[2024] KEHC 11701 (KLR)

Cherwon v Karua & 5 others (Civil Case 4 of 2023) [2024] KEHC 11701 (KLR) (Civ) (19 September 2024) (Judgment)

Neutral citation: [2024] KEHC 11701 (KLR)

Republic of Kenya

In the High Court at Nairobi (Milimani Law Courts)

Civil

Civil Case 4 of 2023

AN Ongeri, J

September 19, 2024

Between

Nancy Chelagat Cherwon

Plaintiff

and

Hon Martha Karua

1st Defendant

Boniface Mwangi

2nd Defendant

Highlands Drinks Limited

3rd Defendant

Jamed Obunga aias “Otile Brown

4th Defendant

Ali Yussuf alias “Arrow Bwoy

5th Defendant

209 State House Road

6th Defendant

Judgment

1. The petitioner/plaintiff in this case filed this suit vide petition dated 18/11/2022 seeking the following orders against the seven respondents;i.General and punitive damages for the breach of copyright by the respondents.ii.An order for the ex post facto compensation of the petitioner for the sum of ksh.2,100,000 (each respondent to bear kshs.300,000) which would otherwise have accrued as royalties and licensing fees.iii.A declaration that he respondents acted in violation of the rights of the petitioner under Article 40 of the Constitution of Kenya, 2010. iv.Any other relief that this honourable court may deem appropriate to ensure law, order and constitutionalism.v.The costs of these proceedings be borne by the respondents herein.

2. The petitioner stated in the said petition that Article 3(1) of the Constitution provides that the Constitution is the supreme law of the Republic and binds all persons and all State orgarns at both levels of government.

3. Further, that Article 22 grants every individual in Kenya the right to institute court proceedings claiming that a right or fundamental freedom in the Bill of Rights has been denied, violated or infringed, or is threatened.

4. That Article 23 of the Constitution vests this honorable Court with the jurisdiction, in accordance with Article 165, to hear and determine applications for redress of a denial, violation or infringement of, or threat to, a right or fundamental freedom in the Bill of Rights.

5. Further, that Article 40 of the Constitution of Kenya vests every person with the right, either individually or in association with others, to acquire and own property of any description; and in any part of Kenya which includes but is not limited to intellectual property.

6. That Article 40(5) goes further to state that the State shall support, promote and protect the intellectual property rights of the people of Kenya.

7. Article 159 (1) of the Constitution of Kenya, 2010 provides that judicial authority is derived from the people and vests in and shall be exercised by the courts and tribunals established by or under the Constitution of Kenya, 2010.

8. Article 159(2) (3) of the Constitution of Kenya, 2010 provides that the purposes and principles of the Constitution shall be protected and promoted.

9. Under Article 165 (3) (b) the High Court has jurisdiction to determine the question whether a right or fundamental freedom in the bill of rights has been denied, violated, infringed or threatened.

10. Article 259 (1) provides that the Constitution shall be interpreted in a manner that promotes its purposes, values and principles, advances the Rules of Law, the Human Rights and fundamental freedoms in the bill of rights and contributes to good governance.

11. The case was transferred to the Civil Division from the Constitutional and Human Rights Division and the petitioner is now referred to as the plaintiff.

12. The respondents filed replying affidavits to the petition in which they denied the plaintiff’s claim.

13. The case proceeded by way of viva voce evidence.

14. The plaintiff adopted her witness statement dated 27/3/2023 and also produced a bundle of documents dated 27/2/2024 as her exhibits.

15. The plaintiff stated in the statement dated 27/3/2023 that she is a Kenyan citizen of sound mind and a graffiti artist who earns her income and makes her living through painting and other artistic works.

16. In July 2019 she was contracted to paint a restaurant by a tenant at the 6th Defendant's premises and she was paid by the Tenant for the murals that were at the office and restaurant in the space and upon discussions with the 6th Defendant proceeded to paint the extra space at the court on the understanding that she would be compensated for any commercial use of her artwork.

17. The plaintiff said that she was dismayed to see her artwork on the 1st Defendant's campaign video, Heko mana created and produced by the 2nd Defendant released on 30th June 2022.

18. She was also aggravated when she saw her murals being used on the posts and reels on Instagram shared by the 3rd Defendant to market their products.

19. Again, the plaintiff was aggravated when she saw her art being used by the 4th Defendant on his music video production titled Better Days dated 30th June 2022.

20. She was again aggravated when she saw her art being used by the 5th Defendant on his music video production titled Fashionista released on 22nd February 2021.

21. The plaintiff said she did not give permission for her work to be used for commercial purposes by the 6th Defendant and she considers that her work has been stolen and used on various occasions without her consent.

22. She is now seeking that this Court comes to her aid and issues an order for compensation in my favor for the use of her work by the Defendants as particularized in the Plaint.

23. The 1st defendant did not call any witnesses. The 2nd defendant Boniface Mwangi testified as DW 1.

24. DW 1 said he was hired by the 1st defendant to conduct a campaign on her behalf.

25. DW 1 stated in his statement dated 20/6/2023 that he is a Kenyan Citizen and photojournalist residing and working for gain in Nairobi.

26. Between May and June 2022, on behalf of the 1st Defendant, he sought and procured the premises known as 209 Statehouse for the recording of a promotional video for her presidential campaigns. The premises are owned by the 6th Defendant herein.

27. That upon payment of a fee of Kshs.7,000, the 6th Defendant issued him with a letter confirming receipt of the amount and further directions on the use of the property. According to the license terms contained in the letter, he was authorized to use the upper and lower grounds for the purposes of shooting a video. The graffiti art in question is located on the walls at the lower grounds. There was no limitation by the 6th Defendant on what facilities he would use.

28. Upon conclusion of the recording, he vacated the 6th Defendant's premises and proceeded to edit and upload the videos for the Presidential Campaign. That was shocked to receive summons to defend myself in this suit since the Plaintiff has not produced any contract that contains terms that regulate the use of the premises and the murals thereon.

29. DW1 said that he is aware that any art on private property can only be governed by agreed terms between the Artist and the proprietor and that neither himself nor the 1st Defendant on whose behalf he recorded the video, had a contract with the Plaintiff and they are both therefore strangers to this suit.

30. That by dint of having satisfied the obligations on the use of the space by paying for a one-time license to use all of the premises, they cannot be roped into a private dispute between the Plaintiff and the 6th Defendant.

31. The 3rd witness also called one witness, DW 2, Kevin Onzere Asena who adopted his witness statement dated 3/7/2023.

32. DW 2 stated in the said statement that at all material times relevant to this suit he was employed at Highlands Drinks Limited (the 3rd Defendant herein) as Cold Drinks Equipments (CDE) Events and Social Media Coordinator thus conversant with the facts of this case and duly authorized by the 3rd Defendant's Board of Directors to swear this Affidavit.

33. That he perused the Plaint, Witness statement and list and bundle of documents dated 27th March, 2023 and stated that from the onset, he was aware that, sometime in 2020, the 3rd Defendant carried out a project aimed at promoting digital content by youch dubbed as '#Dare to be You Challenge

34. Further, that he is aware that the 3rd Defendant through its digital manager identified basketball court located within the 6th Defendant's premises suitable for its project.

35. He confirmed that the 3rd Defendant subsequently engaged the management of the 6th Defendant who gave the go ahead to shoot the project in the basketball court within the 6th Defendant's premises which is not restricted space to the general public.

36. That he can further confirm that the permissions issued by the 6th defendant contained no restrictions on the use of the basketball court.

37. He is aware that the 6th Defendant represented to the 3rd Defendant that the said artworks were commissioned to the hotel and as such the 6th Defendant had the authority to issue express permission to the 3rd Defendant on the usage of the basketball court which contained part of the said art works.

38. He is further aware that, acting on the said representation and express consent of the 6th Defendant, the 3rd Defendant proceeded to shoot its project at the basketball court which contained part of the subject art work.

39. He said that the 3rd Defendant cannot be liable for any copyright infringement against the Plaintiff and her works as alleged as there was nothing attributing the said art work to the Plaintiff.

40. Furthermore, that the Plaintiff has not adduced any evidence of existing registered copyrights or other intellectual property rights in relation to the said art work at the time the 3rd Defendant utilized the basketball court within the 6th Defendant's premises.

41. That the Plaintiff's copyright, if any, does not include the incidental inclusion of portions of the art work in the 3rd Defendant's video/shoot.

42. The said video which featured the subject art work for about only a very insignificant part, was uploaded on the 3rd Defendant's online social media accounts; Facebook and Instagram.

43. That he is aware that the 3rd Defendant's incidental use of portions of the said art work was secondary and subordinate to the overall objective of the shoot and emphasis was on the information relayed.

44. That he is further aware that the intention and purpose of the project was to promote digital content by youth and no material and or commercial gain was made from it by the 3rd Defendant.

45. In the circumstances the 3rd Defendant cannot be liable in anyway whatsoever for the omissions and/or commissions of the 6th Defendant with respect to the Plaintiffs artwork and alleged intellectual property attached to the said art works found within the 6th Defendant's premises.

46. That the Plaintiff has not demonstrated any cause of action against the 3rd Defendant and consequently, it is in the interest of justice that the Plaintiff's suit herein be dismissed with costs for the reason that it fails to disclose any cause of action against the 3rd Defendant.

47. The parties filed written submissions as follows; The Plaintiff via its plaint dated 27th Day of March 2023, moved this Honorable Court seeking orders of punitive damages for breach of copyright, an order for infringing materials to be pulled down and a Permanent Injunction restraining the defendants and their agents from commercializing the Plaintiff’s art without a compensation arrangement in place under section 35 of the Copyright Act 2001.

48. The plaintiff submitted that one of the 6th Defendant’s tenants procured the services of the Plaintiff to paint their restaurant at an agreed fee, thereafter the 6th Defendant through their agent asked the Plaintiff to beautify the rest of the premises (owned by then 6th Defendant and not leased to anyone) with the agreement that the Plaintiff would retain the intellectual property and would be paid for graffiti rights in case of commercialization of the same.

49. The Plaintiff submitted that the 1st, 2nd, 3rd, 4th, 5th and 6th Defendants infringed on the Plaintiff’s copyright by using her art to make advertisements and marketing material for their commercial gains without her consent.

50. She submitted that its work is eligible for copyright protection and sought to rely on section 22 of the Copyright Act, 2001 provides that;“22. Works eligible for copyright(1)Subject to this section, the following works shall be eligible for copyright—(a)literary works;(b)musical works;(c)artistic works;(d)audio-visual works;(e)sound recordings; and(f)broadcasts.”

51. The Plaintiff submitted that within the meaning of Section 2 of the Copyright Act, the graffiti developed by the Plaintiff falls under the category of paintings and drawings and is thus eligible for copyright protection.Section 2 of the Copyright Act defines artistic work as:1)—(a)paintings, drawings, etchings, lithographs, woodcuts, engravings and prints;(b)maps, plans and diagrams;(c)works of sculpture;(d)photographs not comprised in audio-visual works; (e) works of architecture in the form of buildings or models; and(f)works of artistic craftsmanship, pictorial woven tissues and articles of applied handicraft and industrial art.”

52. “artistic work” means, irrespective of artistic quality, any of the following, or works similar thereto The Plaintiff urged the court to refer to section 22 (5) of the Copyright Act which states that“...rights protected by copyright shall accrue to the author automatically on affixation of a work subject to copyright in a material form, and non-registration of any copyright work or absence of either formalities shall not bar any claim from the author.”

53. She submitted that she is the original creator of the graffiti which she painted on the 6th Defendant’s premises with an agreement that the Plaintiff would retain the intellectual property rights and would be compensated for any commercialization of the graffiti as per paragraph 9 of the Plaint and the attached evidence and that the Plaintiff exercised requisite intellectual qualities, labor, skill or effort in producing the graffiti in question.

54. The plaintiff relied on the US Court of Appeals for the Fifth Circuit case of Mitchell Brothers Film Group V Cinema Adult Theater 609 F. 2d 852 95th Cir. 1979), the court stated that all creative works in a copyrightable format are to be accorded copyright protection regardless of their subject matter or content. It was held that;“The phrase "original works of authorship," (§ 102) which is purposely left undefined, is intended to incorporate without change the standard of originality established by the courts under the present copyright statute. This standard does not include requirements of novelty, ingenuity, or aesthetic merit, and there is no intention to enlarge the standard of copyright protection to require them.”

55. In support of its assertion, the Plaintiff sought to rely on the case of Simon Otieno Omondi v Safaricom (K) Limited [2020] eKLR established that originality and sufficiently expended effort amounts to original work that is protected by copyright. Originality for the purposes of establishing copyright requires the author's own intellectual creation. It was held that:“…However, it suffices to note that; copyright is legal protection for an author/creator which restricts the copying of an original work they have created. The key word is “original”. In the same vein, literary, dramatic, musical and artistic works will only be original, if they are the result of independent creative effort. They will not be original if they have been copied. The key to protection is independent creation.”

56. The plaintiff further submitted that the moment she created the original, tangible piece of graffiti work, exclusive rights protected by copyright accrued automatically to her on affixation of the graffiti art on the 6th Defendant’s location in a material form, and non-registration of the graffiti art or absence of either formality does not bar any claim by the Plaintiff.

57. The Plaintiff in qualifying what amounts to copyright infringement relied on Section 35 of the Copyright Act, 2001 which provides that:“Copyright shall be infringed by a person who, without the licence of the owner of the copyright does, or causes to be done, an act the doing of which is controlled by the copyright.”

58. She submitted that the 1st and 2nd Defendants commercialized the Plaintiff’s art by recording political advertisements with the Plaintiff’s art in the background and distributing the video on YouTube titled Heko Mama released on 30th June 2022. Through this they beautified their political advertisement using the Plaintiff’s Art without her consent.

59. That the 1st Defendant being the sole beneficiary of the video in question and the one who, by the 2nd Defendant’s own testimony, subcontracted the 2nd Defendant to shoot the said video is vicariously liable for the copyright infringement as detailed above.

60. She submitted that the Plaintiff did not either explicitly nor implicitly transfer ownership of her copyrights to the owner of the premises and thus the owner of the premises did not have the right to license the 1st and 2nd Defendant to reproduce the Plaintiff’s work for their political benefit. In the absence of a specific bequest for commercial use, the artwork of the Plaintiff remains her sole property.

61. The Plaintiff submitted that the 1st and 2nd Defendants reproduced the Plaintiff’s art without her explicit and express consent and that the 1st and 2nd Defendants infringed on the Plaintiff’s copyrights.

62. In the case of Castillo v. G&M Realty L.P held that:“…these rights may not be transferred, but they “may be waived if the author expressly agrees to such waiver in a written instrument signed by the author and that graffiti art belongs to the creators not the building owner”

63. She submitted that the 3rd Defendant commercialized the Plaintiff’s art by using her artwork to create advertisements and marketing materials published on its social media pages. The 4th and 5th Defendant also proceeded to commercialize the Plaintiff’s art by recording and producing their music video with the Plaintiff’s art in the background and later distributing them on YouTube titled Better Days and Fashionista released on 30th June 2022 and 22nd February 2021 respectively.

64. The Plaintiff cited the case of Mount Kenya Sundries Ltd vs. Macmillan Kenya (Publishers) Ltd [2016] eKLR as quoted in Franz Frederichs v Kenya Medical Supplies Agency [2019] eKLR where the Court stated that;“...It is therefore not only the reproduction of the entire protected work that would constitute an infringement, in our view, reproduction of a substantial part of the work would still constitute an infringement. “

65. She submitted that the inclusion of the Plaintiff’s copyright protected work in the impugned work was essential and that the use of the Plaintiff art was not incidental but an essential feature of the commercial and the impact of the advertisement and the songs would be entirely lost without her artwork.

66. She submitted that the 6th Defendant infringed on the Plaintiff’s copyright. She cited the case of Castillo v. G&M Realty L.P (2019) graffiti art belongs to the creators not the building owner.

67. The Plaintiff urged the Court to find the 1st, 2nd, 3rd, 4th, 5th and 6th Defendant in infringement of her copyright and grant damages orders as prayed.

68. The plaintiff also cited is the case of Macmillan Kenya (Publishers) Ltd v Mount Kenya Sundries Limited (Civil Case 2503 of 1995) [2024] KEHC 3680 (KLR) (Civ) (2 April 2024) (Judgment) where this Court held that where infringement of the plaintiff's copyright in respect of the Kenya Tourists Maps has been proved, general damages should be awarded and proceeded to award the Plaintiff 5,918,623 shillings in damages.

69. On the issue of costs the Plaintiff submitted that the matter of costs is a well-established principle that "costs follow the event," and these costs are subject to the court's discretion but typically align with the outcome of the case.

70. They referred the court to the Halsbury’s Laws of England, 4th Edition (Re-issue) from 2010, Volume 10, paragraph 16, which states:“The court has discretion regarding the payment of costs between parties, the amount of these costs, and the timing of their payment. When costs are at the court's discretion, a party does not have an automatic right to costs unless the court specifically awards them. The court possesses an absolute and unrestricted discretion to either award or withhold costs, and this discretion must be exercised judiciously."

71. She submitted that the determination of costs should be made on a case-by-case basis, as affirmed by the Supreme Court in the case of Jasbir Singh Rai & Others vs Tarlochan Rai & Others eKLR{2014}

72. The plaintiff prayed that costs and interest of this suit be awarded and be borne by the Defendants herein.

73. It was the plaintiff’s submission that on the basis of the law and facts surrounding Plaintiff’s claims and the response thereto, the inescapable conclusion is that the Defendant infringed on the Plaintiff’s copyrights and prayed that the Court award the Plaintiff the reliefs as sought in the Plaint.

74. The 1st Defendant submitted that the Plaintiff had not proven ownership of the copyright and cited Section 107 (1) of the Evidence Act provides that“Whoever desires any court to give judgment as to any legal right or liability dependent on the existence of facts which he asserts must prove that those facts exist.”

75. The 1st Defendant further submitted that the Plaintiff had failed to discharge that burden and that the Plaintiff did not adduce any evidence in support of her claim.

76. He submitted that the Plaintiff did not produce a certificate of registration of the artwork and that the Plaintiff confirmed that there was no name signed on the mural identifying it as her work.

77. That though she testified in cross-exam that the mark that identifies her artwork was a mask, she confirmed that no mask was evident in the photographs of the artwork identifying the artwork as her own. Furthermore, the Plaintiff did not call any witness to testify and corroborate her testimony.

78. The 1st Defendant submitted that her word alone was not sufficient proof of ownership of the mural. No substantial evidence was produced to prove ownership of the copyright in the artwork.

79. The 1st Defendant relied on Civil Suit No. 494 of 2016 (Wangechi Waweru Mwende v Tecno Mobile Limited; Rogers Ouma t/a Ojwok Photograpy (Third Party)) where the Court held that;“Therefore, the claim under Copyright Act by the Plaintiff must fail as it is only the originator of visual art who can/may successfully plead and/or prove right to a copyright.”

80. The same position was held by High Court in India in Civil Suit No.674 of 2017 (Ms. Ganga Rudraiah vs Cinema Resource Centre) as follows;“..Having failed to produce the evidence to show the ownership of copyright over the film 'Aval Appadithan', the plaintiffs are to be non-suited.”

81. In the end the 1st Defendant submitted that the claim herein should be dismissed.

82. The 2nd Defendant submitted that the Plaintiff had not presented any evidence that she is the maker or creator of the artwork in dispute, beyond her assertion.

83. The 2nd defendant submitted that Section 26(1)(c) of the Copyright Act while guaranteeing the rights of a copyright holder makes certain exceptions where a copyright holder will not have the right to control certain uses of that original work.

84. Section 26 states that;(a)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—(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;( c)the incidental inclusion of an artistic work in a film or broadcast;”

85. The 2nd defendant in qualifying what amounts to a broadcast, relied on section 2 of the Act defines it as “broadcast” means the transmission, by wire or wireless means, of sounds or images or both or the representations thereof, in such a manner as to cause such images or sounds to be received by the public and includes transmission by satellite;

86. The second Defendant submitted that Section 26(1)(b) provides that the limitation against the Copyright Holder will apply where the artistic work that is part of a broadcast, is situated in a place where it can be viewed by the public.

87. He went on to submit that the evidence before the court shows that the premises known as 209 State House Road is a private property that is accessible to the public and that the Plaintiff herself gave testimony that there are offices and restaurants within those grounds and this meant that any member of the public can walk into the premises and either visit the offices or enjoy a meal at the restaurant.

88. On what amounts to incidental inclusion, the 2nd defendant sought to rely on Nairobi Map Services Limited v Airtel Networking Kenya Limited & 2 others [2019] eKLR (Court of Appeal) where the court said;“The exception on which the respondents rely, is that the inclusion of the map, the protected work, in the advertisement or broadcast is “incidental” within the meaning of Section 26(1)(c) of the Act. That section as we have seen provides that copyright shall not include the right to control the incidental inclusion of an artistic work in a film or broadcast. In other words, copyright in a work is not infringed by its incidental inclusion in an artistic work.”

89. He further submitted that the English High Court has adopted the approach suggested by Laddie, Prescott and Vitoria, the authors of “The Modern Law of Copyright and Designs” (3rd edition, 2000) treating “incidental” as meaning “casual, inessential, subordinate or merely background.” What the Court ought to establish is, looking at the three screenshots presented, is the artwork by the Plaintiff an infringement or is it simply a background? It pleaded the latter.

90. Further, that at paragraph 10 of the Plaint, the Plaintiff clearly points out that the art in question was in the background. Parties are bound by their pleadings.

91. In the Plaintiff’s bundle, NC-1 shows 3 women dancing. Behind them is a wall with murals and a grilled mesh. The artwork and the mesh appear in the background, with the 3 women being the main focus of the photograph. NC-3 shows 3 ladies dancing. In the background, there is a basketball rim with a net attached, a wall painted with murals and hanging lines with decorative colors. The 3 ladies are the main feature of the photograph. The same ladies also appear in NC-4 in the foreground with the wall with murals appearing in the far background.

92. The 2nd Defendant submitted that Plaintiff failed to supply the Court with video proof of the violation and her evidence is only limited to screengrabs that have been presented here.

93. He urged the Court to uphold the decision of the Court of Appeal in Nairobi Map Services Limited and find that similarly in this case, the artwork in question was incidental inclusion to the broadcast.

94. He further submitted that the 2nd defendant is an innocent bystander who has been roped into a dispute that should only be between the Plaintiff and the 6th defendant.

95. The 2nd defendant humbly submitted that holding the 2nd Defendant liable where no such agreement had been produced would be a miscarriage of justice.

96. He invited the court to consider the decision in Dunlop Pneumatic Tyre Co Ltd v. Selfridge & Co Ltd [1915] AC 847 where the House of Lords established the principle that a contract cannot confer rights or impose obligations on any person except the parties to it.

97. He also submitted that the 2nd defendant was an “innocent purchaser” and that the use of the space was made in good faith without knowledge of any underlying conditions imposed by the plaintiff on the 6th defendant.

98. The 2nd defendant submitted that it obtained permission from the 6th Defendant, ensured the crew adhered to filming limitations (upper and lower grounds only), and promptly paid the agreed-upon fee.

99. It is their submission that it is unconscionable to require the 2nd defendant to have sought the permission of any other person other than the 6th defendant.

100. The 2nd defendant submitted that he was not aware of the copyrighted graphics and that the proprietor failed to disclose this fact to the 2nd defendant during negotiations.

101. Further, it is their submissions that there were no warnings, disclaimers, or indications suggesting that the material was for commercial use and if indeed this was the case, the Plaintiff should have taken all the necessary steps to ensure that any user was aware of the fact and/or subjected the 6th defendant to these conditions.

102. The 2nd defendant directed the court to Biosystems Consultants v Nyali Links Arcade (Civil Appeal E185 of 2023) [2023] KEHC 21068 (KLR) (31 July 2023) where it was established that a court should not impose a penalty that was not hitherto anticipated. The parties must know, a priori, the consequences of their actions.

103. He asked this honorable court to dismiss the Plaintiff’s suit with costs.

104. The 3rd defendant submitted that it cannot be held liable for the alleged breach or infringement of the copyright over graffiti mural painted on the wall in the basketball court owned by the 6th Defendant.

105. In providing a legal basis for its argument, it relied on section 35 of the Act:“Copyright shall be infringed by a person who, without the licence of the owner of copyright does, or causes to be done , an act the doing which is controlled by the copyright”

106. It urged the court to rely on a Court of Appeal decision; Nairobi Map Services limited v Airtel Networking Kenya Limited & 2 others (2019) eKLR and similarly the Supreme Court Decision in Communications Commission of Kenya & 5 others v Royal Media Services Limited & 5 Others (2014) eKLR that set an elaborative definition of infringement.

107. It submitted that a central claim for copyright infringement is proof of ownership of the copyright and that a party claiming copyright infringement has the onus to adduce credible, reliable and verifiable evidence to demonstrate ownership of the copyright work.

108. It further submitted that after proving ownership of copyright, the Plaintiff must lead further credible reliable and verifiable evidence to demonstrate that his/her copyrighted works were infringed/violated by the defendant and as a result, she has suffered injury.

109. It submitted that the present claim should fall as the 3rd defendant’s usage of basketball court containing the wall with graffiti mural was authorized/permitted by the 6th Defendant.

110. It submitted that the Plaintiff failed to produce a certificate of copyright registration to show that she is either the owner of the painting or at least the owner of the mark-mask image she claimed to be her unique identifying mark.

111. It is their submission that the Plaintiff having failed to demonstrate ownership of the graffiti painting, any reasonable person would conclude that the 6th defendant is the owner of the said graffiti painting for reasons at paragraph 22, 23, 24, 25,26,27,28 and 29 of their submissions.

112. Under section 26(3) read together section 1 (f) of schedule (2) of the Copyright Act states that the exclusive rights under section 26 shall not include the right to control the incidental inclusion of a copyright in an artistic work. It is their submission that the inclusion of the graffiti mural into the 3rd defendant’s promotional video was incidental inclusion, and thus not actionable copyright infringement.

113. The 3rd Defendant invited the court to refer the case of Nairobi Map Services Limited v Airtel Networking Kenya Limited & 2 Others (supra) – at paragraph 31 of their submissions.

114. On the meaning of incidental inclusion, it urged the court to look at the case of Football Association Premier League vs Panini UK Ltd EWCA Civ 995 as stated at paragraph 32 of their submissions.

115. It submitted that the 3rd Defendant did not violate any copyright by featuring graffiti painting in its promotional video and that inclusion of the Plaintiff’s working in the video was an incidental inclusion and thus not actionable for copyright infringement.

116. It’s their submission that the use of graffiti painting in the 3rd defendant’s promotional video amounts to fair dealing of copyright, and thus not actionable copyright infringement. It cited the provisions of section 2693) read together with section 1(a) of schedule 2 of the Copyright Act.

117. It referred to the case of CCH Canadian Ltd. V law Society of Upper Canada (2004) I S.C.R 339,366,2004 scc13(CCH) on what fair dealing is.

118. It submitted that the use of the graffiti painting in the 3rd Defendant’s promotional video amounts to fair dealing of graffiti works, and thus, it does not amount to an actionable copyright infringement.

119. The 3rd Defendant urged the Court to dismiss the Plaintiff’s suit commenced through a Plaint dated 27th March,2023 with costs to the 3rd defendant for being unmerited and without any cause of action.

120. I have considered the evidence adduced in this case together with the submissions filed by the parties.

121. It is not in dispute that the plaintiff painted a Tenant’s restaurant at the 6th Defendant's premises and she was paid by the Tenant for the murals that were at the office and restaurant in the space.

122. The plaintiff said that upon discussions with the 6th Defendant, she proceeded to paint the extra space at the court on her own volition on the understanding that anyone who uses the artwork would pay her.

123. It is not in dispute that the 1st, 2nd, 3rd and 4th Respondents used the space as follows;i.On the 1st Defendant's campaign video, Heko mana created and produced by the 2nd Defendant released on 30th June 2022. ii.Her murals were used on the posts and reels on Instagram shared by the 3rd Defendant to market their products.iii.The 4th Defendant used the murals on his music video production titled Better Days dated 30th June 2022.

124. The issues for determination in this petition are as follows;i.Whether the respondents’ infringed the plaintiff’s copyrights.ii.Whether the plaintiff is entitled to the remedies she is seeking against the respondents.

125. On the issue as to whether the respondents infringed the copyrights of the plaintiff, I find that the plaintiff stated in her evidence that in July 2019 she was contracted to paint a restaurant by a tenant at the 6th Defendant's premises and she was paid by the Tenant for the murals that were at the office and restaurant in the space and upon discussions with the 6th Defendant proceeded to paint the extra space at the court on the understanding that she would be compensated for any commercial use of her artwork.

126. The plaintiff did not state the contents of the said oral agreement between herself and the 6th Defendant.

127. The 1st, 2nd, 3rd and 4th defendants submitted that they were not aware of the copyrighted graphics and that the proprietor failed to disclose this fact to them during negotiations for use of the space.

128. Section 26 (1) of the Copyright Act expresses the nature of the protected right in copyright work and states as follows:“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 in its original form or in any form recognisably derived from the original...”

129. There is undisputed evidence that the graffiti paintings were in a public place and further, that the 1st, 2nd 3rd and 4th respondents were not made aware of the arrangement between the plaintiff and the 6th Respondent.

130. There is no evidence that the 6th Respondent disclosed the arrangement with plaintiff to the Respondents in this case.

131. In the case of Nairobi Map Services Limited v Airtel Networking Kenya Limited & 2 others [2019] eKLR the Court held as follows;“Copyright……. is defined in Black’s Law dictionary (8th edition) as an act of violating any of a copyright owner's exclusive rights. It seeks to protect the expression and recorded content of someone’s intellectual labours. It refers to the dealing with copyrighted material in a manner inconsistent with the copyright owner’s interests. 25. In Kenya, the statutory framework for copyright law is to be found in the Copyright Act, 2001. Sections 26 deals with the nature of copyright while Section 35, on infringement, provides that “copyright shall be infringed by a person who, without the licence of the owner of the copyright does, or causes to be done, an act the doing of which is controlled by the copyright.”

132. I find that the plaintiff has not proved that her copyright was infringed by the 1st, 2nd, 3rd and 4th Respondents since they were granted permission by the 6th Respondent who was the proprietor of the premises.

133. The plaintiff said that she had an arrangement with the 6th Respondent that anyone who uses her artwork would pay her.

134. However, there is no evidence that the 1st, 2nd,3rd and 4th Respondents were made aware of the said agreement by the 6th Respondent who was the proprietor of the premises.

135. It is not clear how much the plaintiff had agreed with the 6th respondent was payable for the use of the artwork.

136. I also find that in the current case, the artwork in question was incidental inclusion to the Respondents’ activities and the same was not the main feature of their work.

137. What is incidental inclusion is a question of fact and will depend on the circumstances of each case.

138. In this case, the Respondents main activities were campaign videos, music videos and Instagram reels and posts and the murals were incidental inclusions.

139. Consequently, the petitioner is not entitled to the remedies she is seeking against the 1st, 2nd and 3rd Respondents.

140. I dismiss the plaintiff’s case and direct that each party bears its own costs of this suit.

DATED, SIGNED AND DELIVERED ONLINE VIA MICROSOFT TEAMS AT NAIROBI THIS 19TH DAY OF SEPTEMBER, 2024. A. N. ONGERIJUDGEIn the presence of:……………………………. for the Plaintiff…………………………….. for the 1st Defendant…………………………….. for the 2nd Defendant…………………………….. for the 3rd Defendant…………………………….. for the 4th Defendant…………………………….. for the 5th Defendant