NAIROBI, Kenya
J. B. Maina, the recording artiste of popular Gikuyu songs who has sued Safaricom and four others for copyright infringement, has won round one of the court battle. Justice G. K. Kimondo of the Commercial and Admiralty Division of the High Court on May 14 granted the musician nearly all the prayers he sought under the Anton Piller orders, including stopping Safaricom and other third parties from dealing in Mr Maina’s copyrighted music.
The court also granted Maina the right to enter the defendant’s and the third parties’ premises with an inspector of the Copyright Board during business hours to inspect machines where his music data has been stored. While doing so, Mr Maina will be allowed to take records of the data, make copies of purchases and sale and any item that may constitute evidence.
He has been granted the right to seize and keep records of copies of his music offered for sale through the internet, media works or networks or mobile phones in the Surf 2 Win promotion and Skiza ringtones.
Anton Piller orders are forms of interlocutory injunctive reliefs that derive the name from a case decided in UK in 1976 by the name of ANTON PILLER K.G. vs. Manufacturing Processes Ltd (1976) Ch. 55 The plaintiff in the suit owned copyright in the design of a high frequency converter used to supply computers. The plaintiff had learnt that their English agents, the defendant, wanted to supply information to a rival of the plaintiff with manuals, drawings and other confidential information which would allow the competitor to copy the plaintiffs products and ruin their market.
They made exparte application to enter the defendant’s premises to inspect, remove or make copies of documents belonging to the plaintiff. The court put three essential preconditions for the making of such an order that they believed was extreme; there must be an extreme prima facie case; the damage, potential or actual, must be very serious for the plaintiff. The third precondition was that there must be clear evidence that the defendants have in their possession incriminating documents or things and that there is a real possibility that they may destroy such material before any application inter parte can be made.
In 2008, Safaricom introduced Skiza, a caller ringback tone service that enabled subscribers to customise their ringtones leased from the telecommunication company. In addition, Safaricom also set up a competition styled Surf 2 Win Promotion through which its customers could download Skiza tones for a fee. Interactive Media Services Ltd, Liberty Afrika Technologies Ltd and Music Copyright Society of Kenya (MCSK), listed in the suit as 1st, 2nd and 3rd third parties assigned various copyrights, licences and sublicences for music and other content to support the ringtone service. The fourth third-party is Cellulant (Kenya) Ltd, which had the role to distribute or provide value-added services including logos, ringtones and pictures for Skiza.
J. B. Maina had entered into an agreement with MCSK on June 20, 2007, authorising it to collect mechanical royalties for all his music works. The musician, however, argued MCSK, in turn, assigned those rights to the 1st and 2nd third parties without the his knowledge. In may 2012, Maina sued Safaricom and the four third parties for infringing his copyright rights over popular Gikuyu songs Muiritu wa Kabete, Tiga Kimute, Njeri, Ndwara Cece, among others.
On May 28, 2012, he sought orders to enter the premises of the defendant and third parties to seize, collect and keep machines, data, documents or storage materials relating to his copyright rights in the music. He also prayed for injunctions to restrain the respondents from further infringement, sale, distribution and storage of his music. He asserted his moral and intellectual property rights to the music and to the remedy of damages.
In granting the orders, the court referred to the defendants’ confession in their replying affidavit that they had previously uploaded the plaintiff’s works for Skiza and Surf 2 Win Promotion on the basis of the content provision agreement. Safaricom had also conceded in the affidavit, the judge ruled, to having been advised by its legal department to purge or remove the plaintiff’s works from its portal but which it partially did owing to a “glitch” within its storage.
It only removed the works completely after being served with a court order of May 28, 2012. The plaintiff also argued that he was not a member of MCSK and, through a letter of withdrawal from the society, proved his case to the court. MCSK, on August 22, 2008 assigned rights over Maina’s recordings to Liberty Afika Technologies Ltd but the musician asserted that he never authorised Safaricom or any of the third parties to exploit his works in that manner.
By December 2011, the musician argued, “Surf 2 Win had downloaded 3, 840, 000 and Skiza tunes totaling to Sh45,600,000 based on Sh7 per tune and over 10,000 cartoon synchronisation given at the same costs which gives totals to over Sh60,600,000 and which amount increase daily.”
Safaricom, for its part, argued it had made payments to the third parties as per the content provision agreements, but the plaintiff denies knowledge or consent. Justice Kimondo ruled that he was satisfied Safaricom used the catalogue of the plaintiff’s music and that the public downloaded the tunes from Safaricom’s website before it was deleted. He said he was convinced Safaricom was doing it for profit and that Maina’s “claim to injunction and account are not too remote or ill-founded”, more so since the defendant had agreed to charge various prices for every ringtone.
He said in his ruling that the contractual foundation upon which Safaricom is trading with the musician’s copyright was questionable. The plaintiff, he averred, seemed largely out of the loop on the use of his works by the defendant or the accounts. “The same appears to be true of the subcontracts or sublicences under the content provision agreements between the defendant and the 1st to 3rd parties. When you bring the 4th third party in the picture, the picture emerges of an intricate web that may circumvent the technical measures to protect the plaintiff’s copyright.”
