High Court at Nairobi

High Court at Nairobi (Nairobi Law Courts)
Civil Case 756 of 2012

FAULU KENYA DEPOSIT TAKING MICROFINANCE LIMITED
.PLAINTIFF
VERSUS
SAFARICOM LIMITED .......................... DEFENDANT
i.
The plaintiff did on various dates in the year 2011, develop a cash
advance service which would be operated on the mobile telephony platform
and where its clients would be able to apply for, receive and, make payments
through the mobile phone network operated by a mobile phone service
provider.
ii.
The distinct features of the product were that it would target customers
would have to be subscribed to a mobile phone network and who would on
their mobile phone handsets accessa provided interface which would be
reduced into a menu and on which they would apply for and receive the cash
advance for an agreed consideration from the plaintiff.
iii. The plaintiff is already using this product in partnership with the Airtel
Networks Kenya Limited under the bank name KipaChapaa cash advance
services and which has been approved for offering to the public as a money
product, by the Central Bank of Kenya.
iv.
The plaintiff proposed to the defendant to partner with it in offering the
same product on its mobile phone network and on its money transactions
functionality being the Mpesa platform and presented thereby a concept
paper that incorporated the detail and information on the cash advance
product.
v.
The plaintiff further executed a non-disclosure agreement with the
defendant to restrain either party from disclosing any information on the
plaintiffs cash advance product and related information, to any third party
and/or using such information to compete or obtain any competitive or other
advantage over the other party.
vi.
The plaintiff states that the defendant in breach of the terms of the
non-disclosure agreement aforesaid and in breach of the plaintiffs
confidence and further in contravention of the plaintiffs trade secrets and
copyright, has now presented a similar product called M-Shwari and offered it
to its customers, purporting it to be its own.
vii. The Defendants actions are most injurious to the plaintiff and unless
restrained by an order of this court, the plaintiff will suffer irreparable loss
and damage to the integrity and value of its products which will stand to lose
its commercial viability.
viii. This honourbale court has jurisdiction to make the orders sought.
ix.
The plaintiffs suit has a high probability of success on a prima facie
basis.
x.
In view of the foregoing, it is in the interest of justice and fairness that
the prayers sought herein are allowed.
High Court at Nairobi (Milimani Commercial Courts)
Civil Case 258 of 2012
RHODA ONDENG WILHELMSEN............PLAINTIFF
VERSUS
DR. SARAH A. CHUCHU............................................................DEFENDANT
Ondiek lived in Bandari village on the shores of Lake Victoria. He was an

utter fool. He believed catching fish was purely by Gods grace. He,
therefore, did not care to mend his nets. He was also abusive and unkind to
his long suffering and lovely wife Mariamu.
His end came, justly, when he was dragged down by his own unmended nets
and drowned.
The story of Ondiek was originally told in an essay written in 1973 by a
student at Limuru Girls High School, Sarah Alai. She titled her essay Ondiek
the Fisherman. Now a pharmacist, she is known as Dr Sarah Alai Chuchu.
Francis Chandler, her English teacher, adapted the essay for an opera. Thirtynine years later, another former Limuru Girls student, Rhoda Ondeng, now a
Norway-based opera singer known as Rhoda Ondeng Wilhelmsen, took
over the musical adaptation and registered it with the Kenya Copyright
Board as her copyright on February 28, 2012.
Ms Wilhelmsen then proceeded, in a fanfare of publicity, to produce what
was billed as Kenyas first opera, based on the musical adaptation. The
performance was scheduled for April 20-22 2012 at Braeburn Theatre in
Nairobi. Tickets for the Friday gala night cost Sh2,000.
Dr Chuchu raised the alarm, protesting that Mr Chandler had adapted her
essay without her consent. She wanted the performance stopped until the
copyright issues were resolved.
Her lawyers sent a demand letter urging Ms Wilhelmsen to cancel the
performance. She was also said to have warned Kiss 100 FM of dire
consequences if they did not stop publicising the performance, though she
denied this when Ms Wilhelmsen went to court seeking an injunction to stop

her from interfering with the production.
But in a judgment one day before the gala opening, High Court judge Alfred
Mabeya dismissed the application for an injunction. He also ruled that a
school essay is protected by copyright. So is a derivative work, though
permission must be sought from the original author, but that was another
matter.
Retrospective - What is Original?

Much like novelty in, copyright only protects works which can be considered
'original'. If you merely copy another person's work by adding nothing new to
it, it can be said to not be original and therefore not merit protection. After
all, copyright endeavors to enable further creation and protect the interests
of those who dare to do so. The bigger question at the heart of all of this
then is a very simple one: what is originality?
One of the milestone cases in the history of copyright, University of
London Press Ltd v University Tutorial Press Ltd, came about in the
early part of the 1990s where the United Kingdom courts had to tackle the
question of what can be considered an original work within the then in
force Copyright Act 1911. The case dealt with examination papers which
were written for the University of London back in 1915. Under the University
of London's senate's decision all examination papers created by appointed
examiners would belong to the University, aside from drawings, and the
University reserved all rights to reproduce those exams without any extra
compensation to the examiners who had written them. Subsequently
examiners were appointed for the exam period held in September of that
year, among which were Mr. Jackson and Professor Lodge who were in charge
of creating the exam papers for mathematics. After the exam papers had
been created, the University entered into a contract with University of
London Press, assigning it the copyrights and rights of publication to any
specific exams for a fixed period of 6 years. University of London Press were
then issued the rights to publish the exams written in the previous year,
which were then published by University of London Press in early 1916. In
the same month University Tutorial Press published exam from the previous
year as well, containing 16 out of 42 exams from January 1916, which were
attained from students rather than the published copies made by the
University Press. Among the 16 exams were three which were written by Mr.
Jackson and Professor Lodge. Along with the published exams University
Tutorial Press also published the answers to some of the questions in those
exams, including some critique of those particular questions as well.
Subsequently University of London Press sued University Tutorial Press for

copyright
infringement
over
the
published
exams.
In his assessment of what an original literary work would be, Justice Peterson
stated that "[t]he word "original" does not in this connection mean
that the work must be the expression of original or inventive
thought. Copyright Acts are not concerned with the originality of
ideas, but with the expression of thought". As one can see from his
Honor's view, copyright protects expression, not ideas. One can copy ideas,
yet how those ideas are conveyed has to be different. This is where arguably
the layman's perception of what original is differs from that of the legal view
of originality.
In further consideration Justice Peterson saw that "...the Act does not
require that the expression must be in an original or novel form, but
that the work must not be copied from another work - that it should
originate from the author". Albeit seemingly obvious when thinking of
originality, this point by Justice Peterson is imperative with regards to
originality. For a work to be considered original it has to originate from the
author themselves. What this is is an assessment on a case-by-case basis as
to whether the work which is being contended did in fact originate from the
author. In the case the authors of the exam questions, Mr. Jackson and
Professor Lodge, had thought of the questions themselves, only drawing from
the stock of knowledge in mathematics which existed at the time. It was
seen by Justice Peterson that these works were indeed original. In his final
thoughts Justice Peterson laid out a rough test for originality, which has fallen
under some critique in modern times: "...what is worth copying is prima
facie worth protecting". In the decision University Tutorial Press were
found to have infringed the University of London Press' copyright.
What 'originality' boils down to is independent creative effort. If the work
which is sought to be protected was the result of independent creation, it
most likely will fall under copyright and be protected. Ideas themselves are
not protected, but the expression of those ideas through individual creative
effort would be. Although seemingly a given when presented as such, it is
still a core tenant that needs to be understood and applied when dealing
with potential copyright infringement.
Retrospective - Copyright in Names

The name of a company, much like the names of people, carries significant
weight in the company's identity in the mind of the consumer and in the
corporate sphere. Names like Apple, Microsoft and Google tend to evoke the
image of certain services or a certain level of quality, making them incredibly
important for the companies that carry them. As such, others can strive to
use similar names to evoke a similar image, although in the connection of
something entirely different. In most cases these names will be protected
under various trademark provisions, or under the tort of passing of, but
could a company's name be protected under copyright?
The case which dealt with this question was Exxon Corporation v Exxon
Insurance Consultants International Ltd back in 1982. The case
concerned the name "Exxon" used by the well-known fuel company. The
name was registered as a trademark by the company, which formerly traded
under the name Standard Oil (also Esso in other countries); of which a
passing off claim was also put forth in the proceedings. Although the
question of passing off was of full relevance in the case, of interest in this
particular case is the fact whether the name "Exxon" would be a literary work
under the then in-force UK Copyright Act 1956 or not. Subsequently Exxon
Corporation sued Exxon Insurance Consultants International for copyright
infringement and passing off for the use of the word Exxon in theirs.
"Exxon" had been fully created by the company, being a word not existing
prior to its creation in the English language. Evidence was put forth as to its
careful creation and selection in this process through a large time,
expenditure and labor investment in the word's creation, potentially
indicating it is an original literary work within the Act. At first instance Justice
Graham rejected Exxon's argument as to the word being a literary work, on
the basis that "[i]t is a word which, though invented and therefore
original, has no meaning and suggests nothing in itself. To give it
substance and meaning, it must be accompanied by other words or
used in a particular context or juxtaposition"; a position which the
Court of Appeal fully accepted.
The latter court did accept that the word was indeed original and originated
from an author, due to the effort and research that was put into the creation
of the word. Several cases were brought before the court in argument over
both sides; however the Court particularly used the case of Hollinrake v
Truswell in its considerations. In the case Lord Justice Davey set out what in
his mind a literary work means: "...a literary work is intended to afford
either information and instruction, or pleasure, in the form of
literary enjoyment", also mentioning a possible contribution to the stock of
human knowledge. Lord Justice Stephens, in the present case, fully accepted
this definition to be applicable under the Copyright Act 1956. The Court
decided on the basis of this that the word Exxon would not afford any
information or instruction, nor would it provide pleasure through literary
enjoyment by itself; therefore not being a literary work under the 1956 Act
and there was subsequently no infringement of copyright.
Clearly names are not afforded copyright protection by themselves, but they
could be protected should they be a part of a larger piece, such as being
mentioned in a book. That would not apply to the name in itself, but as a part
of the larger work itself. Arguably the proper route to protect names would
be under trademark or the tort of passing off, through which Exxon was
afforded relief in the aforementioned case. The line of argumentation by
Exxon was interesting, and goes to show just how flexible intellectual
property law could potentially be.

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High Court at Nairobi (Nairobi Law Courts)

Civil Case 756 of 2012

Ondiek lived in Bandari village on the shores of Lake Victoria. He was an

denied this when Ms Wilhelmsen went to court seeking an injunction to stop

Retrospective - What is Original?

Subsequently University of London Press sued University Tutorial Press for

Retrospective - Copyright in Names

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