Copyright Infringement
Macmillan Kenya (Publishers) Ltd v Mount Kenya Sundries Limited (2008) eKLR
Facts
The Plaintiff instituted this suit against the Defendant on August 9, 1995, alleging that the Defendant’s map, called the "Kenya Pictorial Tourist Route Map," infringed the Plaintiff's copyright in its maps named "Kenya Tourist Map" (1985) and "Kenya Traveler’s Map" (1989). The Plaintiff sought an injunction to prevent the Defendant from selling or offering for sale the infringing map, delivery up of all infringing maps, an inquiry into damages or an account of profits, interest, and costs. The Defendant denied the Plaintiff's claims, asserting that the Plaintiff had no locus standi, no copyright, and that the suit was barred by laches. Additionally, the Defendant counterclaimed that it was the Plaintiff who had infringed on the Defendant’s copyright by producing a map similar to the Defendant’s earlier map.
Issues
1. When did the Plaintiff alter "Kenya Tourist Map" and market it as "Kenya Traveler’s Map"?
2. Was "Kenya Traveler’s Map" published before or after "Kenya Pictorial Tourist Route Map"?
3. Does copyright subsist in "Kenya Traveler’s Map" and does the Plaintiff own it?
4. Has the Defendant infringed the Plaintiff’s copyright, and did the references taken by the Defendant constitute a substantial part of the Plaintiff’s work?
5. Is the Plaintiff's claim barred by laches, and if so, does it constitute a defense to the Plaintiff’s claim?
Rule
The key statutes and case law relevant to the issues include:
1. Copyright Act, Cap 130 (now repealed)
- Section 2(1)(b): Defines "artistic works" to include maps.
- Section 3(1)(c): Provides that artistic works are eligible for copyright if sufficient work has been expended to give them original character and if the work has been reduced to material form.
- Sections 4 and 5: Confer copyright on eligible works.
- Section 15(1): Describes acts that constitute copyright infringement.
2. Sapra Studio vs Tip-Top Clothing Company (1971) EA 489
- This case clarified that copyright does not require registration or a license to be enforceable.
3. Alternative Media Ltd vs Safaricom Ltd (2005) 2 KLR 253
- Established that copyright infringement arises from copying all or a substantial part of the Plaintiff’s work, not merely because the Defendant’s work resembles the Plaintiff’s.
Analysis
1. Whose Map Was First in Time?
The Plaintiff’s 1989 map, "Kenya Traveler’s Map," was found to be first in time. Despite conflicting accounts, the court was persuaded by the consistency and credibility of the Plaintiff’s witnesses, including PW 1, who provided evidence that the Plaintiff’s parent company had been producing Kenyan maps since 1985. The court dismissed the Defendant's assertions that the Plaintiff’s map was produced in 1990 and not 1989, based on the thorough explanations provided by the Plaintiff’s witnesses and the evidence of continuous map-making activity.
2. Does the Plaintiff Have Copyright in "Kenya Traveler’s Map"?
The court found that the Plaintiff had expended sufficient work in creating the map to give it an original character, thus meeting the requirements under Section 3(1)(c) of the Copyright Act, Cap 130. The Plaintiff demonstrated through testimony and evidence the extensive work and originality involved in the creation of its maps. This included research materials, original notes, and physical verification of map features. Hence, the Plaintiff was entitled to copyright protection under Sections 4 and 5 of the Act.
3. Has the Defendant Infringed the Plaintiff’s Copyright?
The court determined that the Defendant had substantially copied the Plaintiff’s maps, particularly the 1985 map, in creating the "Kenya Pictorial Tourist Route Map." Expert testimony from Ms. Esther Mbeke Muya, a cartographer, was particularly persuasive in showing the substantial similarities between the maps. The court found the Defendant’s expert witnesses to be less credible due to inconsistencies and contradictions in their testimony. The Defendant’s map was found to have been copied, as evidenced by the similar styles, name placements, and symbols. Thus, the Defendant was liable for copyright infringement under Section 15(1) of the Copyright Act, Cap 130.
4. Is the Plaintiff’s Claim Barred by Laches?
The court found that the Plaintiff’s claim was not barred by laches. Although the Defendant produced the offending map in 1990 and the suit was filed in 1995, the court agreed with the Plaintiff that this was a continuing tort. As long as the Defendant continued to produce and sell the infringing maps, the Plaintiff’s right to seek redress remained valid. The court dismissed the Defendant’s defense of laches, emphasizing that the tort continued until the Defendant ceased the infringing activity.
Conclusion
The court concluded that the Plaintiff’s map, "Kenya Traveler’s Map," was first in time and that the Plaintiff had copyright in the map. The Defendant had infringed on the Plaintiff’s copyright by substantially copying the Plaintiff’s work. The Plaintiff’s claim was not barred by laches as the infringement was a continuing tort. Consequently, the Plaintiff was entitled to the reliefs sought, including an injunction to restrain the Defendant from further infringement, delivery up of the infringing maps, and an inquiry into damages or an account of profits.
Judgment available here.