IP Case Law library

Mount Kenya Sundries Ltd v Macmillan Kenya (Publishers) Ltd [2016] eKLR.

 Facts 

The case was an appeal from the judgement of Visram J. In that judgement, Visram J decided that the Respondent established that copyright subsists in its maps and that the Appellant had infringed on the copyright. The Respondent was granted an injunction to restrain the Appellant from selling/offering for sale the map titled Kenya Pictorial Tourist Route Map or any map thereinn. Additionally, an order for delivery of all maps that were in the Appellant’s control; an inquiry to damages; an account of profits and payment and interest and costs. 

The Appellant filed an Appeal based on 8 grounds (lack of locus standi; no copyright infringement occurred; Respondent’s maps were not original; prior use by the Appellant; Trial Judge improrely evalusated evidence; failure to specify the infringed maps; improper reliance on expert testimony and relief granted was unwaarented). The Appellant asserted they didn’t infringe on any copyright by publishing and selling their maps, which were created independently before the Respondent’s maps. They argued that since both parties used the same survey of Kenya as their source, similarities were inevitable. The Appellant criticised the impartiality of the judge and the lack of specificity regarding which of the Respondent’s maps were allegedly infringed. 

The Respondent's counsel supported the High Court's findings, claiming that the Appellant traced and copied the respondent's maps of Nairobi and Mombasa Island, which were published before the Appellant's. They argued that the assignment of copyright from the Respondent's parent company to the Respondent could be made after the start of legal proceedings, and that Kenyan Law doesn't invalidate assignments made under English Law. They contend that the Appeal lacks merit and should be dismissed.  

Issue 

1. Whether the Respondent had locus standi?
2. Which company between the Appellant and the Respondent had copyright?
3. Whether the Appellant had committed copyright infringement?

Rule

Kenya Ports Authority v Kustron (Kenya) Limited [2009] - On a first appeal from the High Court the Court of Appeal should reconsider the evidence, evaluate it itself and draw its own conclusions though it should always bear in mind that it has neither seen nor heard the witnesses and should make due allowance in that respect. Secondly, the responsibility of the Court is to rule on the evidence on record and not to introduce extraneous matters not dealt with by the parties in the evidence.

Section 13(1) of the repealed Copyright Act: Discusses ownership of copyright by employers or organizations if the material is produced under their control or direction then the work belongs to the Employer as a work for hire

Section 7 and Section 15(1) of the Copyright Act: Defines the nature of copyright and conditions for infringement, indicating that copyright includes the exclusive right to reproduce, distribute, and control substantial parts of the work.

Authorities from India and UK: R.G. Anand v M/S Delux Films & Ors and Macmillan & Co. Limited v K and Cooper emphasize that substantial resemblance to the original work can constitute copyright infringement.

Analysis

Whether the Respondent had locus standi?

Firstly, the Respondent's Managing Director,, testified that although the Respondent was initially wholly owned by Macmillan Publishers Ltd. of the United Kingdom (UK), rights over the maps in question were eventually assigned to the Respondent by an agreement dated 20th January 2003. This assignment occurred after the suit had been filed in August 1995. The Appellant argued that the respondent had no property or right to protect in the maps at the time of filing the claim.

Which company between the Appellant and the Respondent had copyright?

The reasoning for determining which party held the copyright revolves around the evidence presented regarding the timeline of map production and revisions.

The Respondent claimed copyright, asserting that they first produced their maps in 1985, revised them in 1989, and published them in 1990. This claim was supported by the testimony of the Respondent’s Managing Director, who provided original material used in preparing the Respondent's maps. Furthermore, the Respondent's maps were already in circulation before the Appellant began their map-making activities. It was also established that the Appellant initially relied on the Respondent for their supply of maps, including the 1985 edition.

The Appellant countered stating that they began map-making in 1982 and started ground work for the disputed maps around 1988/89, with publication in 1990. However, they admitted to being aware of the Respondent's maps being on the market during their map-making process.

The court considered the evidence and concluded that the Respondent was in the map-making business before the Appellant and had continuously revised and released their maps into the market. The learned Judge accepted the Respondent's version of events, particularly emphasizing the consistent and credible testimony of the Respondent’s Managing Director.

Ultimately, the court upheld the findings of the trial Judge, affirming that the Respondent had copyright in their maps based on the evidence presented and the assessment of witness testimonies.

The High Court relied on the principles of equity, as outlined in the treatise of Copinger and Shone James on Copyright, 14th Edition, to hold that the respondent was entitled to commence the suit even before the formal assignment of copyright. The judge found that the Respondent was the equitable owner of the maps, given that they were specifically made for the Respondent by its parent company, Macmillan Publishers Ltd.

The Respondent’s Managing Directors’s testimony also supported the notion that the Respondent was actively involved in the research and production of the maps. He mentioned that he was involved in the research of original materials to produce the maps, which were made by a company in the UK for Macmillan Kenya.

Based on this evidence, the court concluded that the Respondent had the capacity to commence the action in the High Court, even though the formal assignment of copyright had not been completed at the time of filing the suit. The court also noted that the issue of the Respondent's standing to institute proceedings was not contested by the Appellant, and the Appellant's acknowledgment of the Respondent's works further supported the Respondent's standing.

Whether the Appellant had committed copyright infringement?

The Court found copyright infringement by the Appellant based on several key points and pieces of evidence:

The Court established that the Respondent held the copyright for the maps in question. Although the original maps were produced under the direction of the Respondent's parent company, Macmillan Publishers of the United Kingdom, the copyright was subsequently assigned to the Respondent. This ownership entitled the Respondent to take legal action against any infringement.

Esther, a cartography lecturer with extensive qualifications, provided expert testimony demonstrating that the Appellant's maps were copied from the Respondent's. She compared the maps and explained in detail how she arrived at her conclusion.

The Court discredited the testimony of the Appellant's expert witnesses, Obel and Ongong’a, due to their lack of qualifications in cartography and inconsistencies in their testimonies. Despite attempts to challenge Esther's expert opinion, the Appellant's experts were unable to provide convincing counterarguments.

The Court determined that the Appellant's maps substantially copied those of the Respondent. Even though there were some differences noted, the overall impression was that the Appellant's maps were replicas or imitations of the Respondent's.

The Court noted that the Appellant's own counterclaim against the Respondent acknowledged the similarities between the maps, further supporting the conclusion of copyright infringement.

The court’s reliance on equitable principles to allow the Respondent to commence the suit before the formal assignment of copyright was contentious. While the assignment was eventually completed, initiating legal action without clear ownership at the time of filing raises questions about the integrity of the process. The court’s decision might set a precedent where entities could prematurely file claims without concrete legal standing, relying on subsequent assignments to validate their actions retrospectively.

The Court’s analysis rightly emphasized the substantial similarities between the maps, yet it could have delved deeper into the argument regarding the use of common public sources. The Appellant’s claim that both parties used the same survey data from the Kenya Survey could have been more rigorously examined. While similarities due to common sources do not justify outright copying, the court should have provided a more detailed analysis distinguishing between lawful use of public data and unlawful copying.

The judgement reinforced the significance of expert testimony in copyright infringement cases, particularly when both parties used a common public source. The court relied heavily on the Respondent's expert witness, who provided persuasive evidence of copying, contrasting sharply with the less compelling testimony from the Appellant's witnesses. This aspect of the judgment illustrates the critical impact of qualified and credible expert analysis in resolving disputes over substantial similarity and infringement in intellectual property litigation.

Conclusion

The Court concluded that the Appellant violated the Respondent’s copyright. The Appeal was dismissed, and costs were awarded to the Respondent.

Judgement to be found here.