ARIPO Member States adopt the Kampala Protocol on Voluntary Registration of Copyright and Related Rights

Late last month (August), the Kampala Protocol on voluntary registration of copyright and related rights within the framework of the African Regional Intellectual Property Organization (ARIPO) was adopted at a Diplomatic Conference held in Kampala, Uganda. The Protocol establishes a regional voluntary registration of copyright and related rights. It creates and maintains a regional database for copyright and related rights for ARIPO and the ARIPO Member States.

The Protocol has 16 articles, which deals with various aspects of voluntary registration of copyright at both ARIPO and national levels. This post presents some of the highlights of the Protocol.

National competent authority: The Protocol makes provisions for ARIPO Member State to designate a "national competent authority" that would be responsible for undertaking the registration of copyright at the national level or designate ARIPO to undertake that responsibility on its behalf. See Article 6. In this way, Member States that do not have provision for copyright registration in their copyright statute may rectify such situation.

Persons who may apply for registration of copyright: Under Article 7, authors, owners or other persons interested in the copyright or related rights in, any work or production may apply for registration. This suggests that assignees, licensees and community representatives may apply to register their interests as such.

Refusal of applications for registration: The acceptance of an application for registration is not automatic. ARIPO and the relevant national competent authority have the discretion to accept or refuse applications for registration. See Article 8. In the case of a refusal, this would be based on non-compliance with the requirements provided for in the Protocol or regulations made pursuant thereto. [Does a refusal equate to non-existence, non-conferral and/or non-subsistence of copyright in the work and/or the applicant? Would a refusal be used as a defence to copyright infringement? Does this discretionary power make ARIPO and national authorities exercise quasi-judicial powers?]

Under Article 8(3), registration serves as prima facie evidence of the particulars entered in the database. As far as copyright is concerned, this copyright registration under ARIPO is quite similar to WIPO Proof particularly to the extent that the latter “produces tamper-proof evidence that can be used to prove that a digital file existed at a specific point in time…” WIPO Proof extends beyond copyright to other IPRs in so far as they are in a file format.

Registrations are cancellable: Under Article 11, the registration of a copyright may be cancelled where the initial registration was erroneously made or fraudulently procured or by an order of court or pursuant to the law of the relevant contracting state. The Protocol does not stipulate the effect of such cancellation except perhaps in Article 12, which provides that a registered copyright may be removed from the ARIPO database where a cancellation has been made. How may fraud be established? Under what circumstances may a contracting state make laws to cancel a registration?

Still on the subject of cancellation, the category of persons who may initiate cancellation “proceedings” is wide. Article 11(2) provides that cancellation may be initiated by a national competent authority or ARIPO; a copyright or related rights holder or a “person aggrieved by the registration”.

Change in ownership: Article 13(1) allows “a person” to apply for a change in ownership of copyright to a national competent authority or ARIPO. This suggests that any person from the author to assignor to exclusive licensee to collective management organisations (CMOs) may apply for a change in ownership. Under Article 13(2), the owner of a registered copyright is required to apply for registration of any variations to particulars of registration. All applications for changes or variations may be accepted or rejected. Rejections may be appealed to a Board of Appeal. The Protocol does not indicate what may constitute grounds for acceptance or rejection. Also, what are the implications of a rejection?

Dispute resolution: Disputes between contracting states with respect to the Protocol are to be resolved by direct negotiations between the parties failing which, the dispute would be submitted to the dispute settlement forum that would be established. For dispute between applicants and third parties, a dispute resolution mechanism will be provided by ARIPO in consultation with contracting states. Article 14.

 

In essence, regulations are awaited to address various issues: requirements and procedures for application for registration (Article 7(2); circumstances warranting refusal of applications for registration (Article 8(1)(b); dispute settlement forum for contracting parties disputes (Article 14(1); dispute resolution mechanisms for applicants and third party disputes (Article 14(3); procedure for appeals against rejection of registration applications; cancellations; removal of registrations from the ARIPO database (Article 15). The Regulations are to be made by the Administrative Council of ARIPO.

The Protocol will come into force 3 months after 5 States have deposited their instruments of ratification or accession. For this, it is safe to say that proponents of the Protocol may count on Kenya’s ratification as its Copyright Regulations 2020 established a Copyright Register and a National Rights Registry Portal.