Copyright Infringement
John Boniface Maina V Safaricom Limited Interactive Media Services Limited 1st Third Party Liberty Afrika Technologies Ltd 2nd Third Party, Music Copyright Society Of Kenya 3rd Third Party, Cellulant (Kenya) Limited 4th Third Party [2013] Eklr
Facts
John Boniface Maina (the plaintiff), a musician, filed a suit against Safaricom Limited (the defendant), a telecommunications company, alleging copyright infringement of his Gikuyu musical recordings. The dispute arose from Safaricom’s Skiza and Surf 2 Win platforms, which enabled subscribers to download caller ringback tones, including the plaintiff’s songs, for a fee. The defendant had entered into content provision agreements with four third parties: Interactive Media Services Ltd (1st third party), Liberty Afrika Technologies Ltd (2nd third party), the Music Copyright Society of Kenya (MCSK) (3rd third party), and Cellulant (Kenya) Ltd (4th third party). The plaintiff claimed he had not authorised the exploitation of his works by any of these parties and sought both injunctive relief and an Anton Piller order to preserve evidence of the alleged infringement.
Issue
The main issues were:
Whether the defendant and the third parties had infringed the plaintiff’s copyright by distributing and profiting from his musical works without authorisation.
Whether the plaintiff was entitled to interlocutory relief in the form of an injunction and an Anton Piller order to prevent further infringement and preserve critical evidence.
Rule
The court relied on Section 35 of the Copyright Act 2001 (Kenya), which defines acts that constitute copyright infringement, including unauthorised reproduction, distribution, importation, and communication to the public. Section 37 provides for Anton Piller orders to be granted ex parte to preserve evidence in IP cases. Additionally, the plaintiff’s moral rights and exclusive economic rights under Sections 32 and 35 of the Act were considered. The court also applied the Giella v Cassman Brown [1973] EA 358 test for injunctive relief and the principles for Anton Piller orders established in Anton Piller KG v Manufacturing Processes Ltd [1976] Ch 55.
Application
The court found that the plaintiff was the original author of the Gikuyu songs, including Muiritu wa Kabete, Tiga Kumute, and Ndwara Cece, and thus held copyright in those works. Safaricom had used his music through its ringtone services and acknowledged that the works had been hosted on its platform and were later removed only after the plaintiff raised objections. The defendant justified the use by citing content provision agreements with third parties, including MCSK and Liberty Afrika. However, the plaintiff denied authorising MCSK to assign rights on his behalf and submitted a letter withdrawing from the society.
The court noted that while the defendant claimed to have remitted payments to the third parties, the plaintiff had not received royalties and remained largely unaware of how his music had been monetised. This complex network of sublicensing raised concerns about circumvention of technical copyright protections. The court accepted that the defendant had admitted to the use of the plaintiff’s works and that there was a risk of destruction or tampering with key records. Thus, the plaintiff had established a prima facie case for injunctive relief and met the strict requirements for a limited Anton Piller order to preserve evidence.
Conclusion
The court granted the plaintiff a temporary injunction restraining the defendant and the first three third parties from infringing, selling, or storing data relating to the plaintiff’s copyrighted musical works. It also issued a limited Anton Piller order authorising the plaintiff, accompanied by an inspector from the Kenya Copyright Board, to inspect and preserve records and data from the defendant's and third parties’ premises. The court declined to allow seizure of machinery but ordered the preservation of vital digital and documentary evidence. Costs were awarded against the defendant and the 1st to 3rd third parties. The court held that the plaintiff’s intellectual property rights had been prima facie infringed and deserved judicial protection.
Ruling available here.