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INTELLECTUAL PROPERTY

10TH September 2015


Are IP rights granted rights or inherent rights?
In intellectual property there are two concepts: the object and the property
right
Property right= ownership (right to use, misuse, exclude)
Your relationship with other people in relation to other people- I can exclude
others from using my property
Civil law-moral rights of an author (civil countries emerged from people
seeking to protect the intellect)( copyrights)
Common law-Economic benefits to be obtained from protecting IP rights (in
common law it developed from merchants)(trademark law and patents)
IP rights are territorial, so the rights you enjoy in one country are not
necessary protected in another country
Periods of IP development
1st period- territorial nature, where IP rights were determined by particular
states(territorial system)
What was the end result of this period?
Positive externality-benefit conferred into a third party as a result of an
economic transaction
Negative externality- detriment suffered by a third party as a result of an
economic transaction by others
Free rider problem-where a party benefits from a resource without paying
their fair share
The territorial system led to the free rider problem/positive externality by
third party states that do not recognize such rights
This leads to a slowdown in the rate of creativity since other people benefit
from your creation
So how do we target the free rider problem?

2nd period- international phase


How do we resolve the positive externality problem?
Two ways to resolve the problem: decide to embrace the reciprocity channel,
or all states agree to observe certain minimum standard
Main countries agreed to set up agreements, conventions that will enable
their works to be protected, these multilateral agreements were meant to set
international standards for countries to follow
But this was on a reciprocity basis such that we will only recognize the works
of your country if you consent to the agreement
Before this, states had entered into bilateral agreements with each other
which was quite problematic
Benefits of a multilateral agreement as opposed to bilateral agreements
Benefits of entering into international treaties
Ensure protection of IP rights of nationals in other countries
Prevent the free rider problem- third party countries will now not benefit
without giving legal recognition
But does this really deal with the free rider problem, what about countries
that are not party to the international agreement?
Secondly, does IP really promote innovation and creativity; there are people
who are still innovative even where there is not IP recognition.
This is a loophole for the argument that people will only
create/innovate/invent if the state recognizes my right (there are people
who will still create even where there are no rights granted and there people
who will invent and not register their invention)
3rd period- global period
Started when WTO and TRIPS was formed
TRIPS led to, Main treaties developed in the international phase were now
incorporated into the WTO and for a state to become a member of WTO they
had to be a party to the international agreements

Expansion in the Scope and Nature of IP Rights- trend towards increasing


scope of protection
But what is the justification for the increase in scope? Especially bearing in
mind that for example copyright was intended to protect the expression of
your intellect, patents were initially meant to protect products and process.
But then now the definition of products has been expanded to include
microorganisms. Some countries protect business methods whereas others
do not.
Originally we had copyrights, trademarks and patents
Copyrights- originally literary, artistic, musical
Now sound recordings, broadcast, software
Originally copyrights were protected for life plus 50 years, but now there is a
trend to protect for life plus 70 years before it moves to the public domain.
But why the shift in trend ?why does the time period differ from country to
country?
Protection of software and mobile apps; How are they to be protected? Which
is the best way to protect them?
What happens to distribution of literal, artistic, musical works on social
media, email, sms
Forwarding of sms and clips on whatsapp and other social media platforms
Especially bearing in mind that the law may not keep up with technological
developments
Freedom of expression vis--vis property rights?
17th September 2015
COPYRIGHT
History of Copyrights
Mainly started with religious literature by priests monks
Invention of the printing press in 15th century

Prior to the invention of the printing press there was really no need for
copyright protection since the only way to copy would have been through rewriting the whole original text which was tedious
However, with the coming of the printing press then there was risk of mass
production of literal works
So at first it was more about protecting the printer/ publisher and not the
writer(authors had no rights per se)
Royal Charter etc- perpetual rights
Statute of Anne in England-1710 (perpetual rights of publishers were now
limited)
Author still had ill-defined rights, and upon publication of the works, the
publisher gained publication rights in the works
America, distinction between authors common-law rights to unpublished
works and statutory right secured upon publication
Theories of Copyrights
1. Common law Justification
Economic importance
Incentive for creativity
2. Civil law jurisdictions-moral justification
Safeguard for authorial personality (someones personal property that
needed to be protected)
Copyright was part of an individuals core human rights
UDHR articles 17 (right to property) and 27(authors rights)
Counter-arguments for the argument of it being a core human right?
Limitations that would be used to limit IP in the UDHR
Balance between right to access information
Article 19-freedom of opinion and expression
Article 26-right to education

Article 27(1)-right to participate in cultural life


Article 29-limitations necessary to secure recognition
So where do you strike the balance between protecting copyright and
allowing public use of copyrighted material?
Eg in balancing the right to copyright in published books and the right to
education,
Arguments that copyright is departing from its original intention
Also that it seems to lean more to one theory
Does copyright really promote creativity or does it act as a hindrance to
creativity?
Copyright and Competition Law
Copyright and competition law (what relationship should there be between
competition law and copyrights)
Having exclusive rights to broadcast premier league gives DSTV an unfair
advantage over other pay tv provides.
But I think that the exclusive rights encourage competition because it means
Zuku and other pay tv companies have to look for other ways of packaging
their product in a different way eg have internet as part of their pay tv
package thus encourage competition of the same idea packaged in different
ways
Shouldnt the producer of the premier league for example be allowed to
choose the channel most suited to make money?
Is broadcast a product of the intellect and does it amount to a creation of
creativity to warrant protection by copyright?
Creation of new works normally increases competition and broadens choice
This however does not mean that no tension exists between exclusive rights
and competition rules
Eg for example collective management societies such as MSK often lead to
de jure or de facto monopoly
Basics of Copyright

Has never developed a system of examination


Works need not be registered for them to get protection
Boundaries of rights not established and people can misuse it
Literary and other original works are entitled to protection without
examination and largely without registration
Protects original expression of an idea
Originality
Copyrighted work need not be novel (new)
The ideas and themes may have appeared in earlier works, but what matters
is that the author can show that the particular expression originated with the
author
Eg romantic novels, soaps all have the same theme and idea but they are
still copyrighted because the expression is originated from the author
You can copy an idea, but if you copy the actual work itself, then that will not
be protected because no work/effort has been put in to give it the original
expression
Interlego v Tyco Industries-privy council ruling:
Skill labour or judgment merely in the process of copying cannot confer
originality
Claimed copyright protection of the bricks as artistic works
If your work was protected as a design, it could not be protected under
copyright (the law as it was there)
When the design right expired, they now sought to rely on copyright
protection (to prove this, they had to go to court and prove that the
registers decision to register them as a design was wrong)
So did the drawings amount to artistic drawings deserve copyright
protection?
Engineering drawings are no doubt artistic works
Meaning of Work

Feist Publications v Rural Telephone Service:


Yellow pages, were reserved for businesses and they paid to appear and they
decided how they could appear(there is more thought and compilation that
goes into the listings unlike the white pages and as such yellow pages could
be copyrightable whereas white pages were not)
Application of sheer effort alone is not sufficient to make a work
copyrightable
Facts generally are not copyrightable (putting the facts together does not
amount to copyrightable work)
However, compilations of facts was copyrightable
Idea/Expression Dichotomy
Things that can only expressed in one way as are not copyrightable due to
their function or external phots eg mathematics formulas, postcards(eg if
you take skyline photos and make post cards, other people are not stopped
from taking the photo themselves and making their own postcard. The
problem will only be making postcards using the same image taken by
another. So the idea in this case is the skyline, the expression is how the
photo is taken. As such, you cannot stop other people from taking photos of
the skyline)
Slight alterations to a work do not amount copyrightable works. Neither can
you escape a finding of infringement by saying that you have made
alterations
Subject Matter of IP
Works eligible for copyright s. 22 of the Copyright Act
Literary works-lyrics of songs
Artistic works

closely related

Musical works- actual tune not the lyrics


Audio-visual works-films, tv programs, works made and can be played over
medium eg flash etc
Sound recordings-includes sounds only, no images, person who has rights
over sound recording is the person who makes ie the producer

BroadcastsThe above three are a representation of the expansion of copyrights

Copyright requirements s.22(3)


Literal, musical and artistic works shall not be eligible for copyright unless:
Expended sufficient effort to give it an original character (minor changes to a
work is not sufficient to give it an original character)
Reduced to a material form eg written down, recorded
If a person made a speech that had not been reduced to writing or any
material form, if another person reduced the speech in writing who would
have copyright rights over the speech. The oralist or the journalist? Look for
cases or writing that can shed light on this
Legal position v moral position
How to protect traditional knowledge and works of folklore?
Do corporate or product names amount to literal works worthy of copyright
protection?
Is there copyright in names?
Under copyright law, if a party can convince the court that it is an original
literal work, then it could be protected.
Exxon Case-There has to be some literal enjoyment which a name does not
satisfy for there to be copyright rights
At what point do we say we have gone beyond the word minimum. Eg would
a slogan be better protected?
Alternative media v Safaricom
Systems Africa v kalamazoo and another
Accounting forms can be eligible for copyright
However, general accounting forms are not original and as such are not
subject to copyrights, but specially designed forms are eligible.

Ownership of the forms vests in the customer for whom the forms were
produced for in specially produced forms
Qualification for Copyright
s.23(1) and s.24(1)
s. 23(1) An author needs to qualify for protection under the Copyright
Act( bearing in mind that IP in general is territorial in nature, one needs to be
a national or domiciled or for a company incorporated in Kenya)
s. 24(1) by point of origin
ao you can qualify by either point of origin of the work or who is the author of
the work eg is a national
rationale- promote creative industries locally(either publish or produce work
in your country or have some link with the country eg be a national or be
domiciled)
the above territorial limitations open up a lot of piracy
regulations extend protection to countries that are signatory to the treaties
that we are also signatories to eg Berne Convention
to mean, if a country is not a signatory to the Berne Convention, a person in
Kenya can make copies of your work if you do not qualify for protection
either through nationality or point of origin
8th October 2015
Go to the WIPO website( look at the sessions of the General Assembly)
Copyright- Limitations, Exceptions, Enforcement and CMOs
Right to Copyright: for work to be copyrightable it must be an original work
Limitations/ boundaries- set the boundaries of the discipline (original works)
Exceptions- internal limitations (set the limits within the discipline (for some
reason you cannot enjoy your right even if your works are original eg
because of public policy)
Limitation of Copyrights
Term of Copyright Protection

s. 23(2) sets out how long copyright is protected for


S. 23(3)
For anonymous works, if the author reveals themselves then it reverts to
literary, musical etc protected for life of author + 50 years
Harmonization of law
Life + 50
Life + 70
Extension of right limits public domain
If you shorten the life + 70 to 50 it can be argued that that amounts to
compulsory acquisition which is now a limitation of the authors right
Berne convention leaves each country to decide for itself what to allow and
what not to allow as fair dealing
Fair Dealing (exceptions- limitations within the rights of copyright)
s. 26(1)(a) right to reproduce for:
scientific research
private use
criticism or review
reporting of current events
requirement that you acknowledge the source
Provisional Fixation
Is it outside the boundary of copyright or is it an exception within copyright?
Article 13 of TRIPS
All exceptions and limitations must:
Limited to certain special cases
Should not conflict with normal exploitation(selling)
No prejudice to expectation of right holder

Arguments for allowing an exception for private use and against allowing
private use
If members of the public are allowed to make copies for their own private
use, then where are you supposed to sell to
26(b)(c)
Incidental inclusion
Artistic work situated in a place where it can be viewed by the public then
you dont need the permission of the author
Artistic work in a film or broadcast
Educational Use
Anthologies
Systematic instructional broadcasts
Recitation by one person of a reasonable extract (eg recitation of poems for
music festivals they ought to get a license from CopyK
Administrative uses
Exception for libraries and archives(26(1)(h)
Government libraries, non-commercial centres
Allowed to have copies for record purposes without breach of copyright
s. 2(1) judicial decisions and written law do not amount to literal works
this tends to put it in the public domain thus copyright does not extend to it
thus putting it as a limitation
this is as opposed to having it in s. 26
IP is a private right and the chief responsibility for enforcing a right is on the
copyright holder
s.35(1)(2) and (4)
check on Kenya Law for copyright infringement cases; there are more and
more copyright cases

go to court and get an anto piller order- s.27 to get evidence for your case
other than civil cases, there are other offences prosecuted by KECOBO
Offences
s. 38(1)
doing any of the acts in s.38 for commercial purposes
s.38(3) what amounts to private and domestic use?
Peter Mwangi & 2 others v KECOBO & 3 others
Remedies
S.35(4) reliefs available include
Damages, injunction or accounts
Delivery up to plaintiff of infringing copies or any article used for making
infringing copies
In lieu of damages and at plaintiffs ot
How do you advice two people getting into a partnership to do publishing
work so that you are able to guard against disputes in the event they have a
fall out?
S.31(1)
Are the partners the authors or are they commissioners(gets authors to write
then they publish)
Agreement to specify the ownership
What form of business are the partners forming for the purpose of
commissioning, partnership, company, business name (will ownership vest in
the company or individuals determined by the business entity)
s. 31(3)
Faulu Kenya v Safaricom- idea of monopolizing and idea through copyright
protection
Faulu could not identify which of the rights in section 26 had been infringed

s.26(2) protection that extends beyond drawings, as an architect if you come


up with a plan of a building you can control the building of a building in the
same plane
similartly you cannot copy the design of a similar building
ensure that an architect is able to enjoy economic benefit of their efforts
copyright only protects the expression of an idea, with the exception of
architects
Penalties- s.38(4,5,6)
Collective Management Societies
s.46- collective administration of copyright
must be in possession of certificate of registration
certificate valid for 12 months
formed by members who are rights holders
MCSK, KAMP, KOPIKEN
Cellulant Kenya v MCSK
MCSK v Parklands Shade Hotel t/a Klub House
Rep. v KAMP & PRISK exparte Nakuru Municipality Pubs, Bars, Restaurants
and Hotel Owners Association
Registrar of companies to deal with all management issues
Licensing dealth with by KECOBO
Rights holders do not feel that they get enough royalties compared to what
MCSK collects
Ideally Meant to be 30% to be used for administrative costs 70% to pay
royalties
Misunderstanding of the role of CMOs
s.46(4) provides the requirements to be satisfied for you to be a CMO
two collecting societies for the same society cannot be approved

BicRam Yoga case


15th October 2015
TRADEMARKS
Functions that trademarks serve on the consumer
Quality
Origin/producer
Differentiate
History of Trademarks
Used to identify the makers of goods
The marks were associated with a particular product and the quality of the
product
Manufacturers saw an opportunity to get a competitive edge over others
The law developed so that, Once consumers start getting that association
then you dont want confusion to exist in the market such that consumers
are not able to make a decision based on a mark
So the law was intended to protect both consumers and manufacturers so
that others do not free ride on the goodwill built on the brand
You can either have a registered or unregistered trademark
Unregistered Trademark
Passing off is the means through which unregistered trademarks are
protected
It protects the goodwill of the business and safeguards the public
Gives a right of action against anyone who passes off their goods as
manufactirers
Cause of action that exists for the manufacturer where someone passes off
their goods as the manufacturers goods
Trademark infringement is the legal action taken for registered trademarks

However, in practice, there is an overlap between trademark infringemtn and


passing off and both of them are used in legal action
A trademark may not be registered because of:
The mark fails to qualify for registration- Stringement requirement for
registration of a mark
Act complained off may fall outside the scope of trademark
Elements of Passing off
Reckitt and Colman v Borden(no man may pass off his goods as those of
another)
Three part test
Reputation and goodwill attached to the goods
Misrepresentation by the defendant to the public
Damage to plaintiff
Erven Warnick Case
Defendant used a name similar name to that of the plaintiff
Essential elements
Misrepresentation
Madeby a trader in the course of trade
To prospective customers of his or the ultimate consumers of goods and
services supplied by him
Calculated to injure the business goodwill of another trader
That causes damage
How do you establish reputation from the above case
It is a non-exhaustive list
Marketing
Sales(evidence should show you have high sales for you to claim you have a
reputation)

Trade evidence
Surveys etc
Causation
Must prove that the damage was caused by the defendants conduct
As such, a plaintiff;s poor choice of name may negate causation
Supa Brite v Pakad
Evidence of goodwill must be offered by members of the public and not the
subject of the reputation himself or the trader and his consulatant as the
case may be(independent proof of reputation is required)
The test of whether there is deception or likelihood of deception is based on
the overall impression created and not a detailed examiniation of
indeoendent features.
Common field of activity
Relevant market in relation to misrepresentation is the defendants target
market
Test is whether the defendants target market is aware of the plaintiffs
activity
If the traders are in different firels then It is assumed that there is less
danger of cinfusion and less danger of damage to plaintiff
Examples
Granada Group Ltd v Ford Motor Co. Ltd (Granada TV v Ford Granada)
Lego Australia
Beiersdorf v Emirchem
Paul Kukubo v Reollut
Sokoni v Sokoni Africa( the fact that the defendant had adopted the same
name thenit was sufficient to imply that there was some good will ayyached
to the name)
Unilever v Bidco

Blue band v Gold band


With regard to passing off the colours were different and names were
different
Defendant not liable for passing off
Pastificio Lucio Garofalo v Debenham and Fear Ltd
Santa Lucia v Santa Maria (one of the best local jurisprudence in passing off)
Goodwill establishes the proprietory interest
You must have goodwill for you to claim to protect
The misrepresentation must cause or be likely to cause confusion (same
cause of activity)(common field of activity)
Judge found in favour of plaintiif and found that santa maria was passing off
as santa lucia
In most cases you will have both causes of action, especially where you have
registered a trademark, just in case your tradememark is not well registered.
29th October 2015
Opposition to Registration of Trademark
Law provides for the opportunity to oppose registration of a mark
Send in a notice of opposition to KIPI which will be sent to the applicant
asking them to reply failure to which it is assumed they have opposed the
mark
Effective date of registration is the date you applied for registration and not
the date you get the certificate
Registration of trademark is effective from the date of application
Registrars decision id not final and you can appeal to the courts
Maintenance and enforcement of trademarks
s.23 of the trademarks act sets out the duration of protection of the mark
so long as you renew you can maintain a trademark perpetually- strengths of
a trademark

registrar obliged to send notice to registered proprietor setting out conditions


as to fees and conditions for registration
failure to renew, then your trademark can be removed from the register
if a mark has expired and not been renewed, an applicant can ask the
registrar to remove it from the register so that they are allowed to apply for
registration of a similar mark
Use and non-use of a mark
s.29
you must use a mark first then apply
but in Kenya you can apply for registration of a mark with the intention to
use
failure to use a registered mark can lead to the mark being removed
5 year continuous period of non-use
However, where non-use os based on special circumstances then applicant
cannot rely on non-use for 5 years
Looking after a mark
Pay renewal fees
Ensure you use your mark
The mark must be used as a trademark (identifying or distinguishing your
products) and not descriptive
Ensure any updates are also protected (where in rebranding there are slight
alterations in the trademark or there is a change, then it should be
protected)
Monitor the market to ensure others are not using the mark generically or
using too similar marks- duty of the owner
Ownership of the Mark
s. 20(1)
person claiming to be the proprietor of the trademark can apply for its
registration

Joint ownership
s. 61(1)
using the trademark on behalf of both of you as proprietors then the mark
may be registered jointly
s.15(2) allows registration of honest concurrent users
Assignment and Transmission of the Trademark
upon assignment the new owner takes all the rights over the trademark
Same as is the case with transmission
s.25
s.27- the person registered as proprietor of trademark is the individual with
the power to assign
s.28- any assignment or transmission must be registered with the registrar in
order to be valid
Licensing
Previously known as registered use
Franchising- licensing a trade mark use to another company
S.31- Licensing agreements must be registered with the Registrar
Where a trademark is registered for different classes, granting a licence is
given in respect to specific classes
Exclusive licence
s.31(3) as a licencee who has exclusive rights, if you see anotherperson
using the same trademark then you are entitlted to call upon the proprietir to
take proceedings to prevent infringement
this is because the proprietor is still the original owner
but if the proprietor fails to do so, you can take proceedings personally as the
licensee and enjoin the proprietor
Trafficking of a Mark

The registrar may refuse application for licensing if the grant would tend to
facilitate trafficking in the trademark s.31(6)
Factors to be considered include control over quality, finances etc
Failure to implement standards that licensees must uphold may lead to
registrar refusing to grant the licensing
s.31(9) registration of a person as a licensee means other licensee must be
informed
Infringement
Enforcement consists of pursuing person who infringe the mark without
authorization
Comparative advertising??
Advertising and trademark infringement
Premier Food Industries Ltd v Ai-Mahra Ltd, Civil Case 661 of
2005 (15 March 2006 F Azangalala, J)
Well known marks
s.15A
proprietors of well known marks enjoy additional rights to the basic rights
s.59 restraint of registration and use of olympic symbol
Defences
s.8
s.10- registered proprietor not to interfere with the use of a trademark
predating the use or registration of registered trade mark
common law rights
defences
s.11
you cannot register a trademark eg Nairobi School because Nairobi is a
place, Kenya high school, Nairobi acadey, Nairobi place

Ali A K S Assabwalla v Khadija Bint Gafoor and others [1962] EA 571


a person cannot be stopped from using their own name even if it is
misleading
bona fide use
use without intention to deceive anybody or without intention to make use of
the goodwill which has been acquired by another
combine bits of your name to something that is unique to get around people
using a similar name
passing off cannot rely on the dence of use of your name
G4S Security Services (K) Ltd. v Group Four Security Ltd. Civil
Application 19 of 2007 (30 March 2007).
Territoriality concept
Remedies
Injunctions
including interlocutory injunctions to prevent the other party from
continuing to use the disputed name or style
Damages
Microsoft Corp. v Microskills Ltd
Account of profit
Often difficult (need to get it from the defendant who may exaggerate the
costs of the business)
Certain actions that attract criminal sanctions
s.57 and 58
eg using the word registered next to your trdaemmark when it is not actually
registered
forgery
falsification
false representation

forfeiture of goods-s 58H