Copyright Infringement Claim

Copyright is defined in Black’s Law dictionary (8^th edition) as an act of violating any of a copyright owner’s exclusive rights. It seeks to protect the expression and recorded content of someone’s intellectual labours. It refers to the dealing with copyrighted material in a manner inconsistent with the copyright owner’s interests

 In Kenya, the statutory framework for copyright law is to be found in the Copyright Act, 2001. Sections 26 deals with the nature of copyright while Section 35, on infringement, provides that “copyright shall be infringed by a person who, without the licence of the owner of the copyright does, or causes to be done, an act the doing of which is controlled by the copyright.”

COPYRIGHT INFRINGEMENT

Infringement of Copyright occurs where a third party performs any of the exclusive acts granted to the author/rights holder without the authority of the rights holder and the said acts do not fall within the exceptions and limitations provided for under section 26 of the Copyright Act Cap 130 of the Laws of Kenya.

The exclusive acts include the right or reproduction, distribution, communication to the public, broadcasting, making available, rental or hire, sale, adaption and translation.

This can give rise to both criminal and civil liability. Under Section 35, copyright infringement which gives rise to civil liability includes the exercise of the exclusive rights granted under Section 26 of Cap 130 as well as the importation of the copyright works or the rights granted under section 30 in relation to performers or circumvents the effective technological measures or rights management information without the authority of the rights holder.

Copyright owners generally have the right to authorise or prohibit any of the following things in relation to their works:

• Copying the work in any way. For example, photocopying, reproducing a printed page by handwriting, typing or scanning into a computer, or making a copy of recorded music.
• Issuing copies of the work to the public
• Renting or lending copies of the work to the public. However, some lending of copyright works falls within the Public Lending Right Scheme External Link, and this lending does not infringe copyright
• Performing, showing or playing the work in public. Obvious examples are performing plays and music, playing sound recordings and showing films or videos in public. Letting a broadcast be seen or heard in public also involves performance of music and other copyright material contained in the broadcast
• Broadcasting the work or other communication to the public by electronic transmission. This includes putting copyright material on the internet or using it in an on demand service where members of the public choose the time that the work is sent to them
• Making an adaptation of the work, such as by translating a literary or dramatic work, transcribing a musical work and converting a computer program into a different computer language or code.

Copyright is infringed when any of the above acts are done without permission, whether directly or indirectly and whether the whole or a substantial part of a work is used, unless what is done falls within the scope of exceptions to copyright permitting certain minor uses.

Copyright is essentially a private right so decisions about how to enforce your right, that is what to do when your copyright work is used without your permission, are generally for you to take. Deliberate infringement of copyright on a commercial scale may be a criminal offence.

An author may licence or transfer his rights, wholly or in part, the same way physical property is dealt with. All assignments or licences must be in writing as required by the Copyright Act. These results in ownership being held by a person who is not the author. A person who creates a work during employment or commission may own the copyright if there is agreement to that effect.

FILING A COPYRIGHT INFRINGEMENT CLAIM

Establishing legal grounds

The first step towards filing a claim for copyright infringement is identifying the legal grounds. It is worth noting that copyright infringement arises when a third party performs any acts granted to the rights holder or author without the authority of the copyright holder.

The acts should be outside the limitations and exceptions provided in Section 26 of the Copyright Act. These acts include the right to reproduction, distribution, broadcasting, and communication to the public.

One should approach a lawyer specialising in Intellectual Property law who will identify the basic grounds for your lawsuit and present your facts. The lawyer will either send a cease and desist letter to the infringer or a demand to stop infringement and seek claims due.

Filing a legal complaint

The Kenya Copyright Board receives complaints and carries out the relevant investigations before carrying out raids and confiscating the infringing copies before prosecuting the matters in court. Once the matters have been determined, as per the court orders, the Kenya Copyright Board will destroy the material.

A lawyer after identifying several matters such as grounds, liability, course of action among others will file a complaint in court through relevant pleadings and serve this complaint to the infringer. The infringer will most likely file a response to the complaint. The case will proceed to the process of gathering evidence and preparing for trial.

IDENTIFYING WHETHER IT IS A CIVIL OR CRIMINAL LIABILITY

Your lawyer will work to determine whether this case of infringement amounts to civil or criminal liabilities as per the Copyright Act Section 35. During the process of gathering evidence and deposition, your lawyer may decide to try and settle the case outside the court room. If a settlement is not attainable, the case will go to trial.

The court will inform the parties involved on the day for the trial. During the trial, both sides will present the arguments and the court will use its discretion to make a ruling.

If the complainant wins, they shall be able to recover damages arising from the infringement and if it is a criminal case, the court will sentence the infringer to jail, depending on the degree of infringement as per the Copyright Act.

Civil Liability

The rights holder may under section 35 sue the infringer and claim relief by way of damages, seek an injunction or the delivery up of the infringing works, reasonable royalties as well as request for the destruction of the infringing works.

So far there have been several cases which have been brought before court and determined including the Microsoft v Microskills HCCC 833/1999 and Alternative Media Ltd v Safaricom, Civil Case 263 of 2004. In the former, the defendant was found to have infringed on the plaintiff’s copyright by selling, offering for sale and distributing software without authority and awarded the Plaintiff Ksh.250 million in damages.

In the latter, Alternative Media sued Safaricom for using their artwork without their authority. The Court ruled in favour of the plaintiff and awarded them damages and stopped Safaricom from using the said artwork and ordered them to withdraw the infringing works from the market.

In Paul Odalo Abuor v Colourprint Lt & Textbook Centre 2002 Unreported, the High Court issued an ex parte order restraining the defendants from printing, selling or distributing a book entitled White Highlands No More – A Modern Political History of Kenya. The plaintiff was also granted anton piller orders which allowed for the preservation of the evidence as provided for under section 37 of Cap 130.

Criminal Liability

Infringement of copyright can also give rise to criminal sanctions to be imposed on the infringer. Section 38 of Cap 130 creates offences which includes making for sale or hire of infringing copies, offering for sale, selling, hiring or other commercial distribution of the infringing works, possession of infringing copies, being in possession of contrivances that can be used for making infringing copies among others.

Section 36 (6) also makes it an offence to sale works that require an authentication device without one an offence and any person who is makes or is found in possession of a fake authentication device is guilty of an offence and is liable to a fine of a maximum of Ksh800,000 or a term not exceeding 10 years or both.

In the case heard in an Eldoret court, an accused was found guilty of copyright infringement and was sentenced to six months in prison with no option of a fine. While in broadcasting infringement case two persons were found guilty by a Nairobi court and fined Ksh400,000 each or six months in prison.

Proving infringement

Infringement occurs whenever somebody exercises rights reserved for the copyright owner without the author’s/owner’s leave.

Section 35 (1) of the Act provides that copyright can be infringed by a person who without the license of the owner of the copyright:

• Does or causes to be done, an act the doing of which is deterred by the copyright; and
• Imports or causes to be imported otherwise than for his private and domestic use an article which he knows to be an infringement.
• The copyright owner has the right to sue the person who infringes his rights but he is required to prove infringement.  

In order to prove infringement of reproduction rights, the copyright owner must prove not only that the work was copied but also that the copying was substantial. Substantiality can be evaluated by reference to either the quantity or quality.

In the Indian case of S.K. Dutt vs. Law Book Co. & ors A.I.R. 1954 All. 570, cited with approval in R.G Anand vs. M/S Delux Films & others 1978 AIR 1613, it was held that to sustain a claim for infringement of a man’s copyright, there must be a substantial infringement of the work and a mere fair dealing with any work falls outside the mischief of the Copyright Act.

Enforcement of rights acquired from copyright

Section 37 of the Act covers this.

The court allows granting of Anton- pillar orders. 

If a person has a prima facie evidence of infringement of his right by another party and he satisfies the court that he has a cause of action he intends to pursue and the other person has infringing copies/documents or other things constituting evidence of great importance and that there is real and well-founded apprehension that those things may be hidden or destroyed, then the court may make such orders (Anton- pillar orders) if it considers it necessary to secure the preservation of those things.

The Kenya Copyright Board is mandated to enforce copyright and related rights in Kenya. The Board currently has a legal and enforcement department that has 5 prosecutors and 10 copyright inspectors. The prosecutors are lawyers who are highly specialised in copyright and related rights.

The inspectors are attached from the National Police Service and trained in investigation of copyright and related rights. Enforcement also included training and awareness creation in collaboration with various government agencies such as the National Police Service, the Department of Weights and Measures, the Judiciary, the Anti-Counterfeit Agency as well as the rights holders.

Steps a copyright owner can take to prevent infringement

As far as protection goes, for all material online one is encouraged to add a generic tag of “(c) (author’s name) 2011. All Rights Reserved” at the end of every work uploaded online.

Contact details should also be easily accessible both on the site/blog in case attempts are made by a third party to contact you regarding consent to use the copyright work.

Future Content in respect of a copyrighted website

Any material that may be added after issuance of the Certificate of Registration of Copyright can still be protected. All you need to do is upload the new content on a CD and accompany this with a copy of the Original Certificate of Registration and tendered over at the Kenya Copyright Board Offices, whose officials will update their records free of charge.

Copyright related to YouTube content

YouTube has an appeal process to claim copyright infringement on a video especially one earning and seek earned revenue on it. YouTube offers a website, for submissions of copyright takedown notices under the Digital Millennium Copyright Act takedowns (“DMCA takedowns”)

However since a DMCA takedown is governed by U.S. Copyright Law, 17 U.S.C. 512(c) one can use Content ID claims which are not under US law and are the result of self-monitoring by YouTube.

Content ID claims also do not initially result in a copyright strike on a YouTuber’s channel, while a DMCA takedown notice directed at a channel will result in a copyright strike immediately until a counter notification is submitted. The following options are available from this move:

1. Blocking of the song from playing on the infringer’s channel
2. Blocking monetization or earning capacity of the song on the channel
3. Complete takedown of the video from the Studios channel

The infringement of copyrighted musical works contrary to section 38(2) of the Copyright Act which provides;

Any person who causes a literary or musical work, an audio-visual work or a sound recording to be performed in public at a time when copyright subsists in such work or sound recording and where such performance is an infringement of that copyright shall be guilty of an offence unless he is able to prove that he had acted in good faith and had no reasonable grounds for supposing that copyright would or might be infringed.

In essence, the provision makes it an offence to cause the performance of a literary, musical or audio visual work protected by copyright in public where such a performance constitutes an infringement. Under section 35(1) of the Act, an infringement includes, inter alia, the following;

Copyright shall be infringed by a person who, without the licence of the owner of the copyright—

1. does, or causes to be done, an act the doing of which is controlled by the copyright; or
2. imports, or causes to be imported, otherwise than for his private and domestic use, an article which he knows to be an infringing copy.

For online or digital work violation, you can always file a DMCA take down. Search engines will remove the work being violated from search results. Hosting companies can also take down the website violating your work.

ALTERNATIVE DISPUTE RESOLUTION

The Kenya Copyright Board offers mediation services to the rights holders and users where they opt not to go to court and are seeking a fast and expeditious process to determine cases. Most of the mediation cases involve different rights holders in the music and book publishing sectors. The Kenya Copyright Board has also handled cases involving infringement of copyright in visual works.