By Caroline Wanjiru

This post forms part 2 of our series on the Intellectual Property considerations in the Copyright Amendment Act. The IT considerations, focusing on digital rights will be addressed in a follow up series.

ISPs and Take Down Notices

Section 35B covers take down notices, their form, content, addressees etc. A take down notice is a request to an ISP by a copyright holder (complainant) to remove infringing content.

1. The take down notice shall:

1. Be in writing and addressed to the ISP or their agent.
2. Contain the name and address of the complainant.
3. Signed by or for the complainant.
4. Contain specific details of the copyrighted works subject of infringement or which is to be removed.
5. Identify the rights being infringed, for instance the broadcast, production rights etc.
6. Set out the details of the content to be taken down and the location of this content.
7. Be accompanied by a sworn statement attesting to the ownership of the content, validity of the rights under e) above, good faith on the complainant and the efforts (albeit unsuccessful attempts) made to the entities responsible for making the content available remove the content; and
8. be copied to the Board Communication Authority and the recognized ISP umbrella body.

Comment: Conspicuously missing is a requirement to include the alleged infringer (who is the ISP subscriber hence the addressing of the notice to the ISP) in the notice to take down. Such inclusion would notify and provide an alleged infringer of the notice and the option to ‘challenge’ a take-down notice issued to their ISP. There exists a relationship between the ISP and their subscribers contractual or otherwise. The obligation to notify the subscriber, if any, shifts to the ISP (see below). It is not clear as to why such a requirement would be excluded yet the requirement of a sworn statement by the complainant would be presumptive that they have attempted to reach the alleged infringer to remove the infringing content. Would the subscriber not be entitled to demand to be heard before the notice is effected? If yes, at what point would they be heard yet the notice is to be effected within 48 hours? Article 47 of the Constitution of Kenya provides that every person has a right to fair administrative action, this right includes the right to be heard.

1. A take down notice will be deemed delivered
   1. Next business day following physical delivery at an ISP’s registered office.
   2. 2 days after the day post if by registered post.
   3. Immediately if sent by electronically to a designated ISP address.

Comment: This provision has serious implication for the ISPs as it dictates when the 48 hours of compliance starts running. Where an ISP has provided a designated address, time starts running immediately a complainant sends it. It is not clear what would happen if there is delivery failure, if it is sent on a day that the ISP is closed for business or is even intercepted by a third party. While this blogger appreciates the fact that electronic transmission is instant, she acknowledges that there are circumstances that may interfere with the ISPs ability to receive the electronic notification. Legislating on time of delivery elevates time to a statutory requirement which carries weighty consequences. Time is truly of essence. However, having such a statutory requirement is an open invitation to breach. This is best left to the industry to regulate. The Board in charge of regulating ISPs may issue policy directions on the same therefore introducing implementation flexibilities.

1. An ISP shall upon receipt of a valid take down notice, notify the person responsible for making the infringing content available and provide them with a copy as soon as is practicable.

Comment: This provision is vague, yet its content creates a duty for the ISP. The mandatory requirement, albeit on their cost, for the ISP to find or establish mechanisms within which to ‘notify’ an alleged infringer that they have received a takedown notice from the complainant. It’s unclear if the notification should be in the same manner as received from the complainant. For instance, if the takedown notice is received electronically, can the ISP notify the alleged infringer by mail? The latter would mean that time is substantially altered. Yet it is a possibility.

The notification should be immediate or as soon as is practicable. In light of subsection 5 which mandates an ISP to take down content within 48 hours, what is immediate? What takes precedence? Taking down the content or serving the notice on an alleged infringer? If this should be as soon as practicable, whose practicality is it? The complainant whose interest is to have the content taken down; the ISP whose primary interest would be first to serve their clients, must act within 48hours and disable access to the content; or the alleged infringer whose interest is to have the content online at all time and who may be benefiting economically from the content, who may require ‘reasonable’ time to file a counter notice? Lastly, if it is the ISP’s practicability, can they take down the content i.e. comply with the law and then serve notice later? The option of having the notice sent ‘as soon as is practical is ambiguous capable of more than one interpretation.

The most important question to ask is, what is the purpose of this notification? Presumably, it is to enable an alleged infringer to respond or file a counter notice failure to which an ISP can proceed and take down the content. Should this be the intended purpose, wouldn’t it be more practical for the complainant to notify the alleged infringer first before requesting the ISP to take down the content? Section 35B (2) (f) and (g), envisions a situation where the complainant would have alleged infringer’s the details including the address and made an effort to have the content pulled down. In somewhat a plot twist, the duty of notifying the alleged infringer of the request to take down shifts.

Related Cost: Can an ISP charge for receiving the notices? On notifying the content holders? Of receiving the counter notice and notifying the complainant? Of acting as a registry or regulator for receiving and serving the notices? What happens if their cost, as private entities, is prohibitive?

On the intention of this provision, we ask are these provisions implementable or practical or are they meant to punish the ISPs? Why shift the burden to the ISP? Undoubtedly, the ISP would expend resources in notifying an alleged infringer on behalf of the complainant. Why should they incur such costs on behalf of the copyright owners or the industry yet they are not a regulator? This is an unnecessary burden on the ISP. It opens an avenue that encourages ISPs to look for alternatives not to incur these costs. Such will always be to the disadvantage of the copyright holders. Industry support is necessary and the regulator should be sufficiently empowered to handle industry dynamics without shifting their duties to the players.

1. An ISP, shall within 48 business hours of receiving the take down notice, disable access to the material unless they receive a counter notice with the same details as a take-down notice and contesting the take down notice.

Comment: The reference to business hour is relevant as it determines whether or not an ISP is in breach of the law and therefore liable or not. The provision requires compliance within 48 hours of receipt of a takedown notice. There is no definition, either in this provision or in the whole Act, of what is or what would amount to a business hour. Further the Interpretation and General Provisions Act does not have a definition of a ‘business hour’. This provision leaves the phrase ‘business hour’ open for subjective interpretation. For instance, whose business hour is to be considered, the ISP? Complainant? ISP client? The government? The regulator? Can a party decide to unilaterally change their business hour to fit their or defeat the purpose herein?

Further, the provision is silent on what happens when the ISP receives a counter-notice. Does it send it also to the complainant? If this was the intention, why not say the provisions of Subsection 4 shall apply mutatis mutandis in respect to counter notices? Back to the ISP, does it sit and await the parties to take relevant action? Does it forwards the notice to the complainant-as proof of the reasonable ground as to why not to take the material down? Does this make the ISP become a registry of some sorts to receive and address such complaints? Can this justify a decision to charge a fee?

1. An ISP which after receiving a takedown notice and without valid justification, fails to take down or disable access shall be fully liable for any loss or damages resulting from non-compliance.

Comment: A story is told of a farmer who had a donkey, a carrot and a stick. In the story, the farmer employ either the tactic of hitting the donkey with the stick-inflicting pain to make it move. In other instances, the farmer would put the carrot in front of the donkey-incentive to achieve the same objective of movement. In this story it is presumed that in the absence of these two, the donkey would not move. In the current state, the ISPs find themselves in the position akin to that of the donkey. This section, stipulates what happens to an ISP which does not takedown or disable material alleged to be infringing. The provision in this bloggers opinion, is an incentive for the ISPs to avoid trouble. Just take down the material and leave the parties to deal with the substance of the takedowns. This way an ISP avoids liability 100%. Imposing the 100% liability on the ISPs becomes the stick which inflicts pain in order to achieve movement.

The only justification an ISP has is where they have received a valid counter-notice as per S. 35 (2). Without it, the ISP has to take down the content or take 100% liability. It would be unreasonable to expect an ISP to conduct due diligence on any notice in the circumstances’ of the provisions herein. It is in their best interests to simply comply to avoid the liability imposed by statute.

1. An ISP contravening the provisions of subsection 4 shall have committed an offence and upon conviction, be liable to a fine of Kes 500,000 or imprisonment to a term of 5 years or both.

Comment: Subsection 4 requires the ISP to notify an alleged infringer of receipt of a take-down notice as soon as is practicable. The current subsection creates criminal liability based on an action that is to be done as soon as is practicable. In contracts, reference to ‘as soon as is practicable’ is acceptable and is often interpreted depending on the prevailing circumstances or on a case by case basis. This is not the position for actions with criminal implication. Such provisions must be clear and only capable of one interpretation. The Courts have time and again upheld this principle with the justification that such provisions should clear and precise enough to enable people to conform their conduct to their dictates. Justice Mumbi Ngugi in Geoffrey Andare v Attorney General & 2 others [2016] eKLR in holding that the then Section 29 of the Kenya Information and Communication Act was unconstitutional stated as follows:

1. It is my view, therefore, that the provisions of section 29 are so vague, broad and uncertain that individuals do not know the parameters within which their communication falls, and the provisions therefore offend against the rule requiring certainty in legislation that creates criminal offences. In making this finding, I am guided by the words of the Court in the case of Sunday Times vs United Kingdom Application No 65 38/74 para 49, in which the European Court of Human Rights stated as follows:“(A) norm cannot be regarded as “law” unless it is formulated with sufficient precision to enable the citizen to regulate his conduct: he must be able- if need be with appropriate advice- to foresee, to a degree that is reasonable in the circumstances, the consequences which a given situation may entail.”

In addition, this subsection creates a criminal liability without the accompanying requirement of mens rea, the mental part or the criminal intention to commit the crime, on the part of the ISP. There are offences which do not require criminal intention and these are the strict liability offences such as driving a faulty car. This is the impact of the current provision on the ISPs.

1. Any person who falsely or maliciously lodges a takedown notice or a counter notice under this section commits an offence and shall, upon conviction, be liable to a fine not exceeding five hundred thousand shillings or to imprisonment for a term not exceeding five years, or to both.

Comment: This is for the complainants. It is an offence to maliciously or falsely lodge a notice or a counter notice. The fine for doing so is a partly Kes 500,000 or a prison term of 5 years or both.

1. A person responsible for such misrepresentation under subsection (7) shall, in addition to the penalty provided under that subsection, be liable for any damages resulting from such false or malicious misrepresentation.

Comment: This provision is compared to the provisions of Section 35 (6) where an ISP shall bear the full liability of loss or damage arising out of failure to act by taking down materials after receiving a takedown notice. Whereas the argument here may be about semantics, they language used communicates the intention of the legislator while enacting the law. Subsection 9 imposes additional liability on a complainant who issues a malicious or falsely takes lodges a takedown notice. Such complainant shall be liable for any damages arising out of such actions. It is therefore possible that a complainant’s damages may be assessed at anything less than 100%. This possibility is a disparity noting that the statute has specifically apportioned liability in the case of the ISP who are to bear full liability. In instances where a complainant is to shoulder less than 100% liability, who will be the party to bear the other portion? Can we speculate and say it may be the ISP for taking down the materials while relying on a false takedown notice? It is this bloggers position that reference to ‘full liability’ is not the same as ‘any liability’ especially in the context of a statute.

1. An ISP shall not be liable for wrongful takedown in response to a valid takedown notice.

Comment: The ISP has to ensure that the provisions of S. 35 (2) are adhered to for them to exonerate themselves from liability.

In conclusion, the amendment section 35 of the Copyright Act brings on board third parties who are paramount in enforcement of copyright especially in the digital arena. However, apportionment of liability and obligations should be in such a way as not to burden one party. The duties of the regulators including the Communication Authority and the Kenya Copyright Board should not be left to private entities even when such entities have the resources to do so. This risks creating infallible monopolies and defeating competition altogether.

As promised, we shall be back with a post discussing the digital rights under the Amended Act.