Intellectual Property Law notes

NOMENCLATURE OF INTELLECTUAL PROPERTY AND TRANSFER OF TECHNOLOGY

Intellectual property law is interested in protecting the product of human mind or the product of creation.
IP is sometimes regarded as protecting the physical embodiment of an otherwise intangible asset.

Manifestations of IP

1. Patents – the certificate that you get from the patent office after you have made an invention.
The relationship that exists between an inventor on one hand or patentee and the patent office,
the estate or society. It is a juridical relationship between an inventor or patent owner on one
hand and on the other hand the patent office or the state or society in general. The inventor is
that person who has brought out a new process or a new invention. A patent owner is the person
who holds the rights. The state here is Kenya and the office is Kenya Intellectual Property Institute
(KIPI). To get a patent one must have an invention, it must be new (novel). In the case of
Windsurfing v Tabur Marines – a boy used to play with a play boat, later on a company made a
similar play boat and wanted a patent on it, they were denied because it was not new. It must
constitute an inventive step – this is the doctrine of non-obviousness i.e. is it obvious to PHOSITA
(person having ordinary skill in the art), an invention need not be complex for it to constitute an
inventive step, it may be simple but not obvious. Patents must be useful (doctrine of utility), it
must be capable of industrial application this is the same as utility.

2. Utility Models – these are sometimes called petty patents. The concept is that there are certain
innovations that don’t need to be entirely new, it might be new in Kenya but not necessarily
elsewhere, the newness need not be absolute and there need not be an inventive step, it must be
useful. Kenya has both patents and utility models, Kenya Ceramic Jiko (KCJ) from the metal jiko
we realised the need to conserve energy, the idea was that metal was making energy disappear
but ceramic would conserve energy. Utility Models can be used to protect Kitenges, Kikoi’s etc
which is also a case of copyrights.

3. Copyright: - protects original expressions embodied in material, tangible or fixed form. © starts
with an idea, it is expressed and the expression is then embodied in material form. For example
a writer gets the idea to write, writes notes down on a piece of paper and then the book, this is
the idea, expression dichotomy. Ideas are not protectable in intellectual property expressions are.
 Copyright is more dynamic 3 areas where copyright is useful i.e. in software, literature and
entertainment amongst others.

4. Trademarks –
5. Trade secret

Industrial Property Act

Trademarks Act Cap 506

Copyright Act 2001

Intellectual Property Law Lecture 2

COPYRIGHT

Copyright law is intended to protect and to reward original expressions embodied in tangible material or
fixed form. In the first category an idea does not infringe copyright but once it is expressed in some form,
then it becomes tangible when expressed, you don’t only have the idea in your head you have expressed
it and its somehow in fixed form. Not everything that is new is patentable unless they are original
expressions and are in original form.

Subject matter of copyright is divided into two broad categories

1. Primary works; Americans call these works of original authorship. These include literally
works, artistic work, musical work, sound recordings are physical embodiments of primary works.

Secondary Works – sometimes called neighbouring related or allied.

Primary works include – literally works, artistic work, and musical work. Literally works are defined under
Section 2 of Copyright Act as meaning irrespective of literally quality. When a play is in writing it is a
literally work but the moment you perform it is called a performance. A treatise is a book that deals with
one subject in great detail. Essays and articles are also copyrightable. Letters are copyrightable. Reports
are copyrightable. Memorandum including MOUs are copyrightable, summons are copyrightable. Charts
and tables, computer programs or software, tables and compilation of data are copyrightable.

Literally works do not include judicial decisions and statutes. A headnote is copyrightable.

Musical works – means any musical work irrespective of musical quality and includes works composed
for musical accompaniments.

Artistic works – means irrespective of artistic qualities, paintings are artistic works, etching, lithographs,
woodcarvings and maps etc. photographs which are not comprised in audiovisual works i.e. stills, the
photographer owns the copyright in a picture for exercising skill and judgment in taking the photo, the
poser is not responsible for the composition of the photograph.

An author is the first owner of a copyright.

Payment is not the basic issue in intellectual property; the issue is who exercises skill and judgment.
Works of architecture in the form of buildings are artistic works and are copyrightable.

Industrial handcrafts and clothe designs.

Secondary works or neighbouring works – these works do not belong to the cathedral of creativity i.e.
Poets, painters, musicians.

2. Audiovisual works – a VHS or DVD are audiovisual they are both audio and visual or have
both qualities – it is the director who owns the copyright for audiovisual work.
3. Sound recordings – sound recordings are physical embodiments of primary works.
4. Broadcasts – this is any transmission intended to be received whether it is received or not,

What is a performance S. 30 (6) of the copyright Act defines a performance as “performance” means the
representation of a work by such action as dancing, playing, reciting, singing, declaiming or projecting to
listeners by any means whatsoever;

What is original? Original is many times confused with the term creative but original may mean

1. That its not a copy; - copy – its not a reprint of another and it is not a copy version of another, it
embodies skill and judgment i.e. a work must embody skill and judgment to be copyrightable –
Feist v Rural (US) a company published a white pages directory, another company copied the
entries and published a yellow pages directory, they even copied trap entries. In the supreme
court the white pages directory said the yellow pages was infringing and yellow pages argued
that what white pages had was not copyrightable but it was only sweat and brow, sweat and brow
are not copyrightable. What white directory had entered was mere data and was not works of
skill. Feist Publications, Inc., v. Rural Telephone Service Co., Inc., 499 U.S. 340 (1991), commonly
called just Feist v. Rural, was a United States Supreme Court case in which Feist copied information
from Rural’s telephone listings to include in its own, after Rural refused to license the information.
Rural sued for copyright infringement. The Court ruled that information contained in Rural’s
phone directory was not copyrightable, and that therefore no infringement existed.

Intellectual Property Law Lecture 3

UNFAIR COMPETITION:

This is a cross cutting aspect of intellectual property in the sense that it relates to patents, copyright,
trademark law and other areas. Under IP Act 2001 some regulations have been enacted to ensure that
licensors of technology or patents do not include inequitable and fair or oppressive terms in licensing
agreements or contracts. For example under IPA 2001 if a licensed agreement compels a licensee to
acquire technology from abroad and yet that technology is available locally that is regarded as unfair
technology, or importing expensive technology where alternative technology is available and cheaper.

Unfair competition in area of passing off – whenever someone passes-off your property that is unfair
competition. Section 5 of the Trade Marks Act.

Contracts in restraint of trade – unfair competition – Giella v Cassman Brown

Contract in Restrain of Trade Act

To what extent can you limit an employee or competitor from competing with you?

Geographical Scope – what radius

Duration – For how long can you restrict trade?

Scope of Business – being prohibited from doing two similar things for two rival companies. There was
a big issue with Saachi and Saachi.

Restrictive or Unfair Trade Practices – they are closely related to passing off. When one enters into a
contract, in software Microsoft has been accused of bundling products (bundling means for example
where buying sugar must go with bread) to buy one item you are bundled with another item. Whenever
one buys Windows software, one gets Explorer. Netscape existed and they had Nestcape Navigator for
exploring the net, Microsoft was forcing people to use Explorer because it came with the Windows
package which was unfair because in a way it was locking Netscape out, even where it is offered for free
it is still bundling, taking unfair advantage of market dominance.

Cap 504 – The Restrictive Trade Practices Monopolies and Price Control Act – this Act does not sufficiently
deal with intellectual property. It does not sufficiently understand intellectual property technological
issues, there is a technology and IP deficit.

The following Instruments have tried to deal with the problems of unfair competition

1. Paris Convention on the Protection of Industrial Property 1883

2. There were negotiations in the 70s through 1980s for an international code of conduct on
Restrictive Trade or Business practices (RBTs) there were arguments that Trans-national Corporations like
Microsoft, Nation Media Group were engaged in restrictive business practice or unfair competition. For
example price fixing.

In 1970 – 1985 there were concerted discussions for a draft international code of conduct on transfer of
technology hereinafter called the Draft ToT Code.

Last aspect of Unfair Competition is advertising which is an arena for providing information to customers
or consumers as well as developing and selling a brand. This issue plays out in the realm of comparative
advertising, misleading advertising and unfair advertising. These are problems in the realm of economic
torts as well as intellectual property particularly Unfair Competition. In comparative advertising one
company advertises its product and compares it with the competition i.e. that it is cheaper, better quality,
long lasting in relation to the competition which mostly is identifiable competition. Compaq v Dell. One
company insisting they are cheaper than the competition.

An article written by Daniel Chunovsky Trademarks in Developing Countries, - on issue of advertising

goods for multinationals and advertising being used to spread misinformation.

TRADE SECRETS

Trade secrets are sometimes called undisclosed information as TRIPS calls them then they can also be
called confidential information, know how. Trade secrets have 3 major characteristics

1. Information must be secret or confidential – not disclosed to other people;

2. Information must have commercial value – commercial value by reason of its confidentiality;
3. There must be an obligation to keep that information secret – confidential obligation. This is done
through non-disclosure agreements NDA or the confidentiality clause in the contract of
employment. Coca Cola is a good example in discussing trade secrets law, the black syrup base
of Coca Cola is not patented but protected by Trade Secret Law. If it were protected by trademark,
it would have expired by now.

Diana Princess of Wales as a Trade Secret – character merchandising, Diana dolls, Diana’s portrait on
plates etc. Diana’s letters to Major James Hewitt were a trade secret.

David Beckham – David Beckham merchandise –

Intellectual Property Law Lecture 4

TRADE SECRETS: protect your trade secrets through patents other than trade secrets. Trade secrets are
not sustainable if leaked or if the owner of a trade secret dies, they die with it, this is the problem with
traditional knowledge. Traditional Medicinal Knowledge. Whenever an elder dies in a village a section
of the African Library is burnt because most of the information is committed in memory and rarely
disclosed.

TECHNOLOGY TRANSFER
For a long time there has been an argument whether IP enhances or stifles innovation (creativity),
technological transfer and development. On the one hand it is argued that IP acts as a protective and
reward mechanism to creators. In sectors such as the pharmaceutical industries for instance there is
evidence to suggest that investment and development would be seriously limited if patent protection
were to be removed. Part of the reasoning is that there are usually heavy upfront or sunk costs or
investments before a drug can be developed. Examples of this sunk costs include initial research, initial
development of the drug, clinical and related trials.

It has been argued that intellectual property especially patents stifles innovation, access and
development. Some have argued that the Swiss Pharmaceutical Industry developed without
pharmaceutical patents. Secondly relatedly it has been argued that IP and particularly patents increase
the cost of medicines because loyalties have to be paid. HIV drugs have been very expensive because of
patents. When one takes an example of painkillers the active ingredient is Paracetemol but the moment
it is given a brand name, they start charging for it. It does not necessarily mean that a generic drug is
fake, it just doesn’t have brand name.

Modes or channels of technology transfer:

From 1960s through 1980s there was a debate regarding technology transfer. Developing countries
argued that there was limited transfer of technology to developing countries and that most of the
technology was controlled by the West and Transnational Corporations. Developing countries persuaded
UNCTAD to initiate a process for drafting an international code of conduct for technology transfer (ToT
Code). This draft instrument was negotiated up to about 1985 when it ended in a stalemate. Some of
the core perspectives were as follows:

Developing countries argued for concessions or preferential treatment in technology transfer transactions
e.g. more favourable pricing and generally easier and more favourable terms in transfer of technology.
On the other hand developed countries preferred a market-based approach whereby ToT transactions
would be based on market or arms length bargains and therefore a limited role for the state in regulating
ToT. They argued that most of the technology was developed by private enterprises and was therefore
proprietary i.e. they were not within the control of the State and so the State could not make decision on
their transfer. Socialist countries especially of Eastern Europe or the Soviet Satellites ideologically agreed
with the developing countries because they were opposed to Western Imperialism. But when it came to
voting on the draft, Soviet Satellites voted with the Western World. This was because most of these
countries had developed some technology and they needed a market and therefore to them the idea
that they could give their technology for free was unthinkable. Some of the most important exports from
the Soviet Systems were wine arms and liquor. The Soviet empire was not too keen on transfer of
technology.

The negotiations on the draft International Code of Conduct on Technology Transfer ended in a stalemate
in 1985. However 2 major lessons were learnt from this process
 1. Many developing countries including Kenya have since promulgated laws to regulate transfer of
technology (ToT). Most of these laws begin with a market based approach to ToT e.g. the laws
will be saying that the parties who are negotiating the transfer should decide the terms of the
transfer and if there is a problem with the transfer then the state can come in. Part X S. 64 onwards
of IPA 2001 has provisions on contractual licensing. It gives parties the freedom to determine the
terms of the licence. However it indicates about 33 terms which may make a contractual licence
voidable and therefore unregistrable by the MD of KIPI. The 33 terms may render a licence
voidable because they are oppressive and inequitable.

Four-pronged typology

If the price is unreasonably high then that price shall not be registered by KIPI. For a long time KIPO as
KIPI then was and CBK emphasised a lot on the price clause partly because there was the argument that
Kenya was losing a lot of money. After 1995 CBK and KIPI are no longer keen on scrutinizing licensing
agreements although they are responsible for scrutinizing what technology is being brought into Kenya.
They had only focussed on foreign exchange which was a narrow perspective.

If the contract requires one to import technology that is already available in the country, KIPI can
refuse to issue a contractual licence. This clause also helps us in deepening our own technology
and helps in building linkages i.e. forward and backward linkages

Choice of Law: What law shall apply to the transaction. If the law to apply is foreign, then it is voidable
because they want you to use Kenya Law. If the forum for resolving the dispute is a foreign forum then
the contract is voidable.

It Is in this context that Osunbor argues that it is important that we regulate and strengthen the regulatory
systems.

Copyright Act 2001 Section 33 – provides a firm … for licensing assignment and ToT for copyright works.
This is essentially a market-based approach, however under Section 48 of the Act a compulsory license
may be avoided in at least two contexts

1. Where the copyright owner or holder does not produce sufficient materials to supply the relevant
market; or

2. Where the copyright holder refuses to grant a licence or grants a licence on inordinate or
inequitable terms.

After 1995 there have been two major reports the issue of law reforms captured by the Industrial Property
and even trademark law has been reformed to assist licensing. There have been institutional reforms and
policy reforms. You can licence the business without the mark or the Mark without the business – this
only means that if for example you are running Nandos Restaurant, if one wanted to carryout other
business but not Nandos business with the consent of the Nandos Business owner, they have licensed
the premises and not the mark, but if they say fine you can go open a Nandos premises in another
premises, they have licensed the Mark but not the business.

Institutional policy reform – many countries have reformed their institutions and policy to enhance
licensing and other forms of transfers especially on market oriented principles.

Section 48 and Section 64

A licence is the permission which would otherwise be unlawful if the licence were not granted. A license
may take 3 forms

1. A sole licence – this is whereby the licensor licenses only one licensee however the licensor may
compete with the licencee;

2. Exclusive Licence – this is where the licensor licenses the licensee exclusively and even the
licensor cannot compete with the licensee.

3. Non-exclusive Licence – this is where the Licensor licenses one or more licencees and the licensor
can also compete.

ASSIGNMENT:

In most assignment transaction the assignee replaces the assignors for most intents and purposes. It is
recommended that the contract should be the assignor should sign the assignment, the assignor’s is the
most important.

FOREIGN DIRECT INVESTMENT:

Intellectual Property Law Lecture 5

My talking points – most important

Copyright

Introduction

Patents

Trademarks
Diamond & Chakrabhaty – using micro-organisms to remove oil spills.

Anything under the sun made by man is patentable. This doctrine helps stimulate investments in bio-
technology in the 80s-90s. There has been a lot of investment in Genetics and informatics. Genomics –
genetic engineering and informatics.

In 1994 – TRIPS adopted the standard that all inventions are prima facie patentable and that no invention
should be excluded by state parties without sufficient justification.

Industrial Designs: Section 84 of IPA – an industrial design means any composition of lines or colours or
any three-dimensional form, whether or not associated with lines or colours.

The protection under this Act shall not extend to anything in an industrial design which serves solely to
obtain a technical result.

IDs are compositions of lines or colours or any 3 dimensional forms. They are protectable on the basis
of special appearance or aesthetics and not on the basis of their technical effect or technical result. Most
perfume bottles have elegant shapes. Aesthetics other than utility or functionality. When does utility
override aestheticity – when one wants patents, they ask if it is useful and if it is new i.e. Viagra. Patents
are all about utility it is in the extreme utility end. Trademark is in the middle and is for both utility and
aesthetics and Industrial Designs is more to do with aesthetics. It depends on what one wants, some may
have both utility and aesthetic, Jean Paul Gautier Woman form perfume bottle is a good example for me.

Technovations related to industrial designs, they relate to arrangements of things. Section 94 of IPA

Character Merchandising: this occurs when the owner of the rights of some popular character grants
licence to others …

Character Merchandising is the process of licensing and utilising representations of popular characters in
goods or services. Most of these characters are derived from fictitious characters made famous through
T.V. films or books for example like Harry Porter, Mickey Mouse etc some of the characters are real life
for example Diana Princess of Wales in Dolls, Plates etc. Character merchandising constitutes between
fiction and faction. When you can trace fictitious material or character to the real one you call it factual
between fictitious and factual it is a thin line, the more fictitious a novel is the more protected in copyright
(thick copyright as in protecting poetry) as it is work of the imagination.

Right of Publicity: seeks to protect the image, voice and likeness of famous people especially celebrities.
These should not be copied or imitated without their permission. Paul Goldstein talks of Johnnie Carson
in the way he used to enter the stage and say Heeeere comes Johnnie! And Vorna White who had her
own style of spinning the wheel of fortune. Right of publicity does not extend to protect the individual
from satirical commentary. Satirising is not property but is in the area of freedom of expression.
Discuss forms of IP that may be used to protect a Coke bottle and its contents

Many scholars have argued that in a perfect market where transactions are efficient intellectual property
(IP) may not be justified. They have thus argued that (IP) should be created only where there is market
failure. The best arguments have been made by Stanford Law Professor John Barton. He argues that
trade presupposes freedom. On the other hand property or IP presupposes restriction or control. Indeed
property includes the right to use abuse and the right to exercise exclusive control. John Barton’s
arguments underscore the tensions within TRIPs. He is more convincing than activists and others who
have argued that trade has nothing to do with IP. Many of our communities have pots, whenever they
made pots they would put their marks that were a sign of trademark. In the area of music many people
were identifiable with the music that they had sung or written which is an issue of copyright. It is not
created by TRIPs but trademarks have been there.

WHY DO MARKETS FAIL:

Markets fail for four reasons

1. Abuse of market power – having market power is not a problem, the problem is abusing it. It is
abused through monopolies and monopsonies, a monopolist is a single provider of a service for
example KBS TV in the 70’s while a monopsony is a single consumer. In Kenya when one wants to
use software, they buy it from Microsoft so this is a Monopoly. It has been argued that Microsoft
has been abusing its Monopoly power. When it got into the market it was giving windows explorer
for free so as to kill Netscape Navigator, they killed navigator through bundling (putting many
products together so that to use one you need the other)
2. Asymmetrical information – one party to a transaction has more than the other party. In IP and
computer products, the supplier is likely to have more information than the buyer e.g. the software
seller is likely to know more about the software than the buyer. In second-hand markets, this also
happens a lot. For example the seller of a second hand car is likely to know more about the car.
Need to create property rights to correct this anomaly.
3. Negative Externalities: the opposite of this is the Network Effect: It has been argued that
whenever an individual cannot internalise certain costs, they are not going to internalise the cost
unless there is a tax or penalty. There will be a moral hazard. In 1980s – 90s WM/IMF there was
the argument that education, health service should be cost based, education should not be free
because people are not likely to internalise the cost, they will abuse it.

Intellectual Property Law Lecture 6

Novels are good places from which one can do character merchandising e.g. Harry Porter – one can
merchandise Harry.
Characteristics of “Network Effect” – examples TV programs and novels

Public goods problems:

Non-rivalous products

If the cost of producing an extra unit of a product is limited –

Book publishing

Aminata – Prof Imbuga – for Prof to publish Aminata he has to start with Research about the cultural
practices; He has to spend time on writing the book

The book has to be edited

The book has to be printed

Published

Advertised or promoted

Distributed to bookshops

The processes are costly and time consuming,

This work can be destroyed by a counterfeiter who does not need to go through all the processes that
the author has gone through. Where the book has a captive market like Aminata did, the counterfeiter
does not pay any royalties.. This is the problem of freeloading.

Freeloading is a problem because the extra cost of producing of an IP product is costly. Stop free riding
be a fair follower.

The phenomenon of non-exclusive – if there is a TV program showing, it is difficult to exclude others from
watching. It is non-rivalous and non-excluding, if you light your cigarette from mine, I don’t lose and you
benefit. Theory by Yochai Benkler

Once an article of a public good is created, it is non-rivalous – it is non-exclusive. Because of that once a
product is created it becomes much cheaper to reproduce, e.g. publishing Aminata, counterfeiters come
to cash in.

Problem of IP first copy difficult to produce but you cannot exclude others from enjoying it.

There are two approaches to studying IP

Human Rights Approach – Continental Europe;

Utilitarian – Anglo American –based on the work of Jeremy Bentham, innovation is not protectable and
not intrinsically valuable so as to be valuable, one has to prove that IP is good for it to get protection, is
it useful. Utilitarianism finds expression in Article 1 of the American Constitution, the idea is that for
copyright and patents to be protected they must be able to promote useful art and science. The question
is which comes first, the promotion of useful arts and science or is it the protection of IP? The whole
debate of incentive regimes.

There are two broad typologies of incentives. They may be ex post facto or they may be ex ante, they
may be to the creator or innovator or they may be to others.

For example the money given to gidigidi by the NARC government was after the fact. KISIMA AWARDS
and KORA AWARDS. JOMO KENYATTA AWARDS IN LITERATURE. Ex post facto are things like Oscar
Awards all these are post facto.

Rival publicity issues:

Ex ante – this is where the award is given before the product to give incentive. It is used to identify talent.
University of Nairobi giving grants for research up to KShs. 400,000/-. Kenya Medical Research Institutes
gives money as incentives for research on medicines for things such as AIDS, and in Biotechnology. Coca
Cola Popstar giving incentives to people with musical talent – ex ante, Face of Africa. In Eldred v Ashcroft
(John Ashcroft was the AG America) Eric Edred had a school going daughter and the daughter where she
was going to school they were always being asked to read some very old books. Eldred being a computer
geek started reducing the books into digital format so that his daughter could enjoy reading the old
books. One day the US Government decided they were going to extend copyright by 20 years which
meant that what Eldred was turning into digital information was going to be copyrightable because the
period was going to be retroactive. Eldred went to Harvard at the Backman Centre and told the professors
that he wished to continue digitising the books in spite of what Congress had decided. In the meantime
the US Congress passed the Sonny Bono motion on Extending Copyright to 700 (CTEA) Copyright Time
Extension Act. People started criticising the Act which meant that copyright would last for life plus fifty.

In the Supreme Court Eldred lost 7 to 2. The argument at the Supreme Court for Eldred were that for a
long time Congress had extended copyright time which was contrary to the Constitution which states
that Copyright should have limited time. But the others were arguing that limited could mean eternity
minus a day. The other argument was on incentives and the question was who was getting the incentives,
the creator or their dependants. Experts were brought to bring in their opinion.

The question is what is the optimal, or efficient copyright duration.

TRANSACTION COST THEORY:

This theory is associated with neo-classical economists and helps elaborate the Utilitarian approach to IP.
The economist in this league include people like Professor … The major argument is that states should
focus on creating property rights and enforcing copyrights. The government should not bother too much
about who is poor or rich but should bother about property rights and contracts as this would help
allocate resources in the most efficient manner.

What are transaction costs:

The cost of identifying the parties.

There are costs incurred in transacting when one is negotiating

A poacher’s fee –

There are transaction costs associated with enforcement and this is costly. Some quarters are arguing
about efficient breach – contracts are an issue of economic efficiency. Richard Posner has argued that
there are costs as transaction costs

1. That the cost of enforcement include the cost incurred by courts and police in preventing
infringement or addressing piracy;

2. Cost of restricting a good property when it has a public goods character.

These are just some of the transaction costs.

Over the years transaction costs have been criticised by assuming that they can be zero or minimise. The
idea is to fight to reduce transaction costs. The transaction cost theory is powerful and professors such
as Godwin have argued that the exception or limitation to copyright such as criticism or review and private
use are based on transaction use theory, that it is costly to monitor the use of intellectual property in
private area, for example would it be possible for a lecturer to call Daily Nation every time they wanted
to quote from an article that was on that day’s newspaper? It would be practically impossible.

Prof Goldstein in Copyrights highway has argued that transaction costs are being reduced by the internet.
There was a time that it would take a long time for one to get a book or a piece of music. The internet
facilitates a quicker way of getting these items especially music, books and software.

Intellectual Property Law Lecture 7

Transaction costs involved other issues, opportunity costs, money etc.

NATURAL RIGHTS, HUMAN RIGHTS PERSPECTIVE.

The natural right perspective to intellectual property is based on natural rights theories or epistemology
of human rights. The conceptual basis of IP is that you have the right because you are a human being.
There is a strong argument that the rights that one has are not a reward but a recognition of ones nature
such that everybody has those rights. Philosophers like Emanuel Kant have argued that IP should be
protected because it is an extension of human persona. There has been debate on distinction between
utilitarian approach to IT and natural rights tradition approach however UDHR encompasses both
traditions.

Article 17 protects property article 27 (1) focuses on access to information and access to cultural rights.
Access and participation
27(2) focuses on property – issue of exclusive rights. This focuses on property exclusive rights both
material and moral right of a creator or innovator. Economic rights tend to have a utilitarian connotation
to them. For example Nyambane has a right to economically benefit from playing the character Moi in
Red Corner, he deserves a cheque and this is an economic right. The right to benefit financially from
creativity. Any singer has the right to be named as the writer of a song, this is a moral right. an actor has
a right to have his name on the credits, this is a moral right, receiving money for acting is the economic
right. 27(1) and 27(2) when read together constitute a balance in Intellectual Property, you want to ensure
that those who have produced cultural products are rewarded. John Locke argued from a labour theory
of IP of property, he argued that if any individual finds land which is furrow and they apply their labour
to improve the land they make the land useful and ought to claim ownership of that land this is
usufructuary. This theory in IP says that IP ought to be protected where one has made a creation.

The other angle to John Locke’s argument is that one can appropriate that which was pre-existing so long
as one leaves enough and is good for the public domain. This is related to the argument of common use.

MORAL RIGHTS

© is divided into 2 broad categories

1. Moral rights

2. Economic or material rights

Morals rights or authors rights are many times read in opposition to copyright and the economic rights
are mainly focused on owner rather than author. There are at least four examples of moral rights. In
Kenya we emphasize on two:

1. The right to paternity (right to be named as the person who has given rise to an IP product; one
has a right to be named and a negative right not to be named. The author also has the right to
claim authorship and ownership (when not credit) Right of Attribution or acknowledgment.

2. The author has the right to object to distortion, mutilation or other modification, as well as any
derogatory or disparaging reference to the work. This right may be claimed where the work has
been adversely reviewed. Moral rights here relate very closely to defamation. RIGHT TO
INTEGRITY & FREEDOM FROM FALSE ATTRIBUTION. Right to integrity. No one has right to modify
other people’s creation without their permission. Psalm 23 – a Poet from Uganda called Timothy
Wangusa wrote a poem called Psalm 23 part 2 he satirised Psalms, one has a right to satirise
textual satire like Wangusa writing a poem to satirise a written text. Social satire is like Imbuga
writing Betrayal in the City to satirise society.

The first person to own copyright is the publisher until the author is identified.

Moral rights live and die with the author. These are covered under S. 32(1) of the Copyright Act, 2001.
Duration of anonymous works is 50 years since there is no author, for audiovisual work it is 50 since
creation or being published. After the end of the year in which the author dies.

Right of Integrity – this is protection against disparagement alteration of mutilation.

Imitative Innovation – people who mutilate other people’s songs and come up with their song e.g. Mercy
Myra borrowing a little here a little there to make a song, or Kajairo totally mutilating a song to come up
with his own. The amount of material in terms of quantity and quality matters. An example is Gerry
Ford’s Memoirs – Gerry was being asked questions on the Watergate Scandal whether he wanted to
forgive Nixon or take him to trial as the Vice President. He decided to forgive Richard Nixon. The dilemma
had been to forgive and be seen as condoning political corruption or trying Nixon and being seen as a
callous person. Harper agreed with The Time Magazine that they will get the scoop but before the
Memoirs hit the streets. Nation steals the book and they publish 300 words from a volume – the issue is
do 300 words out of about… constitute copyright infringement? This is based on the right to modify,
alter or mutilate. The court held that there was infringement as the words were Jerry Fords own words.

Right of integrity or freedom from disparaging is closely related to the law of defamation. Like book
reviewers who review the author instead of reviewing the book, the author can sue under moral rights
section.

TRIPS and the context of Berne Article 6(b)

Why do moral rights matter? They are serious in areas of films and publicity. When TRIPS was being
negotiated the American Film Industry argued that moral rights ought not to be protected and they
succeeded so TRIPS does not protect moral rights. If one was to protect moral rights, it would mean that
whenever one wanted to use a film clip, one would have to call up the actor or actress every time they
wanted to use the clip which would be a very expensive and tedious exercise – whenever one is acting it
is assumed that it is hired work, it is an artificial agreement that all actors and actresses are treated as if
their work is on hire.

American quarrel with moral rights- suppose one removes from Titanic the scene where Leonardo Di
Caprio is drawing and put it on t.v. two issues will arise, Di Caprio may have a problem with that.

Does IP stimulate or stifle innovation, technology transfer or development

There have been arguments on whether IP stimulates or stifles innovation. In the 1980s this debate was
taken up by US EC and Japanese trans-nationals with the support of their governments to argue that
non-protection or weak protection of IP stifled innovation and hindered Trade, ToT and development.
They gave some data to suggest that billions of dollars were being lost especially in the pharmaceutical
industries (Pharmaceutical companies Merck Inc., Glaxo, software industries (Microsoft) Entertainment
Industries (Sony). They argued that in the area of IP they tend to be monopolistic and do not allow
competition. It has also been argued that IP enhances transaction costs, i.e. before one acquires an IP
product one is supposed to negotiate or even pay a royalty and this is argued that it enhances transaction
costs. Newspaper houses stifle stories by using the stories without sufficient acknowledgement. In IP the
meaning of the word correspondent will mean that the publisher will own the copyright.

There are problems on research that has been conducted with IP and Patent Law

The role of IP in innovation has fundamental weaknesses

1. Most of the research focuses on patents; very little has been done on © and ™

2. Most of research is in developed countries

3. Most of research is based on interviews with corporate executives rather than consumers,
academics and so on meaning the research is not entirely empirical but is largely intuitive and speculative.

Refer to Casper Primo Brage , Keith Mascus, studies by WIPO, UNDP and Cultural Industries, Edwin
Mansfield

Intellectual Property Law Lecture 8

IP and TRIPS

UNCTAD – poor man’s cushion – for helping developing countries in their trade interests.

344-345

Historically WIPO and UNESCO were the major regimes regulating trade regimes and Intellectual
Property. UNCESCO was administering Universal Copyright Convention of 1952 (UCC) which had partly
been passed to accommodate America. America for a long time was not a member of Berne but was
using Berne.

Over the years WIPO had been criticised that it lacked resources to deal with IP it had limited personnel
and more recently it has sent limited materials to address IP. In order to continue being relevant WIPO
has now moved to Dispute Resolution since most of its mandate has been taken over by WTO/GATT.

WIPO lacked a clear mechanism and sanctions as there was nowhere to address disputes if one was
aggrieved. The major magic of TRIPS is that it has a clear dispute resolution mechanism that if you
infringe another country’s IP there can be sanctions. WIPO did not contextualise IP and developed
countries led an onslaught to WTO criticising WIPO. BY 1996 WIPO Copyright Treaty etc were passed.

Evolution of IP within GATT

The argument relating to America is that from around 1974 America was clear about its Trade Diplomacy
and had its Trade Act of 1974 and amended it in 1988 which had Section 301 generally called super 301
which was a clause that said that if any country undermines or comprises American trade interests, they
will take any appropriate sanctions and the sanctions could be unilateral. It took the following formats

1. Aggressive Unilateralism

2. Bilateralism – America dealing with countries one on one

3. Multilateralism through GATT

How did IP develop within GATT

“Whether GATT could play a role in IP … only in the Uruguay round has the idea gained ground.

The idea of putting IP within GATT regime is traceable to the Kennedy Round in 1964 where there was a
major issue that trade is not only restricted by tariffs but there are other non-tariff barriers to trade with
the same consequences to trade. For example Sanitary and Phytosanitary Services and quotas, America
suggested that if a country does not protect International Property, counterfeiting was another NTB. In
1986 Ministers met in Punta Del Este in Uruguay and TRIPS was on the Table that it ought to be included
in the GATT regime. TRIPS first started its life due to trademark counterfeiting. It relocation in TRIPS was
therefore a natural consequence since trademarks are very trade related and later on expanded to include
patents and copyright.

The debate In WTO was whether TRIPS should be mandatory, TRIPS is essentially an agreement and one
is therefore not bound by TRIPS per se. By 1994 once a state signed as a member of WTO then they
became bound by TRIPS, TRIMS and GATS agreements. 15th April 1994 Marrakesh Morocco TRIPS
agreement was signed and countries were given Special and Differential Treatment to be compliant.

America has two systems of dealing with States that are not TRIPS compliant

1. Watch list –

2. Priority Watch List – South Africa most Asian countries that were counterfeiting which meant
that measures were likely to be taken.

PATENTS

One of the core issues in TRIPS is that it adopts the obita dicta in Diamond v Chakrabaty. For a long time
Japan did not want to patent bombs because of Hiroshima and Nagasaki but as per TRIPS article 27 one
has to patent all innovations.

Patents exist for at lease 20 years which is another TRIPS standard.

Under Article 29 one is obliged to disclose their invention in a manner that can allow PHOSITA to work
the invention.

Article 30 – exceptions to those exclusive rights and recognises limitations to those exclusive rights, the
exception should not contradict with normal exploitation of a patent – this is complicated.

Article 31 talks of compulsory licensing and government use.

Article 34 – burden of proof is reversed

COPYRIGHTS UNDER TRIPS

Article 9 provides foundation for implementing Berne but not the administrative provisions only the
substantive provisions.
Article 9(2) – makes it absolutely clear that copyright does not extend to idea procedures

Article 10 – deals with computer programs and software and not literally works

10(2) – protects databases in machine readable forms.

Article 12 deals with the term of copyright and it is at least life plus 50 Europeans life plus 70.

There can be exceptions to copyright

Article 14 protects performance

Intellectual Property Law Lecture 9

1939-1945 – countries argued that the 2nd world-war was caused by trade after, that Germany went to
war over trade restrictions.

In 1947 there were meetings to try and secure international peace and to regulate economic activities
and development and balance of payments issues. There was a problem that some countries were
imposing quantitative restrictions or quotas on imports. They established the World Bank to help
countries in reconstructing and the IMF to help countries facing balance of payments problems.

To regulate international trade it was suggested to establish the International Trade Organization but in
the Havana Charter the ITO was rejected. GATT has a three prong identity one it was a forum for countries
to discuss how to regulate tariffs but it was not very organized like the UN for example. It was just a
forum with rounds like the Havana Round. It also had the character of Rules – the GATT deals with tariffs
the other prong was about its being an organization and a Club. It was referred to as the rich countries’
club.

Around 1964 during the Kennedy Round of GATT some countries argued that tariffs and barriers were
not the only barriers to trade but there were other Non-tariff barriers to trade such as Sanitary and
Phytosanitary standards SPS and technical barriers referred to as NTBs sanitary standards are used for
example when the EU puts a ban on importation of fish from Kenya saying they are not handled well, this
becomes an SPS barrier to trade.

1979 Japan Round – the US and other countries started talking about counterfeiting that when you
counterfeit other peoples works, you deny the countries the right to trade, allowing copying of others
trademark was trade distorting

In 1974 US enacted its Trade Act Section 301 that any country that undermined US Trade would face
sanctions. Infringing copyrights a country could be put on the Watch List and if they continued they
would be put on a Priority Watch List and a country could face sanctions. The US adopted unilateral
measures on countries that continued to infringe on its copyrights. America also adopted bilateral
measures and negotiated the US Canada Free Trade Agreement USCFTA among other agreements with
Intellectual Property clause USCFTA was later transformed into North America Free Trade Agreement
NAFTA after they signed multilateral agreement with Canada and Mexico.

In 1986 – 1994 the Uruguay Round took place and the foreign Ministers met at Punta del Este and at this
round the main issue was reforming the trade in goods and adding services such as banking,
telecommunications, legal services etc there should be no restriction to offering services if AT&T wants
to come and invest in telecommunications in Kenya then there should be no barriers into their doing so.

In April 1994 the deal was sealed in Marrakesh Morocco and Intellectual Property became part of GATT.
A General Agreement on Trades in Services (GATS) also became part of GATT. Intellectual Property was
allowed in GATT as Trade Related Aspects of Intellectual Property (TRIPS) and intellectual property was
allowed into WTO. WTO became a specific institute that was born in Marrakesh Morocco. Developed
countries were to be bound by the year 2000 and LDCs like Uganda and Tanzania were to be bound in
2016.

Trademarks under TRIPS

Historically trademarks were about goods but now services are specifically being included. Article 15
recognizes the Paris Convention on protection of trade marks which gives us the idea of well known
marks or notorious marks.

Article 16 marks must be protected for at least 7 years. TRIPS gave minimum standards to trademarks.
It conferred certain rights to trademark owners.

Article 17 – allowed limited exceptions to the exclusive rights

Article 21 – provided general framework for licences and assignments and emphasises that there can be
no compulsory licensing in the case of trademarks. The rationale here being trademarks are about trade
and to allow compulsory licensing in this area is to undermine the trademark owner. It also confirms that
one can transfer their business without necessarily transferring their mark.

Trademark became a precondition of maintaining registration. If one does not use a mark for 3 years it
can be expunged. Case of Drum Magazine.

In defence of abandoning a trademark, one can argue that where a mark had been notorious and
therefore state protected. On the other hand if the mark has not been used for 12 years, the owners have
slept on their rights and equity does not protect the indolent but protects the diligent and therefore
abandonment is as good as cancellation. There can be arguments on both sides.

Trademark, copyright, patent are territorial so for example if Drum was not being used in Kenya, it can be
said to have died in Kenya.

Kenya imposes trademark protection for 10 years. TRIPS sets a minimum protection time of 7 years. In
PATENTS it is 20 years in Kenya and in copyright it is indeterminate it is for life.
Undisclosed information – this trade secrets related to undisclosed information under Article 39. It is also
closely related to the idea of controlling Intellectual Property

Article 40 –

Geographical Indications – GIs are being debated quite a lot. TRIPS issues that are controversial are
patents and Geographical Indications this is partly because countries have realised that they did not take
interest to protect their own interests.

Article 25 –

Goldstein sees a lot of advantages in TRIPS in that it seeks to address a lot of mischief in International IP
law since before 1991 there were no substantive binding minimum standards in Patent, copyright,
Trademark and IP Law.

Paris Convention did not bind states to have specific standards in patents. It was not strict on issues of
patent rights and we had a chaotic regime, some countries like US had 17 years before TRIPS after TRIPs
it became 20 years, US added 3 years the time they estimated it would take from application of a patent
to grant. There were no substantive issues on patenting, Japan could refuse to patent explosives but after
Diamond and Chakrabaty things changed.

TRIPs has provided to criminal and civil enforcement procedures which were lacking before. Before TRIPs,
if ones patent was infringed by other countries one could only try to take the matter to the UN where UN
could use diplomacy to try and resolve the issue. One could also take the matter to the ICJ but decisions
of ICJ matter only if all parties are willing to be bound. TRIPs brought in procedural requirements
regarding how one could acquire, maintain and register patents, trademarks etc.

Goldstein has argued that the magic or wisdom of TRIPs was that before there were no clear enforcement
mechanisms, now there is a Dispute Settlement Mechanism and even an Appeal.

Sihanya’s issues – some of the issues are that TRIPs is only enforcing Western Standards and Patent terms
are American Standards, where is folklore, Traditional Knowledge? There are no utility models under
TRIPs. This is partly because America said that utility models are a dilution of patents.

TRIPs is a patchwork of various agreement, articles 9, 10, 11, 12, 13 14 dealing with © deal with Berne
Principles and does not say what they want to protect, they borrow some of the Berne principles but
reject moral rights. In Patent law they adopt some of the articles of Paris but not others, it is truly a
patchwork.

Constitutional politics and that there was not enough participation from developing countries.

When TRIPs comes to form in Kenya (January 2000) developing countries argued that they have other
challenges facing them that they have to sort out before they can comply with TRIPS requirements. They
were asking for realistic standards that all countries could easily comply with instead of graduated
compliance. There has been a huge debate in the idea of compliance in that the terms of TRIPs are
onerous and burdensome, they should be made less onerous to developing countries but US is saying
they can only review how TRIPs can be implemented while developing countries are saying that they
should make compliance less onerous. West wants review of TRIPs and they want to add new issues.

Implementation of TRIPs have serious implication, it requires administrative reforms and these are
debatable issues, sovereign countries do not want to be told how to reform their administrative and
judicial systems. Trying to direct a country on political and judicial decision making is not easy it is
tantamount to interfering with the sovereignty of a country.

REGIONAL IP REGIMES

ARIPO African Regional Property Organization

It was established in 1976 in Lusaka Zambia as English Speaking African Regional Property Organization
and industrial which means it did not deal with copyright, it was later changed to African Regional
Property Organization Industrial and now it is known as African Regional Property Organization. It helps
in registration of patents and trademarks but it is not clear what role it will play in copyright. It has laws
and is trying to harmonise IP regimes in English speaking Africa. It is trying to harmonise the substantive
IP Laws which are known as ARIPO model laws. It is also helping in administration of IP where countries
can compare notes on IP issues.

OAPI Organisation Africaine Propriette Intellectuelle Africa organisation for Intellectual Property. This is
for French speaking Africa. It has had both copyright and patents. If one registers with OAPI the patent
or copyright will be protected in all the African French speaking countries.

European Patent Convention – EPC this protects patents in certain specific European countries. It has its
offices in Germany Munich, it has both substantive and procedural standards and it should be
distinguished from the Community Patent Convention CPC which was basically a proposal agreement in
Europe that was interested in establishing one specific standard applicable to all countries in Europe.

ANDEAN - this is for Latin American Countries

Generally the EU and NAFTA and to some extent ASEAN (Association of East Asian Nations) and related
trade agreement have tried to adopt IP as a standard to be observed in their trade. However most of
trade in Africa like COMESA, PTA, SADC and ECOWAS – most of these have not integrated IP into their
agreements there are only a few clauses that mention IP related concepts such as trade, Industrial
Development, Science and Technology and cultural development hence it is argued that these RTAs
exhibit an IP or technology deficit.

PATENT AND RELATED DOCTRINES

Patents are regarded in two ways, as a certificate and as a juridical relationship. The inventor or patentee
gets licensed by KIPI, there is a legal relationship between Inventor or Patentee and on the other hand
one has KIPI representing the state. Article 27 of UDHR says that Intellectual Property should have a
balance. Patents started their lives not as IP but as a system of helping free trade, one receives letters
patents to assist one in trading.

When one wanted to participate in trade, one required patent. The modern patent law is traceable to UK
and the system of Monopoly, patents were granted at the discretion of the Monarch. Now it has become
an IP issue rather than a business issue. In 1789 it was incorporated into the US Constitution Article 1881.
A Patent is a bundle of rights that can protect an individual and it carries duties and obligations, duties
to disclose to the patent office, on payment office grants registration and renewal etc. there is also the
obligation of compulsory licensing if one does not meet the conditions.

Is Patent a Monopoly? This is a controversial issue because for one to be granted a patent, one has to
meet many standards. It is not really a monopoly like in other sectors but in this case one has to invent
something. Secondly besides being intelligent and meeting the basic standard, one has to be good in
business to secure market presence. When ones patent exclusive rights is limited in scope in terms of
duration a patent is not a perpetual monopoly and is only protected for 20 years and the protection is
not even exclusive.

One may suffer compulsory licensing anytime which means it is not exclusive.

Patents in the IP Monopoly

It has been argued that patents are the most important in IP and in many universities it is taught in a lot
of lectures as opposed to only about two for trademarks and copyright. The argument is because patents
involve inventions and the most sophisticated technologies. They also require long procedures and
thirdly it has been argued that protection of Patents is very high partly because of its sophistication.
There is a lot of protection for patents. Patents generally have the tendency to secure very high revenues
for the inventors, for example if somebody invented a vaccine for HIV this would be a goldmine. It is
unlike some areas of Copyright. Patents are the most controversial and notorious because in most cases
it deals with life and death issues as in HIV drugs.

Acording to Professor Donald Chisum Patents

Intellectual Property Law – Lecture 10

The patent problem arose when there was an exhibition in Paris in 1983 and there was need to protect
the exhibitors.

PATENT LAW IN KENYA

Trademark Independence came in 1966 – before that we applied 1911, 1956 UK Trademark Act

Patent Independence came in 1989

A dependent Patent System had the following problem

1. An inventor had to apply for protection in the UK, this undermined Kenya’s security and
sovereignty;
2. We expended or Kenya’s inventors expended a lot of money in seeking patent grant in the UK,
the lawyer had to travel to the UK and had to pay money;

3. There was a problem with technology transfer in the sense that once one disclosed their
information in UK, information was more available in UK than it was in Kenya so it was only people in the
UK who could easily access the information while Kenyans had to travel there.

4. The UK Patent System especially UK Act 1977 was regarded as largely inappropriate to the
interest of Kenya and other developing countries;

(a) UK Patent Act 1977 did not provide for protection for Biological innovations; there was a hot
debate on non-patentability of life forms, research by 1989 had shown that Kenya was making headway
in the area of Research and Development evidenced by the fact that KARI had done a lot of research on
crops and so had JKCAT, Life form was Kenya’s Forte where they felt that they had made a lot of
innovations;

(b) It was also argued that UK Patent Act 1977 did not protect Jua Kali utility models and Kenya
needed its own independent system to do this and this is in 1989. In 1988 we had exhibited what Kenya
was producing in the Jua Kali Sector the Nyayo Era Exhibition which coincided with Kenya enacting the
Intellectual Property Act

WHAT IS PATENTABILITY

What is a patentable invention – under IPA a patent is defined as a solution to a specific problem in
technology. It may be of two forms

1. Product e.g. aspirin which means that a person can repackage and recreate aspirin for other
purposes and patent it, may be one discovers a new use of aspirin for eg cancer, they can patent
aspirin as a cure for cancer and Bayer can still be manufacturing aspirin for the other diseases that
they invented it for like heart defects, one has to discover a new way of using a known product,
you can have the patent for the process.

Section 21 says that certain things are excluded from patents ab initio, plants are not patentable.
Discovery in America patent law means invention. Scientific theories are not patentable, for example
discovering a universal law of nature like the fact that water boils at a 100 degrees Celsius is not
patentable. Energy is neither destroyed or created but transferred.

2. Schemes, Rules, Methods of doing business – schemes of playing games such as soccer or
performing mental acts are not patentable, the utility is doubtful. For a long time the Law in US,
UK and Kenya used to argue that u cannot patent business methods. For example mali kwa mali
is not patentable. The argument is if one has a new way of doing business, they can be protected
under trademark. Around 1980 there was a lot of debate and mostly people wanted to be allowed
to patent business methods. There was a convergence of computer science and there was
development of software and internet business. In the case of Diamond v Diehr (1980) there
 were so many developments in software engineering and people wanted their inventions in
software protect and the US was saying that no you cannot patent software which was classified
as a logarithm you could only copyright software. After 1980 they were allowed to patent software
in Kenya it was in 1989 saying that a logarithms and computer programming were not patentable.
Diamond & Diehr were insisting that software could be patentable and Diamond v Chakarbaty
were saying that anything was patentable, in 1989 Kenya Industrial Act said that one could not
patent software but in 2001 the Kenya Act is saying that it is possible to both copyright and patent
software in Kenya. The one click patent was given to Amazon.com this was a way of clicking once
to access what you want.

3. Methods of treatment of human bodies or animals, these are not patentable, mere representation
of data or information is not patentable, public health using of molecules to cure disease is not
patentable and neither is gene therapy. Standard information is not patentable e.g. Ghai and
Mcauslan cannot patent Kenya’s getting Independence in 1963 though they have written about
it.
3. The reason why one does not want to protect the above list is because most of them are protected
under different regimes or other systems of law, discoveries of plants are protected by Plant
Breeders Rights, trade secrets are protected by Industrial Property etc.

Novelty must be absolute. How is novelty determined. There are three ways in Kenya.

(a) General Data Base of research at KIPI where one can research and see whether what one has
invented can be protected or whether it has been patented in Kenya;

(b) ARIPO based in Harare has another data base on what has been patented somewhere and it
helps member states with access to the database so that they can know what has been patented

© Patent African Cooperation Treaty entered into under the auspices of WIPO and where one wants
their invention to be protected in Kenya, KIPI will do but when one wants to patent in many other
countries ARIPO will protect one in English speaking Africa, Patents are territorial and is only protectable
only where it has been registered when one wants patent in Europe they can go to PCT. All these
organizations help the inventor with the data and also help patent offices with information to avoid
duplicating research. There is no worldwide patent and one has to designate the countries where they
are protected.

DOCTRINE OF DISCLOSURE

Duty to disclose invention to the Patent Office to get patent protection: The disclosure must be full
disclosure and must enable the PHOSITA to use the product. Obel is being bound to KIPI and he will be
granted a Patent but only after he makes full disclosure.
Where one discloses in a journal or newspaper without seeking protection, in some cases one may lose
novelty and at other times not due to full and enabling disclosure. Some of the scientific journals for
purposes of disclosures such as Lancet the Journal of Medicine is taken seriously, Nature Journal , New
England Journal of Medicine - A patent lawyer has to read these journals. Suppose one discloses in the
context of delivering samples in a confidential context? When one sends a colleague material under
confidential cover, is that disclosure? No it is not. The first person with an invention to get to the Patent
Office is the one who gets the Patent – in Kenya they have first past the post – philosophy and in some
countries researchers try to outsmart each other.

If Professor Obel is afraid of disclosing the Pearl Omega Formula, it is an unfounded fear or it can be
regarded as misplaced fear because under Kenya’s IPA one is protected and they are supposed to keep
the patent confidential. In Kenya we do not have the equivalent of the Section 6 of the Lesotho Patent
Act under which all officers of the patent office are bound not to disclose the information and that in case
they do they will suffer imprisonment, fine or both and it would thus seem that Professor Obel’s fears are
not all that misplaced. The fear is also well-placed because the Public Officer Ethics Act and the Common
Law Rules on privacy and protecting information and Copyright, Trade Secret, the Official Secrets Act all
of these Acts do not have a firm basis for protecting information disclosing to a Patent Officer by an
Inventor. On the other hand The Official Secrets Act, Public Officer Ethics Act, Common Law Rules as well
as copyright can actually be used to protect patent information. For example the information contained
under copyright so even Professor Obel needs protection, he can get protection under copyright, a patent
can have two forms of protection

1. Patent or product process – protected..

2. Disclosure of information, the claim, the description, the drawings which are all protected under
copyright.

One can argued both ways about protection of an invention.

Inventive Step

This is sometimes called non-obvious – it is not obvious to PHOSITA. Inventive step is UK-Kenya term
and for US it is Non-Obivousness. Non obvious does not mean that it must be complex, it could be a
very simple process. PHOSITA need not be a complicated scientist, he need not be Einstein he can be of
a lower standard than the inventor. PHOSITA can even be an unimaginative unskilled worker. But some
people like Lord Morton have argued that PHOSITA must not be a mechanical idiot but a mechanical
genius and this was the case in Gillette Razor. The halfway house is that PHOSITA must be a cross between
the genius and the idiot, intelligent enough who has some expertise in that specific field.

Industrial Applicability

Utility is the convergence between the intellectual and the property or commercial in Intellectual Property,
it brings the issues home. After we have invented, there is emphasis on utilitarianism and one has to
prove that an invention is useful. Something may appear useful but it may not be patent, moneychangers,
cannot patent their con-game, issues.
Reproducibility

This means that it is not good enough to reproduce a prototype or model, a product must have the ability
to be mass-produced to be useful to Kenyans and the world. It may be difficult to develop biological
models.

Exclusion

Section 37 – Right of Priority – the right of priority, one has duty to disclose whether there are other
inventions that are in the field that you have applied for. All the applications have to be sent within 12
months, one can seek priority to be granted a patent where they live even though they are aware that it
is patented elsewhere by somebody else. When one is an inventor they must disclose what other
inventions close to theirs that people have made and gotten protection elsewhere, an inventor buys time
before one comes to their market to file for patent. A Kenya may seek priority to be protected in Kenya
even though another inventor has filed papers somewhere

PATENT PROCEDURE

One has to name the Inventor

Name the Applicant

Description – the inventor must specifically describe their invention, give background art or background
technology.

Designation of the State

The best mode of working the patent must be stated. The cheapest, easiest most efficient way of working
the patent. How best can it be done. Include specifications and be clear on what you are claiming.
Specification should be accompanied by a drawing where appropriate, sometimes it may not be easy to
have a drawing. The significance of drawing is related to the Chinese Proverb that a picture is worth a
thousand words.

CLAIM

What exactly does one want to protect? East African Breweries v Castle

A claim may be broad or narrow and most inventors tend to make their claims very broad and use words
like all rights etc. this is not acceptable in many countries, in US they allow broad patent claims for certain
reasons

UNITY OF INVENTION

One is allowed to make as many patent applications as possible but each application must have a unity
of claim, if it is a writing instrument, patent it for writing but not as a beverage.

EXAMINATION AS TO SUBSTANCE:

EXAMINATION AS TO FORM
Has the doctrine of patentability been met

Amendment

Minor changes and not substantive changes.

Grant of Patent – have you fulfilled examination as to form and examination as to substance.

Intellectual Property Law – Lecture 11

PATENT INFRINGEMENT

What constitutes infringement?

The infringement can be strict/narrow or purposive/broad. In our Act we look at primary and secondary
infringement. Primary is where one counterfeits a process e.g. where Smithkline has Panadol another
person makes a paracetemol and calls it Paranol this is outright infringement. Secondary is where one
actually encourages someone else to use a process that has already been patented as in the case of
Catnic. Secondary infringement is where there is already a registered patent or a patent waiting to be
patent and another person wants to patent the same kind of product.

REMEDIES/DEFENCES & SANCTIONS

More often than not these are clearly set out in the IP Act of 2001 and there are civil, criminal remedies.
The first thing a person does is to get an injunction either interim or permanent. Permanent if the
infringement is found to be subsisting.

Damages

Under Section 106(b) of the IP Act of 2001 the main purpose of granting damages is to compensate the
Plaintiff done by the patent infringor, punitive damages are only awarded where the act amounts to
criminal activity but courts usually give compensatory damages. The plaintiff is entitled to any other
remedy provided by the law.

Delivery up – is when the infringer is ordered to deliver all the counterfeit or infringing material to the
court and the court disposes the infringing material as it deems fit.

Criminal Sanctions:

This are all available under the IP Act and in Kenya what we have for example the find of KShs. 50,000/-
the amount the infringer makes is much more than the fine and therefore it does not seem to be a
deterrent. One of the issues that have been raised in this regard is that the fines and the sentences which
are between 3-5 years don’t act as a deterrent. This is an Act passed in 2001 and we hope KIPI will address
this issue.. it is noteworthy that a lot of jurisdiction do not criminalize Intellectual Property but in Kenya
there has always been criminal sanctions for infringement. There is a big problem however with the
enforcement of these rights probably because of the intangible nature if Intellectual Property.

Bio-technology

This has in the recent past assumed a significant role with regard to medicine, agriculture where one can
modify organisms to increase the yield of plants etc. the IP Act has certain things excluded from
patentability and one of them is the issue of life forms. In the US practically anything under the sun can
be patented. O ne of the leading cases is Diamond v Chakarbaty and one of he main issues here was
whether artificially created life forms can be patented. At first they agree to patent the process that
created the bacteria but refused to patent the bacterium itself at appeal they did agree to patent the
bacterium that was being created from the process.

Plant Varieties are protected under the Seeds Varieties Act, to patent a new breed of plant, it has to be
new, it has to be distinct meaning it has to be distinguishable from any other existing variety. It has to
be uniform so there cannot be variance in the new breed. It has to be stable meaning every time it is
propagated it does not mutate i.e. it maintains the same characteristics. The opposition of patenting life
forms is a moral, religious and ethical reason and not legal.

Bio-tech companies rely on genetic resources that are found within the tropics so essentially they take a
life form from here and go to the US and patent it stopping people from the tropics who can patent it.
For example they took the Basmati seed, modified it and patented it in the US amid protests from Asia.
How do we share benefits that accrue from genetic resources? Who gets paid? One of the most
interesting cases is the Hoodia case of South Africa SCIR carried out some research on the Hoodia Plant
that had hunger depressant properties and came up with an anti-obesity drug that were used by the
Koikoi of the Kalahari. SCI have now agreed to give 10% to the Sun and Koikoi. Patenting of life forms
is complex. At the moment WIPO has created a forum where they meet once a year where the various
country are supposed to come up with ways to deal with issues of genetic resources and traditional
knowledge.

TRADE MARKS

™ - What is the difference between a trade mark and a trade name? trademark falls under the realm of
Intellectual Property. Since colonial times we have had trademark registered from as early as 1901 but
the system then was to register your trademark in UK for it to have value in Kenya.

™ Can be anything, combination of names, combination of colours, designs all these can make a
trademark. Difference between ™ and ® some people will register a mark and not necessary for the
purpose of trademark. Trademarks are normally territorial for the reason that they are registered in each
country. If one registers Mwarsie for shoes, someone else can go and register the same trademark in
Ethiopia. A trademark like Coca cola is universal to the point of being generic.

Trade names are registered with the registrar of companies to use in the course of trade. One can register
a trade name if they have used it for a while as a trademark. Certification marks give certification as to
the quality of the work for example the KBS logo shows that the quality is approved by Kenya Bureau of
Standards.

Use of Trademark

1. To distinguish the goods of one traded from those of another.

2. It refers to a particular quality more so like designer quality, like Gucci, Channel etc, the trademarks
are associated with quality.

3. Trademark protects the investment of the inventor, labour capital and goodwill, this attribute has
been questioned that it has no legal basis.

4. Identifying the origin of a product i.e when you see Omo you associate it with Unilever. This issue has
become redundant in scholarly terms because of the issue of franchising e.g. Nandos in Kenya makes
different tasting chicken from the Nandos in South Africa.

5. To promote the marketing and sale of a product. When one has a trademark.

According to David Bainbridge the purpose of a trademark are the distinguishing aspect, protection of
goodwill and to protect the consumers against confusion.

Registerbility of trademarks:

Sections 20-22 of Trademarks Act are on registerbility.

1. Absolute Grounds – there are some grounds where the registrar has no discretion i.e. Kenya Court of
Arms is not registerable not matter what you do it is not allowed to register. There are also names that
one cannot register as ™ like University of Nairobi, African Union etc.

2 Relative Grounds: the registrar may accept or refuse the registration. If the ™ is likely to cause
confusion, the registrar will refuse to register it, if it is confusingly similar the registrar will refuse to register
the mark, where the mark is misleading for example when one says Kilimanjaro Oranges where the origin
is from Meru, this is lying and confusing as to the origin of the goods. Where the mark is descriptive the
registrar will refuse to register it since it describes what one is trying to sell and may exclude a lot of
people from using the mark in future. The case of Wagamama v city centre restaurant – Wagamama was
selling some kind of cuisine and then some Indian came up with Rajamama selling cuisine and
Wagamama was arguing that this was likely to confuse clients. The court held that there was a likelihood
of confusion by association since one is likely to associate Rajamama with Wagamama one may confuse
and thing they are one and the same people and Wagamama was given an injunction. This is likelihood
of confusion through the doctrine of confusion by association.

3. Marks Capable of Distinguishing one product from another: ExE for Flour or Vaseline for Petroleum
Jelly. These ™ can distinguish what one is buying. Distinctive marks are registerable under Part A and
Part B for those that are marks capable of distinguishing products

Registration Procedure:

Read Trademarks Act Saudi Arabia v Saudia Kenya Enterprises

Whatever ™ one registers for a certain product they cannot deviate and later register the same ™ for
other goods. The use of ™ has to be in good faith. Read

Passing-Off

Brooke Bond v Chai, BAT v Cut Tobacco, Hack Babies v Oper Pharmacies

Making a trademark generic

Rights of a ™ owner

Rights to use the ™ if a 3rd party uses the ™ to further his own interests, it amounts to infringement.

If one uses a ™ that is confusingly similar to the ™ of another, refer to Nivea v Nivelin or for example in
Kenya we have panadol and in South Africa we have Panado if one registers Panado in Kenya there is a
likelihood of confusion.

Parallel Importation

Parallel Importation – the principle of exhaustion – once you have released your goods to the market,
you have no control and it can be used by an infinite number of people at the same time. But the principle
can be defined as National meaning once goods are sold within Kenya one has exhausted the first right,
so a 3rd party cannot take the goods and sell them in Tanzania. International exhaustion is to the extent
that once the goods are in the market, you cannot stop other people from selling the goods, the goods
cannot be reproduced but they can be redistributed. Refer to the Silhouette Case silhouette were
manufacturers of designer shades. The Defendant was based in Vienna and used to sell discount frames,
after a while Silhouette sold some old fashioned frames to a buyer in Bulgaria and the defendant went to
Bulgaria, bought the frames and brought them to sell at a discount and Silhouette went to court. The
court held that since Bulgaria was out of the EU (regional exhaustion) the importation and subsequent
sale by the defendant amounted to infringement of the Silhouette ™.

FRANCHISE & LICENSING WITH REGARD TO ™

Oil Companies

FoodChains

Steers
Kenchic

Intellectual Property Law – Lecture 12

COPYRIGHT & RELATED RIGHTS

People who compose their own music have primary rights to the copyright while those who perform have
secondary derivative or related rights to copyright.

Berne Convention of 1886

Right of author to be recognized as the author of his work

Right of paternity

Parody and satire are not infringement of ©

TRIPS Agreement incorporated articles 1-24 of the Berne Convention excluding only moral rights. US
does not recognize moral rights, they can take your music and mutilate it.

COPYRIGHT

Copyright © protects the original expression of ideas, not the ideas themselves. It is free and
automatically safeguards your original works of art and literature, music, films, sound recording,
broadcasts and computer programs from copying and certain other uses.

Under the © Act work has to be it has to be original and reduced to material form, does it contradict
Section 5 of the Berne Convention which says that there should be no formality.

Original means one has to show sufficient skill and judgment. Refer to the case of Fiest Publications v
Rural Rural was a telephone company and had a telephone directory Fiest a Yellow pages company. Feist
Publications, Inc., v. Rural Telephone Service Co., Inc., 499 U.S. 340 (1991), commonly called just Feist v.
Rural, was a United States Supreme Court case in which Feist copied information from Rural’s telephone
listings to include in its own, after Rural refused to license the information. Rural sued for copyright
infringement. The Court ruled that information contained in Rural’s phone directory was not
copyrightable, and that therefore no infringement existed. The questions for determination were can
there be copyright in facts the answer was no. Had Rural exercised sufficient skill and judgment to come
up with their directory, they had but the information in the directory was not copyrightable. This is the
definitive guide for originality. The Judges stated “The primary objective of © is not to reward the owner
to promote science and useful art. To this end © assures the author the right to their original expression
but also encourages others to built freely on the ideas and information conveyed by the work.”

Under the Copyright Act 2001 originality is stated in Section (3) as A literary, musical or artistic work shall
not be eligible for copyright unless

(a) sufficient effort has been expended on making the work to give it an original character; and
(b) the work has been written down, recorded or otherwise reduced to material form.

Creative ideas are expressed through books, drawings, sculptures, drawings, photographs. Computer
programs are protected as literally works, why?

Copyright protects “original works of authorship” that are fixed in a tangible form of expression. The
fixation need not be directly perceptible so long as it may be communicated with the aid of a machine or
device. Copyrightable works include the following categories:

Literary works;

Musical works, including any accompanying words

Dramatic works, including any accompanying music

Pantomimes and choreographic works

Pictorial, graphic, and sculptural works

Motion pictures and other audiovisual works

Sound recordings

Architectural works

These categories should be viewed broadly. For example, computer programs and most “compilations”
may be registered as “literary works”; maps and architectural plans may be registered as “pictorial,
graphic, and sculptural works.”

DURATION OF COPYRIGHT

© Act in Kenya grants © to the © owners. It subsists for the life of the owner plus 50 years. In case of
sound records, they compute 50 years after the year in which the first recording was made. The problem
with duration is that most computer programs have a very short life span and there is no need of
protecting them for 50 years plus. Anonymous Works: © subsists for the duration starting from the year
of publication which is strictly 50 years but if the author decides to disclose his Identity before he dies,
then it will persist for his lifetime and then another 50 years after the author’s death. These are called
pseudononymous works. 50 years is a short time and there are 2 dimensional characters like Mickey
Mouse and the Looney Tunes and their time was about to expire in the 2004, what the industry leaders
did was to lobby Congress to extend the duration of copyright another 20 years which now made it the
life of the author plus 70 years. Music produced in US prior to 1976 Act is already in public domain.

It does not matter what kind of work it is, it may be a fantastic paper for the law journal but the subject
matter depends on whether it falls on the category of literary, artistic or musical works.

Copyright Act 2001 Section 22.(1) Subject to this section, the following works shall be eligible for
copyright

(a)
Literary works;

(b)

Musical works;

Artistic works;

(d)

Audio-visual works;

Sound recordings; and

(f)

Broadcasts.

A broadcast shall not be eligible for copyright until it has been broadcast.

(3) A literary, musical or artistic work shall not be eligible for copyright unless

(a) sufficient effort has been expended on making the work to give it an original character; and

(b) the work has been written down, recorded or otherwise reduced to material form.

(4) A work shall not be ineligible for copyright by reason only that the making of the work, or the doing
of any act in relation to the work, involved an infringement of copyright in some other work.

Related rights for a long time were not included in copyright because it was argued they lacked creativity.
Broadcasting Houses only get fringe rights for the investment they have made. Broadcasting Stations
have copyright to broadcast their own programs. They only have primary rights in those programs that
they have themselves produced like ‘Wingu la Moto” NTV would have the primary rights to this programs.
But they get related rights to protect their investments for broadcasting other people’s work.

The authors of a joint work are co-owners of the copyright in the work, unless there is an agreement to
the contrary.

Copyright in each separate contribution to a periodical or other collective work is distinct from copyright
in the collective work as a whole and vests initially with the author of the contribution.

Two General Principles

Mere ownership of a book, manuscript, painting, or any other copy or phonorecord does not give the
possessor the copyright. The law provides that transfer of ownership of any material object that embodies
a protected work does not of itself convey any rights in the copyright.
Minors may claim copyright, but state laws may regulate the business dealings involving copyrights
owned by minors. For information on relevant state laws, consult an attorney.

RIGHTS OF COPYRIGHT OWNER

Economic Rights – distribute, reproduce sell reproduce broadcast or sell the works to the public, placing
the work in a way which can be achieved by the later public.

Moral Rights

Section is very clear as to what rights the owner of copyright has.

Copyright Act

26. 1) Copyright in a literary, musical or artistic work or audio-visual work shall be the exclusive right to
control the doing in Kenya of any of the following acts, namely the reproduction in any material form of
the original work or its translation or. Adaptation, the distribution to the public of the work by way of
sale, rental, lease, hire, loan, importation or similar arrangement, and the communication to the public
and the broadcasting of the whole work or a substantial part thereof, either in its original form or in any
form recognizably derived from the original; but copyright in any such work shall not include the right to
control

(a) the doing of any of those acts by way of fair dealing for the purposes of scientific research, private
use, criticism or review, or the reporting of current events subject to acknowledgement of the source;

(b) the reproduction and distribution of copies, or the inclusion in a film or broadcast, of an artistic work
situated in a place where it can be viewed by the public;

© the incidental inclusion of an artistic work. In a film or broadcast;

(d) the inclusion in a collection of literary or musical works of not more than two short passages from the
work in question if the collection is designed for use in a school registered under the Education Act or
any university established by or. Under any written law and includes an acknowledgement of the title and
authorship of the work;

€ the broadcasting of a work if the broadcast is intended to be used for purposes of systematic
instructional activities;

(f) the reproduction of a broadcast referred to in the preceding paragraph and the use of that
reproduction in a school registered under the Education Act or any university established by or under any
written law for the systematic instructional activities of any such school or university;

(g) the reading or recitation in public or in a broadcast by one person of any reasonable extract from a
published literary work if accompanied by a sufficient acknowledgement of the author;

(h) the reproduction of a work by or under the direction or control of the Government, or by such public
libraries, non-commercial documentation centres and scientific institutions as may be prescribed, where
the reproduction is in the public interest and no revenue is derived there from;
(i) the reproduction of a work by or under the direction or control of a broadcasting authority where the
reproduction or copies thereof are intended exclusively for broadcast by that broadcasting authority
authorised by the copyright owner of the work and are destroyed before the end of the period of six
calendar months immediately following the making of the reproduction or such longer period as may be
agreed between the broadcasting authority and the owner of the relevant part of the copyright in the
work; and any reproduction of a work made under this paragraph may, if it is of an exceptional
documentary nature, be preserved in the archives of the broadcasting authority, but, subject to the
provisions of this Act, shall not be used for broadcasting or for any other purpose without the consent of
the owner of the relevant part of the copyright in the work;

(j) the broadcasting of a literary, musical or artistic work or audio-visual works already lawfully made
accessible to the public with which. No licensing body referred to under section 46 is concerned:

(1) Provided that subject to the provisions of this section the owner of the broadcasting right in the work
receives fair compensation determined, in the absence of agreement, by the competent authority
appointed under section 48; and any use made of a work for the purpose of a judicial proceeding or of
any report of any such proceeding.

2) Copyright in a work of architecture shall also include the exclusive right to control the erection of any
building which reproduces the whole or a substantial part of the work either in its original form or in any
form recognizably derived from the original; but the copyright in any such work shall not include the right
to control the reconstruction of a building to which that copyright relates in the same style as the original.

(3) Copyright of a computer program shall not constitute fair dealing for the purposes of paragraph (a)
of subsection (1).

(4) Notwithstanding the provisions of subsection (3), a person who is in lawful possession of a computer
program may do any of the following acts without the authorization of the right holder whereby copies
are necessary for the use of the computer program In accordance with its intended purpose

(a) to make copies of the program to the extent necessary to correct errors; or

(b) to make a back-up copy; or

© for the purpose of testing a program to determine its suitability for the person’s use; or

(d) for any purpose that is not prohibited under any license or agreement whereby the person is

Permitted to use the program.

(5) The authorization of the right holder of the program shall not be required to decompile the program,
convert the program into a version expressed in different programming language, code, notation for the
purpose of obtaining information needed to enable the program to operate with other programs.

(6) Any copies made pursuant to this section shall be used only for the purpose for which it was made
and shall be destroyed when the person’s possession of the computer program ceases to be lawful.
The copyright Act 2001 gives a narrow access to educational material

Subsection (3) is to the effect that one may be allowed to make a backup copy of a computer program
to correct existing errors.

OWNERSHIP & INFRINGEMENT

PUBLIC DOMAIN

FORKLORE

Intellectual Property Law – Lecture 13 11.7.05

© is about subsistence and various rights and obligations

Subsistence is divided into doctrine of originality and doctrine of materiality. No work shall be eligible for
copyright unless it is original and embodied in material form. Section 22(3) of © Act.

Feist v Rural on originality – under originality we have the doctrine of independence of creation works
can be similar thematically but both have © this is due to independence of creation. In the song Malaika
over 57 versions and they all have ©.

Sound Systems Africa and Kalamazoo – Kenyan case on originality.

Feist suggests that originality can be close to creativity, this is a problematic relationship which means
that the author of original work has to be creative. This is not obvious in that in the case of Bleistein a
Judge commented that lawyers and judges should not be asked to be judges or artistic creativity, to
decide whether art is protectable because it is creative, they are not trained in that area. Original may
not necessary mean creative and creative may require judgment in terms of artistic value. Our © Section
2 says that irrespective of artistic, irrespective of originality”artistic work” means, irrespective of artistic
quality, any of the following, or works similar thereto

The point is that don’t be a judge in creativity, this cannot be the entry point. First entry point is
originality.

What of life broadcasts? Broadcasts are published material, it is covered by ©.

Formalities about © - © notation, deposit –

Under Article 5 of the Berne Convention © should subsist without undue insistence or formalities or
procedures. Some of the procedures that are followed in some jurisdictions include © notice or ©
notation, secondly registration and thirdly deposit.

© notice – America historically insisted on all the 3 formalities up to about 1969 and in one case a ©
owner had placed the c in a pentagon. In a subsequent © infringement case it was held that that work
had fallen into the public domain which means it was not protected. It had fallen in public domain
because it was not protected. 1st March 1989 Berne was implemented in America and took effect under
American Law. They abandon the procedure of insisting on 3 formalities.
Registration America demanded registration with the Library of Congress to be protected. If © is
infringed one can get lawyers fees if your © is registered. But since 1989 America does not insist on
notation, registration or deposit. But there is a catch if ones work is infringed, and it is not registered,
one cannot be awarded lawyers fees. It is a policy decision to encourage registration, in other words it is
a way of encouraging registration without making it mandatory.

Deposit – when one has for example a book, one may send two copies to be deposited there which is
similar to deposit of books and newspapers in Kenya under the Newspapers and Books Act Cap 11. The
American system is for recording what has been published.

In 2001 there were fundamental reforms to Kenya © law. Some of these reforms including rephrasing
and using better expressions and phrases as compared to © Act Cap 130. Sections 6-12 dealing with
rights were difficult to read, one could not understand the rights and limits or exceptions. Secondly this
Act now deals with software on a much better way. Cap 130 before used to say that computer programs
must also be protected. 2001 Act is clearly on software and indicates the digital rights under Section 35.
The Act also deals with performances in a better way and gives civil rights and remedies. The Act deals
with authentication devices under Section 35 which are sometimes called holograms. Institutional
framework – © Act 2001 has a clearer Institutional framework than Cap 130, Cap 130 did not have its
jurisdiction and mandate clearly spelt out. 2001 has now established a © board to help with policy
formulation, registration and documentation of copyrighted materials etc. © Board has also the power
to register Collective Management Organisations (CMOs) these are organizations which help to collect
royalties and distribute them to their members. For example ASCAR in the US is SMO and BMI Broadcast
Music Inc. in Kenya CMOs are not registered it would be MCK Music Copyright of Kenya which is not
registered and they are yet to apply under Section 46 of the Copyright. KOPIKEN which is modelled and
the Scandinavian Model of reprographic rights organizations such as KOPINOR. A reprographic rights
organization is an organizations that looks around and notices people who are copyrighting material and
not paying royalties, they may offer to pay a site licence to those who photocopy material a lot e.g.
University of Nairobi photocopies a lot books for students they may offer to give the University
reprographic rights at a fee. SPAK (Society of Performing Artists of Kenya) is trying to apply in Kenya to
give reprographic rights. A copyright Board has the power to appoint © inspectors, they appoint and
train.

Forklore – Traditional Cultural Expression (TCE) new term by WIPO. Folklore was introduced into Kenya
© in 1975 through an amendment which added Section 18. That Section gave the Attorney General the
power to regulate the use of TCE particularly if it was for commercial purposes. Sections 2 and 49(d) of
the © Act 2001 embody provisions on © and empower the Attorney General to make regulations in this
respect. The © regulations 2005 now embody regulations regarding fees payable for the use of TCE.
Some of the outstanding issues in this discourse are

Definition of folklore seems to be suggesting that it is inherited from previous generations, that it is
unmodified, static. Secondly there are complaints that it is not very clear in whom TCE vests i.e. is it in
the individual performer, the community as a whole, the country. For example a Luhya dancing and
singing Mwana wa Mberi who owns the song. Ghana has vested such rights in the State and the State
can get money and plough it back in the community concern. The issue of cross border communities
arises on who benefits.

What is the duration of protection? Most laws in Africa say that TCE are protected to eternity, as long as
the community exists.

TCE is conceptually wishy-washy and a bit of hodge-podge to place it in the context of © law.

Q. 42 What are some of the legal and related practical problems in protecting TCE/Folklore in Kenya?

Where we have the community as a creator – so where is individual creativity

The issue of in whom does the right vest

What is the duration, of TCE.

Rights in Performances –

Overlap and Fragmentation – there are two lessons in IP

1. Don’t always try to fix any problem in IP as some of the problems may lie elsewhere for example News,
TCEs, not everything we value in life is intellectual property;

2 The IP Doctrines sometimes merge or converge; for example Heineman Publishers – EAEP took over
from Heineman but Heineman was insisting that EAEP could not use their ™ Heineman were publishers
but Heineman was also a ™. Within © we still have overlaps for example the Merchants of Venice by
William Shakespeare was translated by Julius Nyerere into Mabepari was Venisi, the fact that it was
changed and adopted from a big stage to a small theatre, what if someone was to record where they are
recording Mabepari? One would be infringing a lot of rights. The point is that these are adapted works
or derivative works and when work is derived from another, one must seek permission from the previous
owner and secondly one must acknowledge the work. In the Titanic, there is the movie and then there is
music, overall there is audiovisual work with audiovisual rights but it can be fragmented. Leonardo Di
Caprio cannot claim rights on the song My Heart will go on but Celine Dion can, Kate Winslet can claim
rights in the song as she performed the song, Celine Dion cannot claim rights in the Movie as she did not
act in the movie.

Difference between producer and director in © law? A producer is the person who does the logistical
work and puts the money to its use. A director in © is the person who exercises the creativity and
originality. In IP we say the Director can claim © and in some movies in most movies the © vests in the
director.

There are certain instances about reporters, lecturers, students etc.

Correspondence: Reporters and Editors, those who report would have © if the material they report is
reproduced a lot with little editing then they own the © but if there is a lot of editorial input, the editor
may claim the © it all depends on the contract. There is a rule that the first owner of © is the owner and
therefore the reporter would be the owner, however the editor may own some © if he has made
substantial corrections or editions but a lot of these matters are regulated by contract. Section 31 © may
be transferred under contract. So in many publishing houses reporters and editors sign the contract that
whatever work they do the © shall vest with the company. “your works are works made for hire” this is
a concept used a lot in America about works made for hire. They call an Actor work for hire as they do
not want actors to own © but they wanted the works to belong to the studio.

The Ahmed Ndalu Conundrum who is an author and who is the first owner of © Ahmed was a teacher
who was Kiswahili associated with Kenya Institute of Education and belonged to the Kiswahili Subject
Panel he was also an author and published 5 books and he wanted the books published and to be used
in schools so there was a conflict of interest. He decided that the best thing to do was to publish the
books in a name other than his own so he approached a man by the name of Johnston Makau who was
working for Thomas Nelson Publishers. Makau informed him he was about to form a company soon
where Ndalu could publish the books. Ndalu signed a contract and Makau paid Ndalu KShs. 273,000/-
the books were in Makau’s name and were very successful. Later on Ndalu left KIE and wanted the books
published in his name but Makau was now alleging that Ndalu was not the author but only a consultant
and had been paid KShs. 273,000 for consultancy. The issue was addressed by the Judge as follows: the
Judge concluded that the Defendant did not strike him as the author a ruling that was not based on facts.

Issues, Facts, Analysis, Conclusion formula

INFRINGEMENT OF ©

Use of work or dealing with work which is under ©

It may be proved by

1. There must be similarity – are the two works? – the issue is that similarity is a matter of fact and
similarity is difficult in music.

2. There must be evidence of access – is there evidence that one person accessed the work of
another, dates are required.

3. The material copied must itself be copyrightable – is the material copied copyrightable not all
copying is infringing, Feist v Rural, INS v AP – one organization is in the East Coast and the other in the
West Coast 3 hours difference. One copies news from East Coast and sends them to the West Coast. The
issue was had they copied, yes, were they infringing no! Prof Melville was one of foremost authority in ©
and Prof Goldstein differed on that Melville insisted that if you have copied you have infringed but
Goldstein argued that not or copying is copyrightable the Goldstein test.
DEFENCES TO COPYRIGHT INFRINGEMENT

1. © does not subsist in the work i.e. if it is not original and its plain news or plain facts. In 1991
when the Supreme Court delivered the Feist Decision the Germans and the Europeans were of the opinion
that the US was going to kill the © industry. Collecting data is nothing it is not copyrightable and the
Europeans tried to protect their databases since it is argued that databases do not have originality. Our
Section 2 on defining literary works is not very good. This section is suggesting to us that ordinary data
can be protected under © and this is not good.

2. Fair dealing: this is defined under Section 26(1) of the © Act 2001 as – here © where one uses
a work for criticism or review, private use

Study Section 26-29 on fair-dealing and Section 2 on definition. Fair-dealing the exceptions to © are
listed and named by Statute under Section 26(1) fair-dealing is scientific research, private use, criticism
or review or the reporting of current events subject to acknowledgement of the source,

Section 26. (1) Copyright in a literary, musical or artistic work or audio-visual work shall be the exclusive
right to control the doing in Kenya of any of the following acts, namely the reproduction in any material
form of the original work or its translation or. Adaptation, the distribution to the public of the work by
way of sale, rental, lease, hire, loan, importation or similar arrangement, and the communication to the
public and the broadcasting of the whole work or a substantial part thereof, either in its original form or
in any form recognizably derived from the original; but copyright in any such work shall not include the
right to control

(a) the doing of any of those acts by way of fair dealing for the purposes of scientific research, private
use, criticism or review, or the reporting of current events subject to acknowledgement of the source;

(b) the reproduction and distribution of copies, or the inclusion in a film or broadcast, of an artistic work
situated in a place where it can be viewed by the public;

© the incidental inclusion of an artistic work. In a film or broadcast;

(d) the inclusion in a collection of literary or musical works of not more than two short passages from the
work in question if the collection is designed for use in a school registered under the Education Act or
any university established by or. Under any written law and includes an acknowledgement of the title and
authorship of the work;

€ the broadcasting of a work if the broadcast is intended to be used for purposes of systematic
instructional activities;

(f) the reproduction of a broadcast referred to in the preceding paragraph and the use of that
reproduction in a school registered under the Education Act or any university established by or under any
written law for the systematic instructional activities of any such school or university;
(g) the reading or recitation in public or in a broadcast by one person of any reasonable extract from a
published literary work if accompanied by a sufficient acknowledgement of the author;

(h) the reproduction of a work by or under the direction or control of the Government, or by such public
libraries, non-commercial documentation centres and scientific institutions as may be prescribed, where
the reproduction is in the public interest and no revenue is derived there from;

(i) the reproduction of a work by or under the direction or control of a broadcasting authority where the
reproduction or copies thereof are intended exclusively for broadcast by that broadcasting authority
authorised by the copyright owner of the work and are destroyed before the end of the period of six
calendar months immediately following the making of the reproduction or such longer period as may be
agreed between the broadcasting authority and the owner of the relevant part of the copyright in the
work; and any reproduction of a work made under this paragraph may, if it is of an exceptional
documentary nature, be preserved in the archives of the broadcasting authority, but, subject to the
provisions of this Act, shall not be used for broadcasting or for any other purpose without the consent of
the owner of the relevant part of the copyright in the work;

(j) the broadcasting of a literary, musical or artistic work or audio-visual works already lawfully made
accessible to the public with which. No licensing body referred to under section 46 is concerned:

(1) Provided that subject to the provisions of this section the owner of the broadcasting right in the work
receives fair compensation determined, in the absence of agreement, by the competent authority
appointed under section 48; and any use made of a work for the purpose of a judicial proceeding or of
any report of any such proceeding.

(2) Copyright in a work of architecture shall also include the exclusive right to control the erection of any
building which reproduces the whole or a substantial part of the work either in its original form or in any
form recognizably derived from the original; but the copyright in any such work shall not include the right
to control the reconstruction of a building to which that copyright relates in the same style as the original.

(3) Copyright of a computer program shall not constitute fair dealing for the purposes of paragraph (a)
of subsection (1).

(4) Notwithstanding the provisions of subsection (3), a person who is in lawful possession of a computer
program may do any of the following acts without the authorization of the right holder whereby copies
are necessary for the use of the computer program In accordance with its intended purpose

(a) to make copies of the program to the extent necessary to correct errors; or

(b) to make a back-up copy; or

© for the purpose of testing a program to determine its suitability for the person’s use; or

(d) for any purpose that is not prohibited under any license or agreement whereby the person is permitted
to use the program.
(5) The authorization of the right holder of the program shall not be required to decompile the
program, convert the program into a version expressed in different programming language, code,
notation for the purpose of obtaining information needed to enable the program to operate with other
programs.

(6) Any copies made pursuant to this section shall be used only for the purpose for which it was made
and shall be destroyed when the person’s possession of the computer program ceases to be lawful

Fair-dealings are based on the transaction cost theory and the freedom of expression theory it is argued
that is expensive to go and seek permission from authors to be able to quote them in class for example
that would be under freedom of expression theory.

Scientific research, private use, private or public is determined by composition of audience, if its only
family its private if there are strangers it becomes public. Nature of the place and composition of the
place must be private if there is to be no © infringement.

To use music using MP3 to use personally you are not infringing. You are not violating © but if you send
it to another people you will be infringing, this is because of the private use issue (Section 26(1) © Act
2001. End users as of now are not criminals as of now.

There can be a breach of moral right if the work is unnecessarily disparaged. It can end up bordering on
defamation – this is under criticism.

If we use someone’s work in reporting events, we must acknowledge.

When filming and one captures a piece of work that is ©? Has one infringed © no. incidental inclusion
is not infringement. But if one goes to an Art Exhibition and films it then they will be infringing.

The Issue of short passage

Fair-dealing is the language used in Berne, UK and Kenyan Law. It is based on statute. The conduct must
be excused or exempted by statute

Fair-use is a similar term but not identical mainly used in the US © Law. It is mainly based on four fair
use factors under the US © Act 1976 Sections 106 – 108.

These include the nature of the work and the market of the work.
If one is criticizing are they replacing the other ones market. Gerry Ford Memoirs Case is a good example.

Consent – in most areas of law apart from general criminal law where consent is not a defence, in ©
infringement, consent can be a defence.

Public interest works in various way to help someone accused of infringement. If someone copied works
and the authors claimed that their © were infringed and a person argued that the works were violent,
immoral, this could be a defence.

In Spycatcher Peter Wright – the British said they owned the © regarding Falklands War.

What does it mean when ones work is not protected in the public interest. There is no register and this
may just mean that when one complains that their work is infringed, they will not get protection. This
defence varies from one case to another.

Compulsory licensing is a condition of © law.

Public domain or the commons.

What are some of the legal and related practical problems in protection and promoting of folklore.

Intellectual Property Law – Lecture 14

Trade Secrets:

Sometimes its called technical knowhow but TRIPS calls it undisclosed information. It may relate to any
formula, pattern, technical process, technical process, manufacturing process or compilation of
information which can be the subject of trade secrets if it gives the owner a competitive edge over his
competitors.

1. The information is kept secret in the sense that it is not generally known or disclosed to the public. If
it is stolen from the owner the owner is protected but if the owner discloses, there is no protections.

2. The information or data has commercial value because of the secrecy, client lists,

3. The owner of the secret must take reasonable measures to ensure that the information remains secret
or confidential. Article 39 of TRIPS treats Trade Secrets as a negative rather than a positive right in the
sense that where some information is required by the State for the grant of patents or in the course of
approving agricultural and chemical products, such information should be kept secret by the State agency
to protect it from unfair commercial use.

Where the information is in the nature of trade secrets i.e. where one has information they want to keep
confidential TRIP is urging that the information be protected.
There are many mechanisms through which information may be protected signing of confidential
agreements which are common in Holy wood, in Pharmaceutical and Software industries

Putting employees and others who are privy to information on specific contracts apart from the non-
disclosure clause in the employment agreement. There should be a policy document that regulates this.

Putting cautionary warning and signs is very important. Some documents are confidential.

There is new information which may be confidential and which is learnt in the process of employment
this information can be used elsewhere without infringing the Trade Secrets if the information is learnt as
part of skill and imparted on trainees and apprentices but they cannot steal a client list but they can use
what they have learnt.

One of the problems with TS is that it limits mobility of employees. IP system generally is supposed to
facilitate sharing of information but TS tends to limit sharing and tends to celebrate non-disclosure.
Protection is eternal as long as one does not want to disclose.

RIGHT OF PUBLICITY

The right of publicity is the individual right to control the commercial exploitation of their identity and
identity means voice, image, likeness and persona

Rights of Publicity developed largely from privacy rights in the United States and Privacy Rights is the
protection of the person’s space, a person’s body or persona from intrusion..

It Is similar but identical to moral rights in ©. It is also similar to the law of defamation which is for
protecting the persona and reputation. Right of publicity is mainly developed in California and New York.
These are the States with a highly developed entertainment industries. This is not a very well developed
system in the rest of the world.

JFK was a hero – Robert Kennedy was a presidential candidate when he was assassinated in 1968. Princess
Diana was a cultural icon.

Celebrity – must it be Disney-ised (where one uses the name in a commercial sense) or should it be
Kennedy-ised (the sense in which one uses a name in a social context)

Right of Publicity has not developed in Kenya.

Issues of advisers and lack of advisors promoters, agents, issue of lawyers.

REVISION

What are some of the problems associated with the right of publicity in Kenya?

™ under TRIPS there is no serious preference on whether registration of use is the more important thing.
Countries may work around those two. S.5 one is granted passing off where they have developed
goodwill. Kenya follows the doctrine of marks are registered because they are distinctive and capable of
distinguishing the product. America just calls it distinctive. The doctrine of distinctiveness is equal to
doctrine of originality under © and Novelty/Inventive Step in Patent law. A distinctive mark is generally
one of which is not descriptive and secondly is not generic and is also not misdescriptive.

A descriptive mark Is like Quencher the Splash.

The question to ask oneself is what is the mark and what is the product designated for example Radio
waves for an FM Station.

Generic are words/marks for example the mark on the Mercedes is a mark, the name Mercedes itself is a
mark and even the numerical 500 SLC is a mark. Generic is where the mark represents the general line of
products.

You are not supposed to own English words, when numbers are associated with a particular product, they
become distinctive like 504 – describes a certain car.

Our ™ sort of works only in the English language for example Urembo Beauty Salon the name is
descriptive yet registered because it is in Kiswahili.

Famous notorious marks have to be protected no matter where they are. McDonalds wherever they are
found.

Traditional ™ law focussed on confusion – is a name or mark confusing? What is the mark? What is the
product? When one has identical marks for identical products, the registrar should not register the marks
but if the marks are similar for different products, then they may be registered. Where the marks are
similar for like products the registrar should use his discretion.

Americans have developed the concept of dilution whereby the distinction of a mark may be lost by being
used by everybody. Blurring is where it is not clear what the mark stands for and tarnishing is where
something bad is associated with a product.

Developments in culture and society and technology have led us to the convergence where we have the
convergence of identity politics. The first stop is protecting culture e.g. protecting Maasai Culture for
example selling postcards of nude maasai girls is this protectable?

Internet Protocol – software and cyber-technology has developed very fast and is trying to define our
culture

Intellectual Property is taking into account all these developments, its being shaped by and adjusting to
this culture.