IP Case Law library

Nonny Gathoni Njenga & another v Catherine Masitsa & 2 others [2015] CIVIL CASE NO. 490 OF 2013

 Facts 

The Plaintiff filed a lawsuit against the defendants, alleging infringement of her copyrighted work titled "Weddings with Nonny Gathoni," which was subsequently branded as "The Baileys Wedding Show with Noni Gathoni." She claims to be the rightful owner of the copyright, having registered it under the registration number LT-11447 with the Kenya Copyright Board (KECOBO). 

The plaintiff asserted that the Defendants had unlawfully infringed on her copyright by broadcasting and promoting a similar television show, leading to significant financial losses for both her and her sponsors. In response, the Defendant, the producer of "Samantha’s Bridal Show," contended that the second plaintiff—who served as the producer and director of "The Baileys Wedding Show with Noni Gathoni"—approached her claiming that the first plaintiff had wrongfully registered the show under her own name with KECOBO. Furthermore, she mentioned that proceedings were underway to challenge the validity of the copyright registration dated 17th May 2013. 

The defendant argued that her show did not infringe on the first Plaintiff's copyright because the registered work was categorised only as a literary work under KECOBO, which does not extend copyright protection to audio-visual broadcasts. Therefore, she maintains that her production of "Samantha’s Bridal Show" has not violated any copyright laws as it falls outside the scope of the first plaintiff’s registered copyright category. 

 Issue 

1. Whether the first plaintiff is prima facie the owner of the literary work dubbed ‘WEDDINGS WITH NONNY GATHONI’ and whether an interlocutory injunction should be  granted.
2. Whether the defendants have infringed upon the plaintiff’s literary copyrighted work ‘WEDDINGS WITH NONNY GATHONI’, and dubbed ‘THE BAILEYS WEDDING SHOW WITH NONI GATHONI’. 

Rule

Issue One

Mrao Ltd v. First American Bank of Kenya Ltd & 2 Others (2003) KLR 1215- a prima facie case in a civil application includes but is not limited to a ‘genuine and arguable case’. It is a case in which, on the material presented to the court, a tribunal properly directing itself will conclude that there exists a right which has apparently been infringed by the opposite party as to call for an explanation or rebuttal from the latter.

Giella v. Cassman Brown & Co. Ltd (1973) E.A. 358- conditions for the grant of an interlocutory injunction

1. prima facie case with a probability of success
2. risk of irreparable injury
3. balance of convenience.

Waithaka v. Industrual and Commercial Development Corporation (2001) KLR- damages are not always an adequate remedy in determining whether or not to grant an interlocutory injunction especially where there has been a breach of law.

Analysis

In assessing whether the Defendants infringed on the plaintiffs' copyrighted work, the court undertook a detailed examination of both the nature of the copyright registration and the specifics of the alleged infringement. The registration covered the literary work titled "Weddings with Nonny Gathoni," which the Plaintiffs argued was unlawfully replicated by the defendants in their television program format. The Plaintiffs' work was not just a generic concept but a detailed format with specific elements that contributed to its unique identity, distinguishing it from mere ideas or themes, which are not copyrightable.

The Defendants contended that their show was different and fell outside the literary category, arguing that their work was independently created. However, evidence presented by the plaintiffs showed significant similarities in the new format of the Defendants' show post the alleged infringement date. These similarities were not coincidental but appeared to be a direct adaptation of the Plaintiffs' copyrighted format, suggesting that the defendants might have accessed the copyrighted material and used it as a template for modifying their own show.

Additionally, the court considered the legal implications of "access" and "substantial similarity" in copyright infringement cases. The Plaintiffs demonstrated that the defendants had access to the copyrighted work through interactions with a mutual contact who had worked with both parties. This access raised the likelihood that the defendants could have replicated key elements of the Plaintiffs’ show without authorisation.

Moreover, the court dismissed the Defendants' argument that the registration did not protect against broadcasts. The underlying literary work formed the backbone of the broadcast content, and as such, any replication of the same format and significant elements directly infringed on the Plaintiffs' copyright. The concept of derivative works in copyright law was pivotal here, as it protected the original expression of ideas recorded in a literary form, not just the text itself but also the expression of these ideas in performance or production.

The ruling underscored that copyright law does not merely protect written words but also the expression of ideas and formats articulated in those words, which in this case, extended to the structured format of a television show derived from the copyrighted literary work. This protection is crucial in media and entertainment, where formats are often as valuable as the actual content.

The court’s decision to grant the injunction also reflected an understanding of the irreparable harm that could continue if the defendants were allowed to use the disputed format, potentially causing financial losses and market confusion that could not be adequately compensated by damages alone. The balance of convenience clearly favored protecting the intellectual property rights of the plaintiffs, who had legally secured their rights through proper registration and investment into the creation and promotion of their work.

Conclusion

The court granted an injunction against the Defendants, restraining them from further broadcasting or exploiting any programme that infringes on the plaintiffs' copyrighted work. The court ruled in favour of the Plaintiffs, recognising the legal protection of their copyrighted literary work and the financial investment tied to it. The Court also ordered that the costs of the application be borne by the cause, emphasising the protection of intellectual property rights and the economic interests of copyright holders.


Ruling available here