In today’s digital age, when you call someone instead of the usual ringing tone, you may hear a personalised audio. This audio may be a snippet of a song, a funny audio, or a spoken bible verse.¹ These auditory companions are known as caller ring back tones. The audio files are subject to copyright protection, which gives the author the economic right to commercially exploit their work as well as the moral right to be attributed as the creator of the work. The provision of ring back tones has led to copyright infringement issues, with authors claiming infringement.²

This blog delves into copyright issues associated with the provision of ring back tones, the contracts that telecommunication providers enter for this service and the ramifications of inadequate due diligence, drawing insights from a recent judgement by the Ugandan High Court.³

Copyright Protection in ring back tones.

Copyright is a legal and intellectual property right which gives creators control over how their work is used and shared.⁴ Copyright protects expressions such as music, art or even software.⁵ This protection encourages creators, allowing them to benefit from their creations for a specified period. In Uganda, sound recordings are protected for fifty years starting from the date when the work is made publicly available.⁶ Whereas in Kenya, it’s fifty years after the end of the year of which the recording was made.⁷

The Copyright Act of both Kenya and Uganda mandates that authors of the songs that are used as ring back tones must consent to the use of their work and be adequately compensated.⁸ The typical copyright issues that arise are copyright infringement cases where the author of a sound recording used as a ring back tone argues that their work has been uploaded without their consent.⁹ The defendants in the suit are usually the telecommunications provider and the contracting party that provides said content, who enter into a content provision agreement. A content provision agreement, particularly in the context of ring back tones, is a legal contract between a content provider and a service provider. In this agreement, the content provider grants the service provider the rights to use and distribute their copyrighted content, such as music, sound recordings, or other audiovisual materials, as ring back tones to the service provider’s subscribers.¹⁰

Within these agreements, there is often an indemnification clause.¹¹ This clause typically states that the content provider will indemnify or compensate the service provider for any losses, damages, liabilities, or legal costs incurred because of any claims or lawsuits arising from the use of the content provided by the content provider.¹²In simpler terms, the indemnification clause acts as a form of protection for the service provider, ensuring that they are not held financially responsible for any legal issues that may arise from using the content provided by the content provider. Instead, the content provider assumes the responsibility and covers any expenses or damages incurred by the service provider due to legal claims related to the content provided.

Public or Private Performance?

A public performance is when a copyrighted work is presented or played in a place open to the public or where a substantial number of people outside a normal circle of family and friends can experience it.¹³ In contrast, a private performance occurs when copyrighted work is shown in a non-public setting.¹⁴ The audience is limited to a small, private group of individuals such as family and friends. Listening to music at home, playing a movie in a private setting are instances of private performances.¹⁵

Ring back tones involve the playback of copyrighted music while they wait for the recipient to answer.¹⁶ Despite the personal nature of ring back tones, the provision of these tones constitutes a public performance because it involves transmitting copyrighted material to multiple callers. Therefore, without proper authorization or license from the copyright holders, providing ring back tones without permission violates the exclusive rights of the copyright owners. This results in lawsuits demanding compensation for unauthorized use of copyrighted material.

The High Court of Kenya in David Kasika v Music Copyright Society of Kenya Limited ruled that ring back caller tones provided by Safaricom were public performances.¹⁷ The reasoning was that though downloads and transmission of the tones occurred between individuals, the repeated transmission of the same work to multiple people amounted to a public performance.

The next section delves into the case of Garfield Spencer v Airtel Uganda and 2 others.¹⁸ In this case, Airtel Uganda was found liable for copyright infringement due to the unauthorized use of copyrighted work on the Airtel Hello Tunes platform. Moreover, the defence raised by defendants, based on indemnification through contract, was rejected.

Garfield Spencer v Airtel Uganda & 2 Others

Garfield Spencer, also known by his stage name Konshens (hereinafter the plaintiff), filed a copyright infringement lawsuit against Airtel Uganda and two other companies for using and financially benefitting from illegal use of his copyright. The plaintiff averred that Airtel Uganda (1^st defendant); Onmobile Global Limited (2^nd defendant) and Mtech Limited (3^rd defendant) infringed the copyright in his songs: Simple Song, Gyal a Bubble, So Mitan, Stop sign, Jamaican Dance, Konshens Jazz Version, No Retreat and Jah Love Me.

The Plaintiff averred that his eight songs were made available on Airtel’s Hello Tunes platforms. The songs were downloaded by users for a fee of UGX 600/= per download. The plaintiff sought a declaration that the defendants had committed copyright infringement, as well as an order for the account, general and exemplary damages.¹⁹Airtel Uganda raised a defence of indemnification. The company argued that under a signed content provision agreement between it and the 2^nd defendant, the responsibility and liability of obtaining the necessary authorisations and permission to use and distribute content lied with the 2^nd defendant. Airtel Uganda argued that it only allowed the 2^nd defendant to access its subscribers and subject to an indemnification clause under the contract it was guaranteed that the necessary permissions were obtained.²⁰

In similar fashion the 2^nd defendant raised the same defence, claiming the 3^rd defendant had guaranteed that the necessary permissions were obtained under an indemnification clause in a contract signed between them.²¹The 3^rd defendant denied liability claiming that under the content provision agreement between it and the 2^nd defendant, they did not supply any of the plaintiff’s songs.²²The primary issues were firstly whether the defendants violated the plaintiff’s copyright and secondly whether the defense of indemnity raised by the defendants held merit.²³

It was not disputed that the plaintiff was the author and composer of the suit songs. The High Court reasoned that, as the author, the plaintiff had the exclusive right to authorize other parties to sell or commercially exploit his copyright.²⁴ The High Court held that the 1^st and 2^nd defendants committed copyright infringement by distributing the songs without a valid transfer, assignment or authorisation contrary to Section 46 of the Copyright and Neighbouring Rights Act.²⁵

The 1^st defendant contended that under the content provision agreement, the 2^nd defendant had guaranteed and demonstrated its authorisations to provide the plaintiff’s songs. Upon screening of the agreement by the High Court it was found that the plaintiff’s eight songs were not included in the catalogue. The High Court highlighted inadequate due diligence by Airtel Uganda in reviewing the contract. Consequently, the High Court ruled that the defence of indemnification was not valid. Airtel Uganda was held liable for secondary copyright infringement for enabling the 2^nd defendant to commit copyright infringement on its platform.²⁶

Similarly, the 2^nd defendant claimed indemnity as per the content provision agreement with the 3^rd defendant. However, upon examination of the contract, none of the plaintiff’s songs were included in the catalogue. The defence was held as invalid.²⁷The High Court held both the 1^st and 2^nd defendants to be jointly and severally liable for the copyright infringement and granted both general and exemplary damages to the plaintiff.²⁸

In summation, the case is an illustration of how content is provided to users on digital platforms for the purpose of caller ringtones. In this case content was sourced through intermediaries who represented themselves as having the required authorizations and permissions. It is important for contracting parties to scrutinize and demand documentary evidence to verify permissions have been obtained, this is shown by the court’s instance of conducting due diligence as parties can still be held vicariously liable for copyright infringement done by another.

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