Copyright Infringement
Donald Muhonda Andolo v Pinnacle Developers Limited, Douglas Okeyo Oluoch, Bon-Arch Associates and Peter Oluoch Ojwang [2021] KEHC 22881 Commercial Suit E31 of 2022.
Facts
The Plaintiff, an architect, created architectural plans approved by the County Government for a project on parcel No. Kajiado/Kaputiei North/32248. The Plaintiff and the 2nd Defendant were equal shareholders and directors of the Company overseeing the project.
In 2016, a dispute arose between the Plaintiff and the 2nd Defendant, leading the latter to involve the 1st and 3rd Defendants, an architect, and a company respectively. The 3rd Defendant reproduced the Plaintiff's expired plans under a new application to continue the project.
The Plaintiff, alleging infringement of his copyright, filed a plaint in November 2017 against the Defendants. He claimed ownership of the original plans, stating he was not an employee of the Company, and that the Defendants used his designs without consent, license, or copyright transfer. The Plaintiff asserted an architect-client relationship with the Company since 2010, issuing invoices directly to the Company for his design work and project supervision.
The Plaintiff sought various reliefs, including:
- A permanent injunction against the Defendants from using his designs on any property.
- Return of all architectural designs and plans related to the project.
- An account of profits made from infringing his designs.
- A prohibition on the County Government from approving similar designs without his authorization.
- General damages, costs of the suit, and interest.
The 1st and 2nd Defendants filed a statement of defence filed on 19th June 2018. They explained that the Plaintiff and 2nd Defendant established the Company in January 2010 for real estate development, consultancy services, project management, and property sales. They claimed the Plaintiff provided architectural services, while the 2nd Defendant handled financial management for the Company. They argued that both were employees of the Company, not independent contractors, and any work done, including the architectural drawings, belonged to the Company.
They stated that in 2016, a disagreement arose between the Plaintiff and the 2nd Defendant due to the Plaintiff's alleged mismanagement of Company projects. They claimed that the Plaintiff abandoned projects halfway, leading to a crisis. To fulfil contractual obligations, the 2nd Defendant engaged the 3rd and 4th Defendants to complete the projects using the existing designs. In essence they argued that the architectural plans belonged to the Company.
The 3rd and 4th Defendants, in their statement of defence filed on 6th September 2018, stated that on 17th August 2017, the 1st Defendant appointed the 3rd Defendant to provide Architectural services to complete the Company’s project on Kajiado/Kaputiei-North/32248. They claimed that the project was initiated by the Company for sale to prospective buyers. According to them, the Plaintiff, as an employee of the Company, willingly transferred ownership of the architectural plans by handing over the original copies to the Company.
Furthermore, they argued that the 1st Defendant informed them that the Plaintiff had abandoned the project after full payment, and that the 1st Defendant legally acquired the project from the Company, including ownership of the architectural plans. The 3rd and 4th Defendants stated that based on the representations from the 1st and 2nd Defendants, they accepted the appointment and agreed to complete the project. They mentioned that they prepared documents, including the Plaintiff’s approved plans for renewal, which was granted by the County Government of Kajiado.
The 3rd and 4th Defendants claimed that they were merely agents of the 1st Defendant, caught in a dispute between two former business partners. They argued that the Company, not involved in the suit, had already claimed copyright. They believed that joining them in the suit was motivated by malice and ulterior motives on the Plaintiff's part.
Additionally, they stated that the 4th Defendant had no direct contractual relationship with the 1st Defendant, acting solely as an agent of the 3rd Defendant. They asserted that they used the designs for their intended purposes, as directed by the 1st Defendant. If any infringement occurred, they argued that the 1st Defendant should be held responsible for their actions. The 3rd and 4th Defendants prayed for the dismissal of the suit against them, along with costs.
Issue
- Whether the Plaintiff owned copyright over the architectural designs?
- Whether there was infringement of that copyright?
Rule
Whether the Plaintiff owned copyright over the architectural designs?
Section 22 (1) of The Copyright Act (2001) - artistic work is eligible for copyright protection. Section 22 (3) of The Copyright Act (2001)- states that literary, musical or artistic work will not be eligible for copyright unless sufficient effort has been expended on making the work to give it an original character, and the work had been written down, recorded or otherwise reduced to material dorm.
Section 31 of the The Copyright Act (2001) - where work is commissioned by a person who is not the author’s employer under a contract of service; or is made in the course of the author’s employment under a contract of service, the copyright shall be deemed to be transferred to the person who commissioned the work or author’s employer subject to any agreement between the parties excluding, or limiting such transfer.
Stevenson Jordan and Harrison Ltd v MacDonald and Evans - under a contract of service a man is employed as part of the business and his work is done as an integral part of the business; whereas under a contract for services his work, although done for the business, is not integrated into it but only accessory to it.
Whether there was infringement of that copyright?
Section 35 (1) The Copyright Act (2001) - 1, 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 or
- Imports or causes to be imported otherwise for his private and domestic use, an article which he knows to be an infringing copy
Alternative Media Limited v Safaricom Limited (2005) - the owner of copyright work is the only person who may reproduce the material either in its original form its translation or adaptation. If anybody does any of those acts he is deemed to have infringed the copyright.
Bruno Diaz Souza v Gustavo Renato & Others (2007) - An architect provided architectural services under agreed terms, with a condition that his drawings could not be used without his consent. After his services were terminated and a new architect was appointed, the original architect's designs were used for the same project without his permission, leading to a claim of copyright infringement. The court initially dismissed the claim, stating that the drawings could be used for the same project they were prepared for. On appeal, the Appellate Court upheld this decision, ruling that there was no infringement since the drawings were used for their intended project and not for any other purpose, and there was no evidence of copying even with amendments.
Analysis
Whether the Plaintiff owned copyright over the architectural designs?
The Court determined from the facts and evidence adduced that The Plaintiff was both owner and employee of the company. The Company’s obligation was to design and build houses which included creating architectural drawings, a task that fell under the Plaintiff’s responsibilities. The Plaintiff did not provide evidence of a separate agreement with the Company regarding his remuneration for these professional services or the specific fees he was to receive, aside from what was outlined for him as a director in the Company's articles of association. According to the 2nd Defendant, the equipment and resources used by the Plaintiff belonged to the Company.
The Court determined that the copyright over the architectural drawings rightfully belonged to the Company that commissioned the work.
Whether there was infringement of that copyright?
The court, having established that the architectural drawings belonged to the Company, deemed the issue of copyright infringement moot. However, for thoroughness, the court addressed the issue.
The Plaintiff alleged that the Defendants infringed on his copyright by reproducing, renewing, and using the architectural drawings without his consent. The law defines copyright infringement as actions done without the owner's permission, such as reproducing or using the copyrighted material.
The Plaintiff argued that the Defendants, particularly the 1st and 2nd Defendants, passed on the drawings to the 3rd and 4th Defendants, who then used them without consent for the project. The Plaintiff contended that this action constituted copyright infringement.
The Defendants countered that they did not initiate new projects and only used the drawings within the scope of the original agreement to build houses on the designated property. They also claimed that they did not commercially benefit from the drawings aside from payments made to the Company.
The court considered past cases cited by the Plaintiff. However, these cases differed from the present situation, which involved a director drawing plans for the Company's use in constructing houses.
It was established that the project could not continue without renewing the architectural plans, a task that required an architect. Since the Plaintiff had left the Company, the 3rd and 4th Defendants were brought in to assist in completing the project.
Upon review of the evidence, the court found that the original architectural drawings were produced by the Plaintiff as a director of the Company, using its resources. The renewal application indicated that the drawings were intended for the same project on the same property.
The Plaintiff argued that minor changes made to the drawings constituted infringement. However, the court noted that functional changes due to practical reasons are generally permitted.
Referring to an Indian court case, the court concluded that the drawings, while belonging to the architect, could be used for the intended project without consent, unless used for another project.
The Plaintiff failed to prove that the disputed drawings were used for any other project than the intended one. Therefore, the court found no infringement.
This case highlights the complexities surrounding copyright in collaborative and corporate environments, particularly in creative industries like architecture. It underscores the necessity for clear agreements on intellectual property rights within professional contracts and corporate structures. Moreover, it demonstrates how copyright law interfaces with corporate governance, reinforcing the need for directors and stakeholders to have explicit understandings and formal agreements about the ownership and use of intellectual outputs.
In conclusion, the ruling in Donald Muhonda Andolo v Pinnacle Developers Limited & 3 others elucidates important aspects of copyright law, particularly the transfer of rights in a corporate setting and the nuances of infringement related to the use of copyrighted material within the scope of originally intended purposes. This case serves as a pivotal reference for architects, directors, and legal professionals navigating the intersections of copyright law, corporate governance, and intellectual property management.
Conclusion
The suit is dismissed with costs.
Judgement to be found here