An in-depth Analysis of the Legal Frameworks for Domestic Policy on Copy Rights Laws: Are Authors of Literacy, Musical or Artistic Works Rights Protected in Kenya?

An in-depth Analysis of the Legal Frameworks for Domestic Policy on Copy Rights Laws: Are Authors of Literacy, Musical or Artistic Works Rights Protected in Kenya? By Lumumba Fleming Omondi1 1.0 Introduction Innovation and creativity are sure drivers for financial growth. Research points that growth is closely interrelated with the capacity to generate innovation and commercialize innovative products. Intellectual property rights play an important part in the realization, development and progress of innovative capacity. This is particularly vital to the emerging economies, like Kenya’s. Intellectual properties are becoming strategic elements for value creation by undertakings. They are increasingly becoming significant in attracting investment and encouraging the growth of innovative sectors in the economy hence the need for legal frameworks to govern it. In Kenya, the applicable intellectual property laws are found in statutes, the English common law and international treaties. Since early 1960s, many African states have enacted or reformed Intellectual property legislations with increasing swiftness, Kenya inclusive. This chapter receives a comprehensive impetus on legal frameworks on intellectual property in Kenya. These legal frameworks have been designed to 1 The writer holds a Bachelor of Laws, LLB from Kenyatta University and a Postgraduate Diploma protect property rights, innovations and reward innovative activity 2 . The laws comprise a bundle of rights focusing on the physical manifestations of intellectual activity in any field of human endeavor. The highlights of the legal frameworks focuses on the expression of an idea for an invention, the details of which have been worked out and which takes the form of a product or process that can be applied industrially. 2.0 Legal frameworks for protection of intellectual property in Kenya 1. The Constitution of Kenya, 2010 This is the basic law in Kenya. Any other law, which is inconsistent with the constitution, has no legal effect. The Constitution does not govern intellectual property matters directly, but does provide a background against which intellectual property rights and laws operate. This can be seen through; a) Recognition of the role of science and indigenous technologies in the development of the nation3; b) Promotion of the intellectual property rights of the people of Kenya The constitution empowers the parliament to enact legislations to ensure that communities and individuals receive compensation or royalties for the use of their property rights including intellectual property.4 US Council for International Business a New MTN: Priorities for Intellectual Property (1985) at p. 3. 3 Article 11(2) (b) of the Constitution of Kenya, 2010. 4 Article 11 (3) of the Constitution of Kenya,2010 2 Kenya being a member of the International organizations dealing with Intellectual property rights, it is bound by international law. Kenya therefore must carry out its international obligations irrespective of the contents of its constitutional legislation. A state’s own constitution may indicate what measures have to be taken with regard to the implementation of its international obligations. Monism and Dualism are the terms used to describe the legal framework within which governments carry out their international obligations. Kenya is essentially a monist country, which means that treaties become operative upon ratification and automatically form part of Kenyan Law5. The constitution has also largely provided a broader framework within which copyright is to be constructed. These include the protection of right to property6, freedom of expression7 and access to information8. Freedom of expression includes freedom of artistic creativity, academic freedom and freedom of scientific research. These rights as conferred by the Constitution are a clear indication that the constitution is the basic legal framework upon which intellectual property rights are anchored. 2. Judicature Act This is statute law, the second source of law. The most applicable provision is section 3 of the Judicature Act. . Since 1966, Kenya has had an Act on copyright. This is the Article 2(5) and 2(6) of the Constitution of Kenya, 2010. Article 40 (1) which confers the right to acquire and own property of any description either individually or in association. 7 Article 33(1) of the Constitution of Kenya. 8 Article 35(1) of the Constitution 5 6 only statute, which specifically applies to copyright. 9 Many of the doctrines developed under UK copyright statutes are applicable, particularly those under the 1956 UK Copyright Act. Furthermore, the procedural and the rules of evidence concerning copyright management and litigation are drawn directly or indirectly from UK legislation or practice. This is as a result of the Schedule referred to under section 3(1) (b) of the Judicature Act. Other laws of Kenyan which advance the application of English law and procedure include the Civil Procedure Act,10 the Evidence Act,11 the Appellate Jurisdiction Act,12 rules of court, as well as judicial precedents. The application of the common law as identified as a source of law under section 3(1) (c) of the Judicature Act, to copyright, is earnestly challenged.13 Kenya and many of the African States freely apply the common law of copyright, notwithstanding the provisions within certain copyright statutes that tend to repeal the common law of copyright. 14 Such kinds of statutes strive to limit what laws apply to copyright. Section 51 of the Kenyan Copyright Act, 2001 provide that: “No copyright, or right in the nature of copyright, shall subsist otherwise than by virtue of this Act or of some enactment in that behalf.” Initially, it was enacted in Kenya as section 17 of the 9 Some statutes have an incidental mandate on copyright. Examples include Kenya’s Communications Act,1998-2008; the Films and Stage Plays Act, Cap 222; the Kenya Broadcasting Corporation Act, Cap 221;the Books and Newspapers Act, Cap 111; the Public Archives and Documentation Service Act, Cap 19;Media Act, 2007; Anti-counterfeit Act, 2008; and Kenya National Library Services Board, Cap 225. 10 Chapter 21, Laws of Kenya. 11 Chapter 80, Laws of Kenya. 12 Chapter 9, Laws of Kenya. 13 No case has actually addressed this “controversy.” Only one of my former students, faced with a case in which Kenya’s Copyright Act was not clear, called to refresh himself on the arguments I had developed in class. In the discussion on the place of the common law I analyze evidence of practice which indicates that the matter is controversial, even if it has not been directly litigated. Indeed, limited copyright expertise in the Bar and the Bench has led to many assumptions. 14 Sections 20 and 51 of the 19 66 and 2001 Kenyan Acts, and section 18 of the Tanzanian Copyright Act, Respectively. Copyright Act, 1966. The clause had been copied from the 1911 UK Copyright Act.15The marginal note to this section reads, “Abrogation of common law rights.” Section 3 of the Judicature Act does not explicitly make reference to international law, such as treaties and conventions, as sources of law and, hence, copyright law. Kenya follows the transformation or dualist system where treaties and convention must be ratified to form part of Kenyan law.16 It thus follows treaties like Berne, UCC and the WTO Agreement are not automatically part of Kenyan laws but would, through domestication or ratification, become part of the written laws of the Kenya by virtue of section 3(1) (2) of the Judicature Act. This introduction is thus supported by virtue of Article 2(5) and Article 2(6) of the Kenyan constitution. 3. The Copyright Act, Act No.12 of 2001 This Act was as a result discussions and concerted lobbying efforts through the 1990s when the Copyright Bill was drafted and circulated for discussion in 1999. Consequently, the Copyright Bill, 2000 was published in 2000. Since it had not been presented in Parliament before the Parliament went on recess, the Bill died prompting a new Bill to be published in February 27, 2001. The major changes brought by Act No.12 of 2001 Act J. Chege, Copyright Law and Publishing in Kenya, Nairobi: Kenya Literature Bureau, 1978, at 98. The 1911 Act sought to abrogate common law copyright in the UK. 16 D.J. Harris, Cases and Materials on International Law, (London: Sweet & Maxwell, 1998 and 2004). See also the Vienna Convention on the Law of Treaties, 1969. It came into force, under Art 84, in 1980. Cf. Arts. 28, 29 and 29 bis of the Berne Convention, noting that being procedural and administrative provisions of Berne, they will not bind members of the World Trade Organization (WTO), as such, under Art. 9 of the WTO TRIPs Agreement. 15 The redefines “a copy” to mean reproduction of a work in any manner or form and includes any sound or visual recording of a work and any permanent or transient storage of a work in any medium, by computer technology or any other electronic means.17 This definition covers the new reproduction and transmission technologies relating to the production and distribution of literary and other copyrightable works. The Act emphasizes nonmaterial and non-tangible forms of reproduction as well. The Act also underscores the difference between communication to the public and broadcasting.18 The Act defines “broadcast” to mean the transmission by wire or wireless means, of sounds or images or both or the representation thereof, in such manner as to cause such images or sound to be received by the public and include transmission by satellite.19 Communication to the public is defined in section 2 as a live performance; or transmission to the public, other than a broadcast, of the images or sound or both, of a work, performances or sound recording. Therefore the latter covers instances under which the subject matter is transmitted by any other means other than by way of broadcasting. The doctrinal difference between broadcasting and communication to the public is, however, being worn by Internet and related technologies such as web casting.20 S. 2 of the Copyright Act 2001 (emphasis mine). There was clearly a need to capture technological change. 18 Ibid. 19 The focus is on transmission, not whether it is received or not; and it focuses on point or multi-point technologies. See P. Goldstein (2001) International Copyright: Principles, Law and Practice New York: Oxford University Press, at 315-6. 20 The Kenya Copyright Board embarked on a comprehensive review of the Act in 2008 with a view to making appropriate proposals to the Attorney General for amendments. “Communication to the public” is one of the controversial issues. The author was a member of the Board from May 16, 2003 until June 26, 2009 as an expert, when the Attorney General appointed him the Chair of the inaugural Competent 17 The duration for copyright protection for photography is now 50 years just like other related subject matter of copyright. The Act also specifically provides for protection of rights or activities that seem to have been ignored or excluded before. Such protections of rights are in relation to translation, adaptation, arrangement or other transformation of a work and public performance of the work. The Act has also elucidated the situations of fair dealings with respect to each subject matter. For example, copyright does not control reproduction, translation, distribution, or communication to the public “by way of fair dealing for the purposes of scientific research, private use, criticism or review, or the reporting of current events subject to acknowledgement of the source.”21 Fair dealing is further clarified under sections 26(1) (a), (d), (e), (f), (g), (h), (j), and (l). Some of these questions help construct the scope of literary copyright and were at the core of the North-South debates leading to the Stockholm Protocol to Berne. The copyright Act No.12 of 2001 contains the content of and specific limitations to a new form of literary copyright, namely, software copyright, mainly because of WIPO’s and the Business Software Alliance’s (BSA’s) proposals. The law allows adaptation and creation of backup copies of computer programs under some conditions. These conditions consist of cases under which copying of a computer program is essential in making copies of a program to the extent necessary for Authority (Copyright Tribunal). See Kenya Gazette No 6385 of 2009, June 26th at 1587. (Signed by the Attorney General on 2009, June 23rd.) 21 S. 26(1) of the 2001 Copyright Act. Berne refers to the concept as “fair practice;” the US as “fair use;” and the UK and Kenya as “fair dealing.” The three are not coterminous. I discuss fair dealing systematically and in detail in Chapter 8 of my doctoral dissertation: Ben Sihanya, Constructing Copyright and Creativity in Kenya, supra note 1. correction of errors; or making a back-up copy; or for the purposes of testing a program to establish the suitability for one’s use; or for such purposes that are not forbidden under any license or agreement under which one is allowed to use the program.22 Moreover, the law proscribes and controls anti-circumvention dealings so that digital rights management systems (DRMs) or technical means employed to protect works are protected under copyright law.23 Circumvention of such systems is criminalized under section 36. This provision has been enacted pursuant to Art 11 of the WCT 1996.24 The Kenya Government set certain mechanisms in order to aid in the implementation the 2001 Act. The Attorney General appointed members the Copyright Tribunal on 26th June 2009. The tribunal’s mandate was to compliment the implementation, management and administration copyright law in Kenya. The mandate of the tribunal and that of the Copyright board were seen to be overlapping by the various critics as established under the 2001 Act. Whereas others critics regard strict copyright enforcement as having a positive effect, or a potential impact of reducing employment 22See s. 26(4) of the 2001 Copyright Act. These exceptions would obviously not apply to other literary works, such as novels, plays, lectures, or sermons. 23 See ss. 2 and 35(3) (c) of the Copyright Act 2001. 24 See J. Litman, Digital Copyright, (Amherst: Prometheus Books, 2001), pp. 122-150; See also M.J. Radin, J.A. Rothchild & G.M. Silverman, Internet Commerce: The Emerging Legal Framework, (New York: Foundation Press, 2002), pp. 799-876; P. Samuelson, ‘Technological protection for copyrighted works,’ 45 Emory Law Journal (1997); P. Samuelson, ‘Intellectual property and the digital economy: why the anticircumvention regulations need to be revised,’ 14 Berkeley Technology Law Journal (1999), p. 519; M. Lemley, et al., Software and Internet Law (New York: Aspen Law & Business, 2000) , pp. 891-902. This has been implemented under the US Digital Millennium Copyright Act, 1998 (the DMCA), and Art. 6 of the EU Copyright Directive, 2001. The Directive is reproduced in H. Norman, Intellectual Property Law Statutes 2004/2005 (London: Sweet and Maxwell, 2004) pp. 555570; P. Goldstein (2001) International Legal Materials on Intellectual Property (New York, NY: Foundation Press). opportunities or hindering revenue streams, particularly among the infringers and pirates, other dissenting views welcomes this as a step forward. 4. Anti-Counterfeit Act, 2008 In the recognition of the intended benefits of a stringent Intellectual Property protection, Kenya has made progressive approaches toward improving its Intellectual Property protection regime. In 2008, the parliament passed the Anti-Counterfeit Act, which created an Anti-Counterfeiting Agency. Kenya has also undertaken positive steps at regional and international levels by its enacting and amending several Intellectual Property regimes. However, challenges in enforcement still exist, as there are contemporary means of owning and dissemination information that keeps cropping up. It must be noted that Kenya must further strengthen its Intellectual Property Rights systems through inter-agency and international collaboration to improve the protection of these special rights. Furthermore, there is need for cooperation with trading partners ready to assist Kenya with the implementation of the necessary policy and legal reforms to tighten its weak ends in ensuring maximum protection against the breach of intellectual property rights. The Anti-Counterfeit Act, 2008, offers criminal penalties to deter the breaches of the intellectual property rights. Section 35 of the Act, provides that in the instance of a first conviction, the offender will be imprisoned for a term not exceeding five (5) years or a fine of not less than three (3) times the prevailing retail price of the genuine product or both. Meanwhile in the situation of a subsequent offender, such offenders are liable to imprisonment for a term not exceeding fifteen (15) years or a fine not less than five (5) times the prevailing retail price of the genuine goods or both. These punishments are very prohibitive. Secondly, the Act stipulates that, a person who obstructs an inspector in the course of discharging his duties, or fails to comply with the requirements of an inspector or fails to give assistance or any relevant information to an inspector or gives false information to an inspector in the course of his duties is liable to imprisonment for a term not exceeding three (3) years or a fine of Kenya Shillings Two Million. However, the Act does not, make provision for a mandatory custodial sentence25 irrespective of the flagrancy of the offence. The Act does not also provide for minimum penalties hence leaving a wider discretion in the hands of the court. 3.0 The criticism of the legal protection of authors in Kenya 1. Addressing Copyright Deficiencies in Copyright Act, 2001 Kenya experiences a widespread piracy estimated by the Kenya Copyright Board (KCB) to be 90% in virtually all kinds of copyright works.26 The Copyright Act was passed in 2001, and came into force in 2003. It provides specific administrative, enforcement structures and mechanisms for copyright and related rights. The Act also makes provision for both criminal sanctions and civil remedies for copyright J. Kulekana, “Africa: Growth to Reach 4.5 Percent”, Tanzania Daily News 29 May 2012. Available at: http://allafrica.com/stories/201205290111.html (Accessed on 12th December 2014) 26 Iseme Kamau & Maeme Advocates and Mohammed Muigai Advocates Consortium, Formulation of an EAC Policy on Anti-Counterfeiting, Anti-Piracy and other Intellectual Property Rights on%20the%20Formulation%20of%20an%20EAC%20Policy%20on%20 Anti-Counterfeiting.pdf, p.5. 25 infringement. The Act provides that any person found guilty of any offence specified in the Act will be liable upon conviction to a fine not exceeding Kenya Shillings Four Hundred Thousand or imprisonment for a term not exceeding six (6) years for a first offender and in any other case to a fine not exceeding Kenya Shillings Eight Hundred Thousand or imprisonment for not exceeding ten (10) years or both. The fines levied are to be shared equally by the Kenya Copyright Board and the Kenya Revenue Authority. It can be adduced that this provision is meant to provide an incentives to both institutions to prosecute copyright infringers. However, the reality, shows that this incentive arrangement has not worked as the levels of fines levied on offenders and the number of prosecutions are far too low despite blatant copyright infringements. The average fine imposed is Kenya Shillings Five Hundred. The Kenya Copyright Board, established under the Copyright Act, was a remarkable step towards countering piracy but studies show that it is completely overwhelmed by the degree of the problems and that there is no form of an achievement that it has experienced. For example, whereas the Board is mandated by the Act to prosecute copyright infringers. To-date the Board has only prosecuted a handful cases over the 10 years since its establishment.27 The major challenge facing owners of copyright rights looking to enforce and protect their rights in Kenya is the lack of deterrent minimum fines and civil remedies. Customarily, damages are based on the extent seized by the Kenya Copyright Board or the plaintiff during a swoop, which ordinarily do not have any nexus with the quantity already sold by the infringer. 27 Ibid The Duplicity and the lack of clarity in description of roles of both the AntiCounterfeit Agency and the Kenya Copyright Board must not go unnoticed. Both institutions have powers to raid, cease and prosecute for copyright transgression. In practice, solely the Kenya Copyright Board handles the issues exclusively relating to copyright counterfeit issues. On the other hand, cases of infringement of both copyright and trademarks are handled by the Anti-Counterfeit Agency in practice. From the legal perspective, these distinctions as to roles are not clearly distinct. Critics are of the view that in cases of pure copyright infringement, prosecuting the matter before the Anti- Counterfeit Agency is faster and penalties more deterrent compared to penalties under the Copyright Act. Such discrepancies require a proposed amendment to the Copyright Act No.12 of 2001 to provide for maximum penalties, which is really deterrent for copyright infringers and potential copyright infringers. Such amendments should introduce deterrent minimum fines. Moreover, the Act need to be amended to define the mandate and respective roles of the Anti-Counterfeit Agency and the Kenya Copyright Board to raid, cease and prosecutorial powers for copyright infringements. 2. Improvement and expedition of the civil enforcement procedures, and procedures with respect to the Trade Marks Act, 2001. The most conspicuous deficiencies in the civil enforcement arena is the duration of judicial procedures, which are considered too lengthy. Additionally, Section 34 (6), (b), (ii) of the Anti-Counterfeit Act, 2008, obliges the brand owners to sign an indemnity to indemnify the Anti-Counterfeit Agency’s officers from just about everything, while placing a heavy burden on the brand owners for actions of AntiCounterfeit Agency officers which are totally beyond their control. This indemnity provision has prohibited many brand owners from seeking enforcement in Kenya, due to its scope. Moreover, the civil implementation provisions of the Anti-Counterfeit Act, 2008, should be strengthened more. There is also the need for judicial reform to establish special courts to determine Intellectual Property Rights disputes including copyright infringement. As concerns the Trade Marks Act, 2001, there are inconsistencies observed in trademark prosecution, which often results in delays and sometimes in additional expense to overcome refusals, which are inconsistent with the law. In trademark enforcement, the law provides that infringement actions must be brought in the High Court as the court of first instance. This is a challenge considering the backlog of cases and the general lack of capacity to handle and appreciate IP matters in our judiciary. In addition, the official fees payable at the trademarks and patent office are also considerably high, and among the highest on the continent, especially for the foreign applicants, which has been prohibitive for some clients when thinking of seeking Intellectual Property protection in Kenya. Policy Approaches From the forgoing, there is need for policy approaches, measures, actions and initiatives to support a more specific implementation and enforcement of Intellectual Protection legislation as proposed in the above discussions. To begin with, Kenya needs a national Intellectual Property action plan covering the full range of legal and policy reforms, technical assistance and capacity building measures, channels for international cooperation and tools for strengthening enforcement practices. The effective implementation of the legislative and policy recommendations can also assist significantly in assigning of responsibilities to the Kenyan Anti-Counterfeit Agency with the task to implement the recommendations. The The administration and enforcement of Intellectual Property Rights in Kenya is a shared responsibility of the office of the Registrar General in the Attorney General’s Chambers – under which the Kenya Copyright Board coming under the Kenya Industrial Property Institute (KIPI), Customs Department of the Kenya Revenue Authority and the Kenya Bureau of Standards (KEBS). As evidenced, Kenya has no shortage of institutions. What is conspicuously missing is the coordination and information sharing among the various institutions. Combating infringement of intellectual property rights is therefore an inter-agency duty at both policy and operational levels. Kenya therefore requires comprehensive Intellectual Property regimes to achieve combat infringement on IP rights. Copyright Act, No.12 of 2001 is therefore not adequate in protection against the copyright infringement. BIBLIOGRAPHY Books 1. Moni Wekesa, B. S. (2008). Intellectual Property Rights in Kenya. Nairobi: Konrad Adenauer Stiftung. A. TREATIES 1. Harare Protocol on Patents and Industrial Design, 1982 2. WTO, Trade Related Aspects of Intellectual Property Rights (TRIPS), 1994 3. World Copyright Treaty 4. WIPO Performance and Phonograms Treaty 5. WIPO Internet Treaties B. STATUTES 1. Constitution of Kenya, 2010 2. Judicature Act 3. Copyright Act No.12 of 2001 (Laws of Kenya) 4. Anti-Counterfeit Act, 2008 (Laws of Kenya)