IP Case Law library

Facts

In 2010, the first plaintiff, an innovator, developed a unique concept for an electronic medical prescription system called 'Med Dispenser'. Envisioning commercial potential, the plaintiff approached the defendant, a prominent telecommunications company, proposing a joint venture to bring this innovation to market. Subsequent discussions led to the involvement of Bernsoft Interactive Limited, a software development firm tasked with creating a specialised software program to operationalize the first plaintiff's idea.

During the collaborative efforts, Non-Disclosure Agreements (NDAs) were reportedly signed between the parties. However, communication breakdowns occurred, and the plaintiff received no further responses to inquiries made concerning project progress. On 23rd October 2012, the defendant launched a new telemedicine application, 'Safaricom Health Presence', in partnership with African Air Rescue. The plaintiff observed that this new application bore significant resemblances to the 'Med Dispenser' system, both in functionality and design, as evidenced during a corporate presentation by the defendant.

The defendant countered the plaintiff's claims by suggesting that the dispute should be adjudicated by the Industrial Property Tribunal, arguing that the plaintiff's concept was neither original nor novel, citing similar existing systems in countries like India. In response, the plaintiff sought judicial intervention, filing for a temporary injunction to halt the use of any related technology by the defendant that potentially infringed upon the original innovation of 'Med Dispenser'.

Issues

1. Does the High Court possess the jurisdiction to hear this case concerning intellectual property rights, specifically copyright, and issue injunctions accordingly?
2. Should a temporary injunction be granted to the plaintiff to prevent potential infringement on the 'Med Dispenser' innovation by the defendant?

Rule

According to Owners of Motor Vessel 'Lillian S' v Caltex Oil (Kenya) Ltd (1989), the essence of jurisdiction is foundational to any legal proceedings; lacking jurisdiction means no further legal process can be validly conducted. Furthermore, Section 106 of the Industrial Property Act stipulates the Industrial Property Tribunal's role in matters involving patents, utility models, or industrial designs, but does not explicitly encompass copyrights, which may indicate a different procedural route for copyright disputes.

The criteria for an injunction as established in Geila v Cassman & Company Ltd (1973) necessitate that the applicant demonstrate a prima facie case with probable success, potential for irreparable harm if the injunction is not granted, and that the balance of convenience is in their favour.

Analysis

Issue of Jurisdiction
The High Court correctly identified its jurisdiction over copyright disputes, as delineated under the Copyright Act, which is distinct from the matters under the purview of the Industrial Property Tribunal as defined by the Industrial Property Act. This legal interpretation ensures that copyright holders can seek redress directly through the judicial system rather than being confined to the tribunal structured primarily for patent-related issues.

Assessment for Injunction
While the plaintiff established copyright protection for the concept paper under the Copyright Act, the absence of compelling oral evidence and rigorous cross-examination weakened the prima facie case. The court found it challenging to conclusively determine the extent of similarity and potential infringement between 'Med Dispenser' and the 'Safaricom Health Presence' application. Consequently, the court could not ascertain a high probability of success in the plaintiff's claims, affecting the decision on the injunction. The plaintiff's inability to concretely demonstrate how the balance of convenience favoured granting the injunction further impacted the court's decision.

Conclusion

The High Court's decision to assert its jurisdiction in this copyright dispute while denying the temporary injunction illustrates the complexities involved in intellectual property litigation, particularly where evidence and clear demonstration of potential success are pivotal. The decision also reinforces the necessity for copyright holders to prepare robustly substantiated cases when seeking interim reliefs such as injunctions.

Ruling available here.