Africa IP highlights 2021 #1: The copyright field

It’s December and time for what is now an annual ritual for this Africa Correspondent – The Africa IP Highlights! The Africa IP Highlights is an initiative of this Kat and is a series of posts put together to highlight some of the key developments in IP in Africa each year. Interested readers can find the Africa IP Highlights 2020, here.

This Africa IP Highlights 2021 is the result of collaboration between myself and several IP practitioners and researchers across Africa: Caroline Wanjiru Muchiri (Centre for IP and IT Law, Strathmore University, Kenya); Ekene Chuks-Okeke (Banwo & Ighodalo, Nigeria); Marius Schneider and Nora Ho Tu Nam (IPvocate Africa, Mauritius); Ruth Mulenga Sinkala (PhD Candidate, University of Cape Town), Vanessa Ferguson, Sibongile Dee and Regardt van der Merwe (Von Seidels, South Africa).

Today, we begin with developments in the copyright field.

In January, the Court of Appeal in Nigeria in Morison Industries Plc V. CPL Industries Limited, dismissed an appeal from the High Court in a copyright infringement, trademark infringement and passing-off suit between two pharmaceutical companies. The High Court had awarded damages in the sum of 10milion Naira against the appellant, Morison Industries, who was the Defendant in that court. CPL and Morison were both manufacturers of paracetamol painkillers. While Morison branded its medicine with the generic “PARACETAMOL”, with reference to its registered trademarks “MSJ” and “MORISON” on the packaging, CPL used the name “CONPHAMOL”. CPL had a registered trademark in the word “Conphamol” and the design of the product packaging. CPL Industries Limited had sued Morison for trademark infringement, passing-off and copyright infringement, claiming that Morison’s product packaging infringed on its IP rights. While the High Court found Morison liable for trademark infringement as well as passing-off, the trial judge did not make a finding of copyright infringement, stating that as the designer of the device was not called to testify, copyright ownership was not sufficiently proven. The Court of Appeal however found that there was enough evidence before the court to prove CPL’s ownership of the copyright in the artwork (as it had commissioned and paid for the artwork). It therefore held that Morison was also liable for copyright infringement of the artwork in the registered trademark.

Still in January, a High Court in Nairobi, Kenya issued a decision in Iko Solutions Limited v Mobile Decisioning Africa Limited on the implication of parties’ actions where there is no written agreement in a transaction involving IP. The plaintiff applied for an injunction against the defendant for copyright infringement and breach of contract. The defendant was part of a group of companies known as MODE trading across Africa in financing provision of airtime to customers of various telecommunications companies. The defendant had engaged the plaintiff to provide consultancy services and to assist it in developing a verification and reconciliation tool known as the Cubes Solution software. Unfortunately, the relationship collapsed and the defendant terminated the draft agreement. They then disconnected the plaintiff from the Virtual Private Network (VPN) access to the servers thereby terminating the plaintiff’s ability to provide the service and disabling its capacity to disconnect the software from being used by the defendant. In court, the issue in dispute was the ownership of the IP in the Cubes Solution software. The Court held that although the parties did not execute a formal agreement, the internal memorandum signed off by the defendant’s management introducing the plaintiff showed an intention to purchase a solution created by the plaintiff. There was also evidence that the defendant was in the process of developing its own software which the Court noted was an admission that the Cubes Solution software belonged to the plaintiff. On this basis, the court held that the plaintiff made out a prima facie case with a probability of success that it owned the software.

In February, the Court of Appeal in Nigeria issued a decision in Banire v NTA-Star TV Network Ltd regarding the question of authorship and ownership of copyright in photographs used for advertising purposes and provided guidance on factors that must be established to succeed in a claim for passing off relating to image rights in Nigeria. NTA-Star used photos of Banire on their billboards. Banire sued for 50million Naira, claiming that the unauthorised use of her photographs amounted to infringement of her image/IP rights. The photographs were taken at a shoot organised by Orisun TV, owned by Virtual Media Network (“VMN”), who subsequently licensed the photographs to NTA-Star. At the High Court, it was held that by consenting to her photographs being taken by VMN, VMN owned the copyright in the photographs, and they had the right to license it to NTA-Star. The Court of Appeal clarified that copyright in photographs belongs to VMN as the person who commissioned the taking of the photograph. Further, the Court held that for Banire to successfully claim image rights, they would need to prove the elements of passing off – that they have significant goodwill, which NTA-Star misrepresented with the use of their image, and they (Banire) suffered or was likely to suffer damages. The court held that Banire failed to established these elements. For more on this decision, see this Katpost.

March saw the Court of Appeal in Nigeria overturning the decision of the High Court in Zain Nigeria v TV Xtra Productions Limited and Anor. As reported here in the Africa IP Highlights 2020, the High Court had found Zain Nigeria liable for infringement of the plaintiff’s copyright in a quiz program it designed titled “University Challenge”, and ordered significant damages of N703,000,000 ($1,843,934 approximately). The High Court had in its reasoning, relied heavily on the fact that the plaintiff had registered its proposal/ concept note for the show “University Challenge”, with the Nigerian Copyright Commission and concluded that the plaintiff’s copyright had been infringed by the defendants because they produced and endorsed a show with a similar premise, titled “Zain Africa Challenge”. The Court of Appeal rightly held that registration of copyright is not a requirement in Nigeria, and the High Court erred by relying solely on the fact of registration of the plaintiff’s “registered” proposal. The Court of Appeal also held that it was not the defendant’s place to prove that his work did not infringe the plaintiff’s work. Rather, the burden was on the plaintiff to prove that his work was infringed, and the plaintiff had failed to do so in the circumstances.

In April, a High Court in Kenya in Donald Muhonda Andolo v Pinnacle Developers Limited & 3 others ruled on the question of copyright ownership of works produced by directors of a company. The Plaintiff and the 2nd Defendant were the shareholders and directors of a Company that was commissioned to produce architectural drawings and plans for a project. The Plaintiff, an architect, produced architectural drawings and plans which were approved and registered by the County Government of Kajiado under application Number P/761/2015. Before the project could be completed, the plaintiff and the 2nd Defendant fell out and the 1st and 2nd Defendants had to partner with the 3rd and 4th Defendant to complete the project. The 3rd Defendant reproduced the architectural plans that had been drawn by the Plaintiff because they had expired and applied for renewal of the architectural plans. The Plaintiff, aggrieved with the use of his architectural drawings without his consent instituted proceedings against the all defendants for infringing his copyright in the architectural drawings. In deciding that the copyright was the company’s commissioned works under section 31 of the Copyright Act, the court noted that there was undisputed evidence of the plaintiff being a director of the company and that he was actively involved in its management. The court noted that there was no separate agreement between the plaintiff as an architect and the company regarding remuneration. Since he used the company resources to produce the drawings, the architectural drawings became commissioned works by the Company under a contract of service. The Court noted that since the architectural drawings were used for the project they were intended and were produced and renewed only for that purpose, there was no copyright infringement.

May in Kenya was about the infringing reproduction of works by religious institutions in Rebecca Wanjiku v Christ is the Answer Ministries (Citam) & another. The Plaintiff, the author and owner of copyright in the song titled “Rungu Rwa higa” registered under certificate number CR.000475, submitted that the defendants without her consent produced, distributed and performed the song under the title "Athuri Mwihithe". She further claimed that the said song as produced, distributed and performed by the defendants was similar to her original work in all aspects including words, melody and rhythm. She sought an injunction seeking to restrain the defendants from continuing to commit any infringement of its copyright in the song. The High Court of Kenya considered evidence of a translated transcript of the audio of the plaintiff’s song titled "Rungu Rwa lhiga" and a translated transcript of the video of the song titled "Athuri Mwihithe" as performed by the defendants. On comparison, the Court noted that there was an apparent similarity in the wording used in the two songs. In this regard, the Court concluded that the defendants’ song appears to be a case of copying and reproduction of the plaintiff’s work. Although registration of copyright in Kenya is not mandatory, the plaintiff’s certificate was used to establish prima facie case of copyright ownership. The court held that the plaintiff had proven ownership of copyright and since the defendants blatantly violated the law for their own benefit, damages could adequately compensate the plaintiff for infringement of the copyright and granted the prohibitory injunction sought.

In July, a Federal High Court in Nigeria in Raji Mutiu Okiki (Okiki Bright) v Emerging Markets Telecommunications Services Limited & 3 Others found the defendants liable for copyright infringement of the plaintiff’s song “Gba Gbe Boshe Sele”. The 1st – 3rd defendants are telecommunications network operators who had made the song available to customers as a caller ringback tune. The 4th Defendant was a value-added service provider who licensed the song to the other defendants, claiming that he was authorised to do so by Oritsefemi, a featured artist on the song. The Court acknowledged that copyright can be owned by more than one person, and any co-owner of copyright is entitled to exercise ownership rights. However, the court went on to hold that Oritsefemi was not a co-owner of the song because he was a “featured artist”, and if co-ownership was intended, it would have been indicated at least on the CD sleeve as “Okiki Bright and Oritsefemi” and not “Okiki Bright featuring Oritsefemi”.

In October, Nigeria’s House of Senate organised a joint public hearing on 2 copyright amendment Bills currently tabled before it. Katfriend, Desmond Oriakhogba attended the hearing and the Katpost on how it went down is here.

This December, news came of a decision of a Federal High Court in Lagos, Nigeria holding that the Copyright Society of Nigeria (COSON) ceased to exist as an approved Collective Management Organisation (CMO) with effect from 19th May 2019 when its operating licence lapsed.