SYNCHRONIZATION LICENSING AND THE ROLE OF COLLECTIVE MANAGEMENT ORGANIZATIONS
- CHEBET KOROS |
- June 2, 2022 |
“Ayee rhumba imetamba, Sauti Sol in a di area kumechacha …”, is part of the lyrics to Sauti Sol’s song ‘Extravaganza’, which recently stirred up debate on copyright law in Kenya. Through a public notice, the award-winning music band claimed that their copyright, right to property, and freedom of association were infringed by the Azimio la Umoja presidential candidate, former Prime Minster Hon. Raila Odinga. They aver that this infringement occurred when the presidential candidate used a part of their song ‘Extravaganza’ as a soundtrack to the video announcing his running mate. The said video had been posted on the presidential candidate’s social media platforms.
This notice elicited a variety of reactions and debates from the public, the Music Copyright Society (MCSK), and the Kenya Copyright Board of Kenya (KECOBO). It also led to Sauti Sol losing approximately 2,000 YouTube subscribers, dropping from 905,000 to 903,000 subscribers, however, this has now risen to 909,000 subscribers. The CEO of MCSK communicated to the public that the society had issued the Raila Odinga presidential campaign a licence, having paid KShs. 562,500 as licensing fees.
The MCSK CEO further stated, “… the license issued covers both performing, mechanical rights and synchronization.” In response, KECOBO stated that collective management organizations (CMOs) generally issue public performance licenses for sound recordings and that, “the use of a sound recording as soundtrack with visual images in a film, video … is NOT part of those authorised by a Public Performance License.” Among the key issues arising from these opposing views is what is a synchronization right and what role does a CMO play concerning licensing this right? To understand the issues raised here, it is important to appreciate the different rights in music.
Copyrights in music
Music will often have copyright subsisting in two types of work: copyright in the musical composition of a song and copyright in the sound recording. The author, and original copyright owner, in a musical work, refers to “the person by whom the arrangements necessary for the creation of the work were undertaken”.1 This is either the songwriter or the music publisher. Whereas the author of a sound recording refers to, “a person by whom the arrangements for the making of the sound recording were made”2. This is either the record producer or record label.
A sound recording is defined as an exclusively aural fixation of the sounds of a performance, excluding the soundtrack of an audio-visual.3 The copyright subsisting in these works provides exclusive rights to the author. An owner of a copyright may assign or license out their rights. A Collective Management Organization (CMO) may be authorized to administrate the rights of a copyright owner.
Authorisation must be sought for the use of someone’s intellectual property. A licence permitting the use of a copyright may be limited to certain acts, duration, or a certain geographical area.4 A synchronization licence, also known as a sync-licence, permits the inclusion of musical works in audio-visual works.5 A synchronization license is issued by the owner of the musical composition, or their authorised representative.
A copyright owner will retain their moral right, independent of economic rights transferred. This includes the right to “object to any distortion, mutilation or other modification of or other derogatory action in relation to, the said work which would be prejudicial to his honour or reputation.”6 A synchronization right is therefore linked to an author’s moral right. A musical work used as a soundtrack would potentially affect the author’s moral rights, as the musical work may appear in a different setting that could alter the original work’s character.7 Hence, the owner of a musical composition must authorize such use through a synchronization licence.
The Role of CMOs
What then is the CMO’s role concerning synchronization rights? The MCSK CEO stated that MCSK members, “… have assigned their rights to MCSK to administer copyright on their behalf.” Article 7 of MCSK’s articles of association provide that every member, either upon admission or as requested, shall assign to the society all rights to be administered on their behalf. In the case of writer members only, this includes “the film synchronization right in every work composed or written by the Member primarily for the purpose of being included in the sound-track of a particular cinematograph film or films in contemplation when such work was commissioned”8
An assignment is defined as the legal transfer of ownership of a right. This legal definition is not to be confused with the non-legal definition of ‘assign’ which is to allocate responsibility. Once an owner of a copyright assigns their right, the new owner is free to use the right as they please and do not act on behalf of the previous owner. The previous owner, therefore, ceases to hold a claim to the right. Copyright that is transferred by an assignment must be in writing, signed by the assignor, lodged at KECOBO, entered into the Assignment Register, and a certificate of recordal issued to the applicant.
In our previous blog posts here and here, we have discussed the legal framework of CMOs. CMOs are licensed and mandated by KECOBO to negotiate, collect, and distribute royalties, and issue licenses for the use of copyrighted works on behalf of copyright owners. In the present case, Sauti Sol is a member of MCSK who jointly issued a KAMP-PRISK-MCSK licence on the 11th of May 2022 that permits the Raila Odinga presidential campaign to communicate to the public sound recordings, audio visual and musical works. The licence terms, however, do not expressly issue the right to synchronize original musical works with other audio-visual work. It remains unclear whether the CMOs are authorised by their members to negotiate and issue out synchronization licenses.
It is, however, argued that the use of synchronization rights is deemed as an exception to the traditional collective administration of rights.9 Unless the author of a musical work authorises a CMO to administer a synchronization licence, anyone interested in synchronizing a musical work in an audio-visual work must obtain the rights directly from the author or owner of the musical composition.10 The reason for this is for the author or right-holder to rightly determine and monetize the value of the musical work in line with the nature of the audio visual work.11 This argument is noteworthy in the present case of ‘Extravaganza’.
Sauti Sol has a right to institute a civil suit against anyone who unlawfully or without authorisation uses their copyrighted works. In the present case, however, among the key issues to be decided by a court are whether Sauti Sol has assigned their synchronization right to be administered by the CMOs, whether the ‘Extravaganza’ song was composed primarily for the inclusion in a soundtrack, and whether the joint license by the CMOs covers the licensing of synchronization rights.
1 Copyright Act, 2001, section 2 (1)
4 Copyright Act, 2001, section 33 (2)
5 Gervais, D. (Ed.). (2015). Collective management of copyright and related rights. Kluwer Law International BV, 57
6 Copyright Act, 2001, section 32
7 World Intellectual Property Organization. (2004). WIPO Guide on the Licensing of Copyright and Related Rights (No. 897). WIPO, 139
8 Memorandum and Articles of Association of Music Copyright Society of Kenya. (As amended on 5th day of July 2012), Article 7 (b) (iii)
9 World Intellectual Property Organization. (2004). WIPO Guide on the Licensing of Copyright and Related Rights (No. 897). WIPO, 277