Suppose an employee develops a work eligible for copyright- could be literary works, musical works, artistic works, audio-visual works, sound recordings or broadcasts, who owns it? The employer or the employee?  Kenyan law provides as follows:

Section 31, Copyright Act:
Copyright conferred by sections 23 and 24 shall vest initially in the author:
Provided that where a work
a.) Is commissioned by a person who is not the author’s employer under a contract of service; or
b.) Not having been so commissioned, is made in the course of the author’s employment under a contract of service,
the copyright shall be deemed to be transferred to the person who commissioned the work or the author’s employer, subject to any agreement between the parties excluding or limiting the transfer.

This section, on the face of it, suggests that labour pains, quite literally- employees will toil in creating works which may eventually belong to their employers in the absence of an agreement to the contrary. The plight of employees in these circumstances is not new. See Samson Ngengi v Kenya Revenue Authority in which Kenyans raised an uproar after KRA received a number of accolades for an invention of one of its employees.

However, determining what constitutes a work for hire is not as an easy subject- I will look into the case of Riara Group of Schools v Lucas Kamau.

In brief, Lucas Kamau was employed under a contract of service as head of computer studies department of Riara Group of Schools. While in employment as a teacher and head of department, he developed a computer software known as ‘digital genius’ for use as a teaching aid and/or revision material by the school and registered copyright in his name.

According to the plaintiff, Lucas developed the software within the scope of his contract of service as well as used the school’s resources to develop it- official working hours spent in developing the software, equipment and machinery including computer hardware and electricity, user testing was done on pupils of the school and content of the software was obtained in consultation with other teachers of the school. The plaintiff alleged that Lucas Kamau infringed its copyright in the software by selling it to third parties including parents of the school’s pupils and thus prayed for a permanent injunction pending hearing and determination of the case.

In reply, the defendant explained that he worked on the software during his free time and on weekends and used a modem in which he had invested heavily to gain internet access. He further said that to develop content, he used past KCPE papers, video clips and had consultations with his teacher friends from schools in Nairobi and Kiambu.

The judge concluded:

At this point really it is the defendant’s word against the plaintiff’s. It is the defendant who came up with the computer program and it is only believable that he is the one seized with the information of how he came up with the said program. In addition the copyright to the computer program is registered in the name of the defendant. It is upon the plaintiff to prove otherwise and give evidence to the effect that the development of the computer program was part of the defendant’s work under his contract of service and that indeed he developed the same in the course of his employment.

With that, the permanent injunction was not granted.

In my commentary, I note the following:
That the burden of proof lies squarely on the party that alleges infringement. It is up to the plaintiff, to prove this and in doing so, to prove that the computer software belongs to them by virtue of a contract of service and not a contract for services (independent contractors). Three issues here- proof that the defendant is an employee of the plaintiff under a contract of service, that the software was developed within the scope of that contract and that the employee has committed any of the infringing acts under section 35 of the Copyright Act.

While proving that the plaintiff is an employee may be through production of a contract to that effect, proving that the software was developed within the scope of employment requires:

• Evidence that it is within the duties of the employee.
• Evidence that the work was developed using resources of the employer.
• That the work was developed within working hours.
• Absence of an agreement to the effect that works eligible for copyright belong to employees.

In Riara Group of Schools v Lucas Kamau, the School Director appeared to have acquiesced by approaching the defendant for a partnership and acknowledging the defendant’s work as belonging to himself.To later turn around events and claim ownership of the software after consultations with legal counsel, is a show that many employers do not understand the law. Was this a case of estoppel by conduct? This blogger will keep tabs on the case from the court’s analysis of the issues raised to its eventual judgment.