IP Case Law library

Facts

The dispute arose when the Plaintiff, an artist and graphic designer, claimed that the Defendant, a large telecommunications company, used his copyrighted artistic designs on scratch-cards without authorization. The Plaintiff's designs, which included unique images and slogans, were allegedly presented in a proposal to the Defendant for potential collaboration. After the proposal was declined, the Plaintiff later observed similar designs being used on the Defendant's scratch-cards.

The Defendant denied all allegations of infringement, asserting that their scratch-card designs were independently created by their in-house designers. They argued that the design elements in question were generic and commonly used in the industry, and any similarity to the Plaintiff's works was purely coincidental. They also claimed that the Plaintiff's designs lacked originality and were not unique enough to warrant copyright protection.

The trial featured detailed testimonies from both parties' design teams. The Plaintiff provided evidence of the design process and initial meetings with the Defendant, while the Defendant showcased their independent creation process to refute claims of copying. Both parties also presented expert witnesses in copyright law.

Issues

1. Whether the Plaintiff had a copyright over the artistic work.
2. Whether the Defendant infringed on the said copyright.
3. What is the measure of damages.

Rule

Section 2(1)(g) of the Copyright Act - an author in relation to a literary, dramatic or artistic work or computer programme which is computer generated means the person by whom the arrangements necessary for the creation were undertaken.

Section 26(1) of the Copyright Act - copyright in a literary, musical or artistic work or audio-visual work shall be the exclusive right to control the doing in Kenya of any of the following acts, namely the reproduction in any material form of the original work or its translation or adaptation, the distribution to the public of the work by way of sale, rental, lease, hire, loan, importation or similar arrangement, and the communication to the public and the broadcasting of the whole work or a substantial part thereof, either in its original form or in any form recognisably derived from the original.

Designers Guild Ltd v Russell Williams - an action for infringement of artistic copyright is not concerned with the appearance of the defendant's work but its derivation. The copyright owner's complaint is that the defendant has copied all or a substantial part of the copyright work; the reproduction may be exact, or it may introduce altered copying or colourable imitation. The first step in an action for infringement of artistic copyright is to identify those features of the defendant's design which the Plaintiff alleges to have been copied from the copyright work. The court undertakes a visual comparison of the two designs, noting the similarities and differences, to judge whether the particular similarities relied on are sufficiently close, numerous or extensive to be more likely to be the result of copying than coincidence, disregarding similarities that are commonplace, unoriginal, or consist of general ideas. If the Plaintiff demonstrates sufficient similarity in the features alleged to have been copied and establishes that the Defendant had prior access to the copyright work, the burden passes to the Defendant to satisfy the judge that, despite the similarities, they did not result from copying.

Halsbury's Laws of England, 14th Edition, Vol 9(2), paragraph 314 - innocent infringement of a copyright is not a defence.

Analysis

Copyright Ownership
The court acknowledged that the Plaintiff utilized significant creativity, skill, and labor in creating the designs, evidenced by documentation and witness testimony, and affirmed that the Plaintiff's designs possessed sufficient originality and creativity to qualify for copyright under Section 2(1)(g) of the Copyright Act.

Infringement Determination
Applying principles from Designers Guild Ltd v Russell Williams, the court conducted a detailed comparison of the contested designs, finding substantial similarities in specific features beyond generic elements commonly found in the industry. The court noted that the Defendant had access to the Plaintiff's designs through earlier meetings, shifting the burden of proof to the Defendant to demonstrate independent creation, which it failed to do convincingly.

Measure of Damages
While the Plaintiff established copyright infringement, the calculation of damages proved problematic due to inconsistent claims and lack of precise documentation regarding potential revenue from the unauthorized use. The court therefore struggled to determine a concrete figure for compensation.

The court's affirmation of the Plaintiff's copyright based on the originality and creative effort involved in producing the works is consistent with Section 2(1)(g) of the Copyright Act, reinforcing that copyright protection is not merely about the novelty of the concept but the expression and effort invested in creating the work. In assessing infringement, the court's focus on derivation and substantial similarity of features, rather than overall appearance, digs into the essence of copyright law, which protects the expression of ideas rather than the ideas themselves. The most complex part of the case was the determination of damages, reflecting a common dilemma in copyright infringement cases: the quantification of losses.

Conclusion

The court declined to order an inquiry into damages or profits, as the Plaintiff had attempted to prove damages unsuccessfully. Instead, nominal damages of Kshs. 100,000/= were awarded to the Plaintiff, with interest accruing from the date of judgement. Additionally, the Defendant was instructed to bear the costs of the suit.

Judgement to be found here.