, border measures are within the premise of the Customs and Border Control Department (CBCD).[24] The CBCD administers the East Africa Customs Management Act, 2004 and is responsible for border control including the control of exports and imports and enforcement of prohibitions and restrictions by barring international trade in illegal substances and material. These materials include goods that constitute infringements of Intellectual property rights.[25] This is done through the Custom Recordals Application System (IPR Recordal) provided under the Statute Law (Miscellaneous Amendments) Act No.18 of 2018. A right owner typically invokes the border measures under the customs recordals application system by lodging an IPR recordals application for seizure to the Commissioner or the Anti Counterfeit Authority (ACA), showing valid grounds for the application, a specimen of the goods to which his copyright relates, as well as sufficient information and particulars demonstrating title and the subsistence and extent of the right.[26] The right owner must also accompany his application with a signed indemnity form, indemnifying the customs authority from any claim made for any wrongful seizure, removal or detention of alleged infringing goods.[27]

After suspected goods have been detained, the right holder can then proceed to file a suit and apply to the court for provisional measures, while awaiting the court’s final decision on the claim. The suspected infringer could also be arraigned for prosecution, should the conclusion be reached that a prima facie case exists against him.

JUXTAPOSING THE ENFORCEMENT MECHANISMS IN KENYA WITH THOSE OF OTHER AFRICAN COUNTRIES

In other African Countries, the measures for the enforcement of copyright are not a total departure from what is obtainable in Kenya. This part of the article will examine the measures for the enforcement of copyrights in other African Countries such as Nigeria and South Africa.

NIGERIA:

There is no substantial distinction between the enforcement measures in Kenya and the measures in place in Nigeria. Copyright in Nigeria is governed by the Copyright Act (Cap. C28) LFN 2004. The Act makes provisions with respect to the subsistence, protection, and enforcement of copyright in Nigeria. Like what is obtainable in Kenya, there are civil, criminal and border measures in place for the enforcement of copyrights in Nigeria. An owner, assignee or exclusive licensee of a copyright work may seek reliefs for copyright infringement in Nigeria by way of damages (general, specific or punitive/exemplary), injunction, accounts or such other reliefs that are available with respect to the infringement of other proprietary rights.[28] Furthermore, Section 20 of the Copyright Act makes copyright infringement an offence punishable by a fine in an amount not exceeding ₦1000 (One Thousand Naira) for every copy or a term of imprisonment not exceeding five years, or to both such fine and imprisonment. By Section 24 of the Act, it is permissible for both criminal and civil actions to be taken simultaneously in respect of the same infringement. The Copyright Act also vests in the Nigerian Copyright Commission the power to prescribe any anti-piracy device for use on, or in connection with any work in which the copyright subsists.

Additionally, the Nigerian Customs Services (NCS) has a robust relationship with the various regulatory agencies[29]with a mandate to enforce intellectual property rights. Section 44 of the Copyright Act particularly makes provisions on the restriction on importation of printed copies and for action by NCS.

One notable Nigerian judicial decision on the enforcement of copyright is the case of Oladipo Yemitan v. The Daily Times (Nigeria)Ltd &Anor.[30] In that case, the defendants flagrantly infringed on the claimant’s copyright in an article titled ‘The Day the Lagoon Caught Fire’ published in the Nigerian Magazine by reproducing same verbatim in the ‘Headlines’ No 52 of 1977 without consent. Upon writing to notify the defendants of this infringement, the defendants merely replied that they would investigate the allegation and did nothing further despite subsequent correspondence to them. After the trial, the defendants admitted the infringement. The court was of the view that the defendants took advantage of the claimant because few persons in the Nigeria were aware of their rights under copyright law and the defendants also believed that the profit to be realized from the infringement would outweigh any nominal damages the claimant may be entitled to. Hence the court granted additional damages to the claimant for such a condescending treatment by the defendants.

SOUTH AFRICA:

The measures for the enforcement of copyright in South Africa is almost similar to those of Nigeria and Kenya. There are civil remedies[31] by way of damages, an interdict and delivery up of infringing copies etc. and criminal remedies[32] which make the infringer liable to a fine, maximum of R5000 per article or three years imprisonment, or both such fine and imprisonment. There are also available border measures in South Africa administered by the South African Revenue Service Customs. In South Africa, IPRs enjoy automatic customs enforcement provided that they fall under the scope of Intellectual property as defined by the Counterfeit Goods Act; which include works subject to copyright protection under the provisions of the Copyright Act[33].

Additionally, where the infringement of copyright constitutes an act of piracy or counterfeiting under the provisions of the Counterfeit Goods Act, provisional measures are available to the copyright owner or licensee. Such owner or licensee may also proceed against the infringer under the provisions of the Counterfeit Goods Act.

GREEN LIGHT AND RECOMMENDATIONS

From the above analysis, it is beyond reasonable doubt that contrary to what might be the popular opinion, most African countries have put in place measures to enhance IP rights through adequate enforcement mechanisms. Not only are there civil remedies guaranteed in several laws, but there are also criminal offences, administrative sanctions and border measures to ensure that copyright owners reap the fruits of their labour and prevent impunity for infringement. However, it must be admitted that much still needs to be done to reach the target destination. As it stands, there are barriers to effective enforcement of copyright, like illiteracy, lack of awareness, delay in administration of justice, among others. However, these barriers are just a mirage that won’t stand the test of time, if more efforts are deployed.

In taking Africa to that destination, among others, enforcement of copyright should actively involve training and awareness creation amongst various government agencies and regulators, including the Police, Customs, and the Judiciary, as well as amongst right holders and members of the public. Cooperation between the public and private sectors must improve. Enforcement agents must have adequate human and material resources at their disposal. Our laws must be drafted and regularly updated in keeping with modern realities. African nations must also key into and support the efforts of global organisations like WIPO in addressing issues of copyright enforcement in the digital age. Commendably, national laws in countries such as Kenya already contain provisions against the circumvention of technical measures designed to protect works.[34] This is a step in the right direction. It shows, in the end, that there already are solid foundations; we simply must build upon them.

For more information on how you can enforce your copyright or IP rights in any part of Africa, do not hesitate to reach out to our prestigious law firm. We cover the entire African continent.

jee@jee.africa

tolu.olaloye@jee.africa


[1] Bruce W. Bugbee, The Genesis of American Patent and Copyright Law (Washington: Public Affairs Press, 1967)

[2] Adam Moore & Ken Himma, ‘Intellectual Property’ in Edward N. Zalta (ed.), The Stanford Encyclopaedia of Philosophy, Winter 2018 Edition (Metaphysics Research Lab, Stanford University, 2018), available at <https://plato.stanford.edu/entries/intellectual-property/#HistInteProp> accessed 16 May 2022

[3] Content industry for products such as music, software, and video among others.

[4] WIPO, ‘Copyright’, available at <https://www.wipo.int/copyright/en/> accessed 16 May 2022

[5] International Convention for the Protection of Literary and Artistic Works (Berne Convention), Article 2

[6] Section 1 of the Copyright Act, Cap C28 -1, Vol 4, LFN 2004

[7] Kenyan Copyright Act, Section 22(1)

[8] The right of paternity or the right of attribution

[9] The right of integrity; See, WIPO, ‘Understanding Copyright and Related Rights’ (Switzerland: WIPO, 2016), p.14, available at <https://www.wipo.int/edocs/pubdocs/en/wipo_pub_909_2016.pdf> accessed 16 May 2022

[10] Kenyan Copyright Act, Section 26

[11] Ibid, Section 35

[12] HCCC 833 of 1999

[13] Marius Schneider, Vanessa Ferguson; “Enforcement of Intellectual Property Rights in Africa”, Oxford University Press, 2020.

[15] This is discussed in detail in under subhead- “enforcement of copyrights in Kenya”.

[16] Kenyan Copyright Act, Section 37

[17] (2002) Unreported judgment of the High Court, Nairobi, per Norbury Dugdale, J.

[18] Civil Case 263 of 2004

[19] Inspectors are appointed pursuant to Section 39 of the Kenyan Copyright Act

[20] Kenya Copyright Board, ‘Enforcement of Copyright and Related Rights’, available at https://copyright.go.ke/our-services/enforcement-copyright-and-related-rights accessed 12 May 2022

[21] Most of the other cases were settled out of court; See, ‘Kenya Copyright Boards Recent Figures on Enforcement and Raids in 2015’ available at <https://www.ipkaribu.com/single-post/2015/09/21/kenya-copyright-boards-recent-figures-on-enforcement-and-raids-in-2015> accessed 18 May 2022

[22] Kenyan Copyright Act, Section 38(6)

[23] WIPO, supra note 7 at p.25

[24]Customs and Border Control Department Brochure, available at <https://kra.go.ke/images/publications/Customs%20and%20border%20control%20department%20brochure.pdf> accessed 18 May 2022

[25] Marius Schneider, Vanessa Ferguson; “Enforcement of Intellectual Property Rights in Africa”, Oxford University Press, 2020.

[26] Kenyan Anti-Counterfeit Act, 2008, Section 34(1) & (2)

[27] Kenyan Anti-Counterfeit Regulations, 2010, Regulation 14

[28] Section 16 of the Copyright Act Cap C28 -1, Vol 4, LFN 2004

[29] These include National Agency for Food & Drug Administration and Control (NAFDAC), Standard Organisation of Nigeria (SON), and the Nigerian Copyright Commission (NCC)

[30] (Unreported Suit No: FHC/L/1/1980)

[31] S. 24 of the Copyright Act No. 98, 1978.

[32] S. 27 of the Copyright Act No. 98, 1978.

[33] Puma v. Rampar Trading (59/10) [2010] ZASCA 140 (19 November 2010)

[34] Kenyan Copyright Act, Section 35

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Tel 234-1-462 6841/3, 234-1-280 6989
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