Kenya has had two High Court rulings in two separate cases in the space of two weeks, both dealing with copyright infringement in television shows. In this blogpost, these rulings will be analysed bearing in mind that both these cases are still on-going.
In the case of Oracle Productions Limited v Decapture Limited & 3 others [2014] eKLR (the Magnate case), Oracle claimed Decapture and others have infringed the latter’s copyright in its reality game show. Oracle is the copyright owner of a literary work describing a reality game show styled “Young Entrepreneurs” and registered with the Kenya Copyright Board as KCB 0831. Decapture is the copyright owner of a literary work describing a reality game show titled “The CFC Stanbic Bank Magnate” (the Magnate show) and registered with the Kenya Copyright Board.
Oracle issued a notice to Decapture and others to produce at the trial the audio visual production of all the broadcast episodes of the Magnate show. Decapture did not comply with Oracle’s notice, necessitating the latter to file a notice of motion to compel Decapture to make the discovery on oath. As many may know, pre-trial discovery is provided in the law of civil procedure so as to allow litigants to be furnished with relevant and necessary documentary material before the trial so as to assist them in appraising the strength or weakness of their relevant cases, thereby expediting the hearing and reducing costs of litigation.
Decapture and the other defendants opposed the notice to produce on three main grounds, namely:
1) They should not be compelled to hand over its intellectual property to its competitor.
2) They has incurred a lot of expenses and cannot therefore provide the materials sought for free.
3) The materials sought are unnecessary and irrelevant since no copyright subsists in the plaintiff’s concept or idea.
The Court allowed Oracle’s application to compel discovery and stated as follows:

From the competing claims disclosed in the pleadings, the plaintiff [Oracle] obviously requires full discovery of the disputed materials to get a fair trial. I thus find the materials sought on discovery are relevant and necessary. The materials have been broadcast and I am at a loss how the intellectual property of the 1st defendant [Decapture] will be lost merely by discovery. The proposal by the 1st defendant [Decapture] to only play the productions in court on the date of the trial would ambush the plaintiff [Oracle]. It would leave the plaintiff holding the short end of the stick. The question of costs of making the copies is not beyond recompense if the 1st defendant [Decapture] or any other defendant prevails at the trial. In a synopsis, the defendant [Decapture] will not suffer prejudice not compensable in costs. The rights of the plaintiff [Oracle] to discovery outweigh that inconvenience.

This blogger is not in total agreement with this ruling in the Magnate case. It is disappointing that the court did not stop to interrogate the relevance and necessity of fixations of broadcasts being produced in a case where the alleged infringement relates to literary works. The ruling ought to have been clear on the purpose of the broadcasts in establishing copyright infringement of Oracle’s literary work otherwise the discovery would amount to a fishing expedition, at best.
In the case of Nonny Gathoni Njenga & another vs Catherine Masitsa & another [2014] eKLR (the Wedding Show case), Nonny finds herself in a similar position as Oracle in the Magnate show case. Nonny is the copyright owner of a literary work describing a wedding show styled “The Baileys Wedding Show with Nonny Gathoni”. Catherine is the copyright owner of a literary work describing a wedding show titled “Samantha’s Bridal Show”.
Nonny successfully applied to court for an order restraining Catherine from infringing in any way on Nonny’s copyright in the literary work. Recently, Nonny was back in court claiming that despite the previous order, Catherine went ahead to infringe Nonny’s said copyrighted literary work in violation of the Court’s Orders. Therefore Nonny claimed that Catherine should be committed to civil jail for contempt of court. According to Nonny, the alleged infringement took place when Catherine caused the broadcast of Samantha’s Bridal Show.
In support of its case alleging copyright infringement, Nonny produced three (3) DVDs “taken not from one show but a series of shows over a period of time”. In reply, Catherine questioned the admissibility of the DVDs arguing that they were secured illegally and that they “constituted an infringement of property rights.”
Although the court ruled in favour of Catherine, the following passage in ruling is significant:

In light of the above analysis and having already stated above that the DVDs attached by the Plaintiffs are not accompanied by a Certificate as required under the evidence Act, it therefore follows that the said DVDs are inadmissible as evidence.
However, in the interest of justice, it is my view that the Plaintiffs are at liberty to produce such certificate for the admissibility of the said evidence. When that is done, the Court will be able to examine the evidence and evaluate the probative value of the said DVDs as well as the authenticity. The Respondent has alleged that the DVDs were obtained illegally, however that cannot be ascertained at this stage until the Certificate is filed and the Court is able to determine the source of the DVDs.

This blogger is not in total agreement with this ruling in the Wedding show case. First and foremost, the court appears to have made the same mistake as in the Magnate case ruling. The court in the Wedding show case appears to have accepted as a matter of both fact and law that the fixation of broadcasts by Catherine serves as automatic proof of copyright infringement in Nonny’s literary work. However, this blogger believes that the court will have an opportunity to redeem itself when it delves into the probative value of the DVDs. Secondly, there is an interesting issue that arises in the Wedding show case namely, whether KTN can file a counterclaim for copyright infringement as a result of the unauthorized fixation of its broadcasts by Nonny.
All in all, this blogger will be following the developments in these two cases closely.