A pronouncement on image rights in Uganda – finally.

Following in the heels of Al Hajji Nasser Sebagala versus MTN, H.C.C.S No. 283 of 2012 (see here) and Agaitano versus Uganda Baati, H.C.C.S No. 298 of 2012 (see here), the High Court has come out in Asiege v. Opportunity Bank (U) Ltd & Maad Ltd H.C.C.S No. 756 of 2013 (see here), to set a precedent on image rights in Uganda, carefully steering away from the law of Copyright.

In the Sebagala case of 2012, the plaintiff sued MTN claiming that the defendant had used his voice in creating call/ring tunes without his authorization. Although it was apparent that it was his voice on the call tunes, as Justice Madrama rightly held, the Plaintiff did not own copyright to the creativity. This is because he was not the author of the call tunes. Nonetheless, the case left ordinary folks puzzled as to how different persons can gain from an individual’s personality and still get away with it. In the various classes that I teach copyright law, the issue that resonated with everyone was as to whether Sebagala would have had a better case if he had avoided relying on copyright law and sued for unfair enrichment derived from his image rights. There are no clear legislative provisions that can help one establish a claim in that category of rights. Some have been arguing that celebrities have a better right to their images than ordinary Toms, Dicks and Harrys. Others argue that even a non-celebrity should have the right to stop anyone from using his or her image for personal gain. Agaitano as opposed to Sebagala (a Ugandan celebrity in his own right), is such an ordinary person. He sued his employer, Uganda Baati Ltd, for using his image on their brochures and other promotional material. But, just like Sebagala, he too lost the case because he was not the author of the expression of the work. Agaitano had actually been informed by his employer that they would be taking pictures of staff members for promotional purposes. These two cases clearly spelt out that copyright law and image rights are not necessarily the same thing.

In comes Asege Winnie v. Opportunity Bank (U) Ltd & Another, H.C.C.S No. 756 of 2013. In this case, the matter of image rights in Uganda has been put to rest. Briefly, the plaintiff sued the defendant for using her image in     large promotional billboards, advertising flyers, brochures and calendars that the Bank used in different parts of the country. Her claim was for a breach of her constitutional right to privacy, passing off, misrepresentation and false endorsement, breach of confidence and unjust enrichment in the unauthorized use of her image.

She argued that she had never commissioned or licensed the defendant to use her image on their promotional materials and that the same was obtained without her authorization hence invading her constitutional right to privacy. The Bank denied the Plaintiff’s claim and stated that it obtained her images from the second defendant (a third party in the proceedings) whose professional services had been sought as an advertising company. Maad Limited, on its part, claimed that it lawfully obtained the plaintiff’s photo images from an internet based website known as Shutter Stock Inc as well as from the New Vision Printing and Publishing Company Ltd. The Plaintiff rebutted these arguments by pointing out that the New Vision and Shutter Stock Companies did not acquire any copyright in her image because when the picture was taken, it was for a single usage only and not transferable for recurrent usage.

Justice Henry Adonyo pointed out how the issue of image rights is a grey area in Uganda hence the reliance on common law principles of personality rights. He opined that publicity rights fall under the tort of “passing off” with the notion that every individual should have a right to control how, if at all, his or her “persona” is commercialized by third parties who intend to help propel their sales or visibility based on such product or services. In his wisdom, basing on the common law jurisprudence, Justice Adonyo established three basic elements that have to be present for one to succeed in an action for infringement of image rights:

a)     The Plaintiff must be identifiable.

b)    The defendant’s action was intentional.

c)     The defendant must have acted for the purpose of commercial gain.

In addressing these elements, Justice Adonyo navigated outside of copyright law in stating that the Plaintiff’s claim is not established under the Ugandan copyright Statute but under a common law remedy resulting from the unlawful use of her image.

Relying on evidence adduced during the court proceedings, all three elements were proved to the satisfaction of court. As for the third element, it was also evident that the plaintiff’s image was used by the Bank to promote their so called “Agro Save Account” hence commercial promotion.

Justice Adonyo concluded by asserting that “every individual has a right to his/her personality which extends to the name of the individual and image and has a right to control the use of either.” The Defendant and Third party were thus found to have infringed upon the Plaintiff’s image rights and damages, totaling 150,000,000 (One hundred and fifty million Uganda Shillings) were awarded in her favor. Corporations and individuals will now think twice before unauthorized usage of other people’s images.

Ugandan business persons and the need to respect copyright interests of the local Entertainment Industry.

After a lengthy sabbatical away from Afro-IP pursuing a Doctorate degree in Intellectual Property and Internet Law in the U.S, this Leo returned a few days ago to Uganda. The first welcoming news on the TV screens was a report of the Ugandan Police firing shots in the air in Downtown Kampala as they dispersed a crowd that was wrestling with Copyright Enforcement Officers. The Law Enforcement officers were in the process of arresting an Asian “businessman” that had been in the business of trading in illegally reproduced DVDs. A large crowd gathered and was trying to fight off the police, under the assumption that the arrest was baseless.

It was interesting to see the “businessman” (there go those quotation marks again) clasp onto the iron bars near his store as he resisted arrest. The camera went on to show thousands of DVDs on display in his store featuring Ugandan movies popularly known as Ugawood movies.

As a Country, we probably still have a long way to go in preaching the bad about copyright infringement in the Ugandan circles. It is, however, quite encouraging to see that the Ugandan Copyright Enforcement Police Division is getting a grip of what it means to protect the copyright interests of our emerging Entertainment Industry.

Hollywood, Bollywood and Nollywood have been generating Billions of Dollars for the entertainment industries in the U.S, India and Nigeria respectively. This mainly leans on the fact that the enforcement of the law as well as market support against copyright infringements largely favors these industries (this is not to say that there are no copyright infringements of movies in any of these countries). Ultimately, not only the industry players, but the countries – as a whole – have benefitted economically and socially.

In Uganda, the Copyright and Neighbouring Rights Act of 2006 provides for civil remedies and criminal sanctions against those engaged in the acts of Copyright infringement (see Sections 45, 46 and 47 of the Act). Nonetheless, the Enforcement Police have constantly engaged in battles with those caught in the act of infringing or in possession of infringing products. What makes this interesting is not because the suspects are caught red-handed and try to flee from arrest, but the fact that they always try to resist arrest on the false believe that the arrest is not justified.

Is it the case then that dissemination of the law is still wanting – eight years after enactment, with a countless number of publications, seminars, media programs and so on, that have been passed out to various stakeholders – inclusive of the likes of the Asian “businessman”?

Or is it the case that we should continue fronting the age-old argument that as a Least Developed Country, we can’t afford original DVDs and the best way of appealing to the masses is by dealing in affordable duplicate DVDs? 

What most people do not realize is that we have gone beyond disrespecting foreign works of copyright and are now also killing our own local entertainment industry before it even has the chance to grow effectively. The more we encourage illegal reproduction of Ugawood DVDs, the less profits will accrue to the Entertainment Industry. Ultimately, their incentive for further innovation as well as the financial capital to support more movie productions, will be eroded.

It is therefore only consistency from the Enforcement Police that will eventually crack the illegal practice of DVD copyright infringement in Uganda. More search and arrest operations are necessary to drive the point home that the law is here to stay and what may seem right as a business practice for the common man downtown is not necessarily what is right legally and morally.

Bio-technology developments in Uganda: Should we be jubilating?

There is a new Bill in Uganda called the National Biotechnology and Biosafety Bill that is soon to be discussed in Parliament. The hope is that this Bill, when enacted, will offer guidance in the production of genetically modified crops in Uganda. However, there are mixed concerns over this Bill. Regardless of the fact that the Bill was drafted eight years ago and has undergone various changes, it’s having been introduced into Parliament as a Private members Bill is enough to show that consultations and research on the Bill were not adequate enough. Some view it as an Intellectual property development with on-going R&D in the patenting of life forms and experiments on plant variety. Proponents of the Bill also argue that it is an international requirement for all countries carrying out research on genetically modified organisms to have a regulation in place to guide the practice.

Others are more skeptical and are concerned about the impact this may have on food security and the nature of the relationship amongst Farmers’ co-operative societies – not to mention the health concerns upon consumers of genetically modified crops. In the United States, for instance, there are a number of petitions going around (In States such as Illinois) with demands that producers of genetically modified foods should label them as such to enable consumers exercise a better purchasing option. These petitions are mainly derived from fears over the health-associated risks. The Ugandan Daily Monitor newspaper also reports about the detrimental effect that some genetically engineered products have on farm crops and on soil fertility (See: Ugandan farmers do not need GMOs, By Vivian Asedri – March 1, 2013).

Uganda is generally well endowed with fertile soils and good weather conditions for farming. Nonetheless, there is a lot of rhetoric where genetically modified crops are involved: Rather than push for modification and boosting agricultural production through biotechnological means, wouldn’t farmers be served better through improvements in the transportation system; a supply of fertilizers; and, better farming material? Ugandan Farmers also face bad seasons and poor productions every year. Don’t we therefore envisage cases of unfair competition where farmers with genetically modified products will out-compete organic products in the market? Will consumers be able to tell the difference between these products?  

Looking at this issue in context, biotechnology sprung up from developed economies that are more industrial than agro-based. The likes of U.S big companies, such as Monsato, derive their commercial benefits on the Constitutional mandate to “promote the progress of Science . . . by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries”. It is all purely business to them and the patenting system supports this. Developing countries like Uganda on the other hand are - to a great extent - Agro-based, with a large part of the population depending on subsistence farming. As such, bringing in biotechnological developments in their back yards is likely to ultimately destroy their means of survival.

A new land mark in Ugandan Copyright law

The Uganda Performing Rights Society (UPRS), a Collective Management Organization that oversees the administration of copyrights for its members in Uganda, has cause to smile after a landmark judgment that was recently passed in the Commercial Division of the High Court in Uganda.

UPRS dragged mobile giant MTN to court for refusal to pay performance royalties to UPRS after sponsoring a show by the UB40 in February 2008. By way of a flashback, in 1987 the UB40 artists had assigned all their copyright for purposes of effective management to the Performing Rights Society of United Kingdom (PRS-UK). In the Deed of Assignment, PRS-UK was granted the management of all copyrights worldwide. In January 2006, PRS-UK signed a contract of Reciprocal Representation with UPRS. It was by virtue of this Reciprocal arrangement that UPRS demanded for performance royalties from MTN prior to the UB40 show in February 2008 in Kampala, Uganda.

In its defense, MTN rejected any obligation to obtain a license from UPRS. It argued that the individual members of UB40 reserved the exclusive rights to contract and deal with their copyrights without prior authorization of anybody inclusive of PRS-UK and that the Deed of Assignment did not strip them of this right. It further argued that there was no copyright infringement in this case considering that MTN contracted directly with the individual members of UB40 in organizing the concert which effectively makes UPRS an agent of a disclosed principal.   

The Court took into consideration evidence in testimony from the Senior Corporate Counsel for PRS-UK, Ms. Karen Fishman. She testified to the effect that in becoming members of PRS-UK, musicians effectively assign/transfer their performing rights in their copyrights work throughout the world to PRS-UK. The Collecting Society then has the obligation of enforcing the copyrights on behalf of the members.

In scrutinizing the Deeds of Assignment, Court concluded that the UB40 members had indeed assigned all their performing rights for all parts of the world to PRS-UK making PRS-UK the owner of the assigned rights with power to enforce them. Citing the preamble to the Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS Agreement), the Court further reasoned that the 2006 Copyright legislation in Uganda (particularly sec. 58) was enacted so as to give effect to the guidelines in the TRIPS agreement. As such, the reciprocal agreement between PRS-UK and UPRS effectively conferred the power to enforce the former’s rights to another collecting society in a foreign jurisdiction.

Although UPRS was not able to recover damages due to a technical glitch in its legal maneuvers, the fact that the Commercial Court came out with a pronouncement on the powers of a Collecting Society to demand for royalties in music performances, is a step in the right direction. One of the biggest challenges in the administration and enforcement of copyright work by the UPRS on behalf of its members has always been the inadequate awareness of the limitations and extensions of copyright by persons in the legal profession as well as non-lawyers. The judgment of Uganda Performing Rights Society v. MTN (U) Ltd, Civil Suit No. 287 of 2010, is a landmark in Ugandan copyright jurisprudence in highlighting the avenues music sponsors and organizers have to undertake before staging shows in Uganda and places UPRS at a well-deserved higher pedestal. 

INNOVATIONS: We need to wake up and smell the coffee

Necessity, they say, is the mother of invention. Countries that have made significant strides in their inventions have known this for years. Uganda needs to wake up to this reality. The story in the clip below shows that we are moving forward but there is still much more to be done. Sadly, you don’t get to see much government involvement in encouraging private innovations. We have so much potential as a country rich with traditional knowledge as is depicted in this story. As the International scene continues in its debates about the place of Traditional Knowledge in Intellectual property rights, we as a Nation need to do something about our bright minds and what they know about Traditional Knowledge and innovations. If we don’t wake up soon enough to smell the coffee, someone else will beat us to it.

http://www.monitor.co.ug/News/National/Girl--19--makes-deworming-tablet/-/688334/1702404/-/item/1/-/2aqlb4/-/index.html

Copyright protection in stand-up comedy: Are laughs for free?

It is much easier to make babies laugh than it is to bring grown-ups to laughter. It is even much harder to make a living out of stand-up comedy. Nonetheless, the Ugandan audience in particular has a soft spot for entertainment and has so far been faithful to the stand-up comedy branch of entertainment since it became popular only a few years ago. Even from a Law and Economics perspective, the transaction costs are low for the comedians involved so they attain their efficiency moderately quickly.

As we laugh over these jokes, what comes to the mind of an intellectual property advocate is: what does it take to process these jokes? Considering that copyright law protects the expression and not the idea, we would right away be looking at any written scripts of the jokes before they are relayed on stage as well as recordings of the jokes as they are given. This is the material form that necessitates protection.

However, challenges abide when it comes to tracking ownership through expression. The questions posed are: Whose joke was it in the first place? Is Pablo the author of his jokes or does he pick them from some other source? Originality in composition of jokes is not something that comes about easily for many of the artists in this industry and it is noted that many of them repeat the same jokes over and over again with different audiences. If they cannot successfully lay a claim for originality, then it would be harder still to protect their comedy expressions as Intellectual Property. This is where copyright protection in stand-up comedy loses its effectiveness.

It is also harder to protect stand-up comedy where most of the jokes are concentrated on particular themes. For instance, most themes among Ugandan comedians focus on sex and ethnicity. The originality loses itself somewhere in the process of the expression making it difficult to rely on copyright protection for the joke.

It would be expected that the U.S has a more efficient copyright protection over stand-up comedy which is a very lucrative business but the same challenges towards such protection are evident in this country. Some comedians rely on taking matters under their own hands rather than rely on legal inefficiencies. Comedian George Lopez once confessed to having grabbed fellow comedian Carlos Mencia at the Laugh Factory comedy club, slammed him against a wall and punched him in retaliation for joke-stealing. But is violence or vigilantism the solution?

The Laughs may not be for free, but copyright law has no answers either – at least for now.

My Name, not yours: Concerns over the right to Trademark a name.

A Family Law practitioner shared with me a story about a case he handled some time back. A lady had alleged that her ex-boyfriend was the father of her Son. The ex-boyfriend denied parentage. The Lawyer called for a meeting between members of the lady’s family and the man’s family after which it was agreed that a DNA test would be carried out. A few weeks later, the test results revealed that indeed there was no biological connection between the boy and the man. Naturally the conniving lady had known this all along but had apparently tried to use her son as leverage in getting financial support from the man. She had even given her son the same surname as her ex-boyfriend. The Man, as well as his siblings, was furious that the Woman had even gone as far as having her son baptized with a surname similar to theirs and demanded that she changes the name and abandon use of “their” name. This story is a typical experience for any Family law practitioner but in the world of Intellectual Property it becomes even more intriguing when it comes to discussing the issue of ownership and use of names. When does one have the right to trademark a name?

The question would probably be easier to answer in the western world where most names do not have a cultural significance or origin, but in the African context, particularly in Uganda where surnames are aligned with culture, addressing the issue of owning a name would go as far as that of ownership of culture. As such, I would probably be laughed at if I dragged someone to court to try and stop such person from naming her child KAKOOZA. Much as the name is used to identify me, I have no personal hold over it, so much as to prevent another from using it.

The situation is not so different in the U.S where in October 2012, music celebrities Beyoncé and Jay-Z lost a battle to trademark the name of their daughter Blue Ivy.  Further back, in the case of ETW Corp. v. Jireh Publishing, Inc., when Tiger Woods sought protection over his image rights and name, the court decided that as a general rule, a person’s image or likeness could not function as a trademark. However, in the case of Peaceable Planet, Inc. v. Ty, Inc., the Court stated that what has to be considered is when a name is too common to be appropriable without proof of secondary meaning.

What can be borrowed out of this and taken up as a lesson is that if the name is too unique as to acquire distinctiveness, then it would probably attract protection. This is because it then acquires a secondary meaning in the sense that it would be associated with a source. In any case, in most respects, to have something unique means that there is an element of creativity or innovation, which are strong ingredients in Intellectual property law protection. Trademark protection, in particular, goes with distinctiveness; the ability to distinguish a good or service from another and to associate that good or service with a particular source. Where such distinctiveness has been established within commerce, then protection is warranted.

As such, in the context of the Ugandan surname, the names are as old as culture itself and have no distinctiveness. To call them generic would even be far-fetched. Regardless of how famous a particular name-holder may be, he or she cannot prevent another from using the same name. However, this is not to say that you cannot get protection for use of a name. Ugandan trademark law, as well as in other jurisdictions, protects signs. So if you were to structure your name on a business for goods or services in such a unique way as to generate recognition of source, through say – use of font or other artistic design of the name, the trademark protection would be justified. This is in as long as it goes towards the design of the sign but not the name itself.