[2022] KEHC 18119 (KLR)

Mwangi Kirubi t/Aa Click Picture Works Africa v Ink Productions Limited Limited (Civil Appeal E40 of 2019) [2022] KEHC 18119 (KLR) (Commercial and Tax) (3 June 2022) (Judgment)

Neutral citation: [2022] KEHC 18119 (KLR)

Republic of Kenya

In the High Court at Nairobi (Milimani Commercial Courts Commercial and Tax Division)

Commercial and Tax

Civil Appeal E40 of 2019

EC Mwita, J

June 3, 2022

Between

Mwangi Kirubi t/Aa Click Picture Works Africa

Appellant

and

Ink Productions Limited

Respondent

(Appeal from the Judgment and decree of the Chief Magistrate’s Court, Milimani Commercial Courts Nairobi (Hon E Wanjala, SPM) dated 7th November 2019 in CMCC No. 200 of 2017)

Judgment

1. In a plaint dated December 29, 2017, filed at the Chief Magistrate’s Court, Milimani Commercial Courts, Nairobi, the appellant, Mwangi Kirubi t/a Click Picture works Africa, (Mr. Kirubi), sued the respondent, Ink Productions Limited (Ink Productions) for copyright infringement on his artistic work namely, a photograph of the City of Nairobi at night. Mr. Kirubi sought declarations that he was the bona fide copyright owner of the photograph and that Ink Productions had infringed on that copyright; a permanent injunction restraining Ink Productions, its officers, agents, servants, employees, representatives, related companies, successors and assigns from using the photograph without consent; an order requiring Ink Productions to account for all gains and profits that had been derived from the infringement of the copyright; general and punitive damages for copyright infringement and as costs of the suit.

2. Mr. Kirubi’s case was that he is a renowned photographer and registered proprietor of www.click.co.ke and runs a popular blog, htt://mwarv.click.co.ke. Through these platforms, Mr. Kirubi created and posted an ensemble of numerous images he had personally captured in different scenarios and on different occasions. Mr. Kirubi asserted that he is the author and copyright owner of the photograph which shows the City of Nairobi at night with peculiar modifications and artistry.

3. According to Mr. Kirubi, in or about June 2017, Ink Productions, a film producer, used the photograph to promote a programme called “Nairobi diaries” aired on K24 Television Channel and Ink Productions’ YouTube channel, without consent.

4. Ink Productions filed a defence dated 18th February 2018, denying Mr. Kirubi’s claim of copyright ownership and infringement. Ink Productions’ case was that as an audio visual company, it has been producing its own videos and still photos of various sites in the City of Nairobi since 2013 for use in its Nairobi Dairies programme. Ink Productions asserted that the photograph claimed by Mr. Kirubi was taken in January 2007 and was not copied from any other source. Ink Productions denied using copyrighted images.

5. The suit was heard by Hon. E. Wanjala (SPM), and in a judgment dated November 7, 2019, the learned magistrate found that although the photograph was Mr. Kirubi’s original work, Mr. Kirubi had not proved that it had been copyrighted. The trial magistrate entered judgment in favour of Mr. Kirubi for injunction but dismissed the rest of the reliefs claimed in the plaint.

6. Aggrieved, Mr. Kirubi lodged a memorandum of appeal dated December 5, 2019, raising the following grounds, namely:a.The learned magistrate erred in both law and fact by failing to substantially consider the appellant’s evidenceb.The learned magistrate in both law and fact by failing to fairly and objectively evaluate the evidence before the Court and therefore reaching to an unjust findingc.The learned magistrate erred in law and fact by misconstruing the legal principles underpinning determination of existence of copyright in an artistic workd.The learned magistrate erred in law and fact by making a finding that the appellant had not proved ownership of copyright and that he could not therefore claim infringement of the copyright in the photograph the subject of the suite.The learned magistrate erred in law by failing to appreciate the express provision of section 22 (5) of the Copyright Act (2001)f.The learned magistrate erred in law in the manner she analysed the evidence and her application of the law on the facts

7. This appeal was disposed of through written submissions with oral highlights.

Submissions by Mr. Kirubi 8. Mr. Kirubi filed written submissions dated September 7, 2020, and submitted that the trial magistrate made contradictory findings; that he was the original author of the photograph but that there was no proof of copyright. Mr. Kirubi faulted the trial magistrate for concluding that the certificate of registration of copyright did not relate to the photograph in question, thus that the claim for copyright infringement had not been proved.

9. Relying on section 22 (5) of the Copyright Act, (the Act), Mr. Kirubi argued that absence of registration does not deprive one protection of copyright entitlement under the Act. Mr. Kirubi also argued that infringement of copyright was sufficiently proved through his testimony and documentary evidence. Mr. Kirubi pointed out that the trial magistrate observed in the judgment that Ink Productions’ witness had admitted that it was impossible to have two similar or identical photographs taken at different times unless some editing is done. Mr. Kirubi asserted, therefore, that the finding that he was the author of the photograph was sufficient for the trial magistrate to determine the extent of infringement and damages payable.

10. Mr. Kirubi relied on Football Association Premier League Limited & others v Panini UK Ltd [2004] 1 WLR 1147, to submit that inclusion of the photograph in Ink Productions’ programme was not merely accidental, but Ink Productions’ objective was to promote its business and shore up profits. In this respect, Mr. Kirubi relied on sections 31 and 32 of the Act that that the owner of a copyright acquires economic and moral rights over the protected works.

11. Mr. Kirubi again relied on section 35 of the Act to argue that infringement is committed if there is no license or permission from the copyright owner. To buttress this argument, Mr. Kirubi referred to the evidence of Ink Productions’ witness that Ink Productions was benefiting from the Nairobi Diaries shows and the YouTube Channel which had 100,000 viewers, and that the photograph was used because it was an important component of the show and attracted viewers on how the work was presented. For that reason, Mr. Kirubi argued that Ink Productions could not rely on section 26(c) that a copyright owner does not have the right to control incidental inclusion of artistic work in a film or broadcast.

12. Mr. Kirubi urged this court to find that Ink Productions is liable for copyright infringement and proposed damages of Kshs. 6,000,000. Mr. Kirubi relied on section 35 (6) of the Act which provides that where copyright infringement is proved or admitted, the court in assessing damages, having regard to all other material considerations such as breach and any benefit shown to have accrued to the party infringing, may award such additional damages as appropriate.

13. Mr. Kirubi further relied on Royal Media Services Limited v John Katana Harrison [2019] eKLR where an award of Kshs. 3,000,000 for copyright infringement was upheld. Mr. Kirubi again cited the decision in Mathew Peevers v Leo Slingerland & another [2000] eKLR for the proposition that injury to reputation caused by pirated work and vulgarized original is a fact that may be taken into consideration in assessing damages. Mr. Kirubi also relied on Bwavu Mpologoma Growers Co-operative Union Limited v Gasston Barbour & Others [1959] EA 307 where it was held that the measure of damages in cases of infringement of copyright depends on the circumstances of each case and that damages should be liberally assessed.

Submissions by Ink Productions 14. Ink Productions filed written dated October 28, 2020, and argued that Mr. Kirubi was not the owner, licensee and or assignee of the copyright in terms of section 2 (1) of the Act. Ink Productions asserted that the certificate of registration Mr. Kirubi produced to prove copyright was not for the photograph in issue, but for various photographs numbered AT-00260 which were not produced in evidence.

15. Ink Productions maintained that the photograph used in the Nairobi diaries programme which Mr. Kirubi was claiming, was taken by an intern in 2007. Ink Productions contended that Mr. Kirubi’s claim that copyright over the photograph was registered in 2014 was not sufficient proof of copyright over the photograph.

16. Ink Productions again contended that Mr. Kirubi could not rely on section 22 (5) of the Act to claim copyright over the photograph because there was no registered copyright. In the view of Ink Productions, subsection (5) affords protection to artistic work that is duly copyrighted. Ink Productions pointed out to admissions by Mr. Kirubi during cross-examination, that the fact that the photograph was taken at night did not prevent any other photographer with similar skills from taking a similar photograph and that the photograph Mr. Kirubi produced was plain while the photographs on the website and bog had watermarks “picha duka” and “click” respectively. According to Ink Productions, it was possible that Mr. Kirubi took a photograph at random and placed watermarks to claim copyright.

17. Ink Productions further submitted that even if Mr. Kirubi had copyright over the photograph, use of the photograph in the programme was incidental to the main drama content in the show. In that regard, Ink Productions argued that under section 26 (1) (c) of the Act, inclusion of the photograph was incidental and Mr. Kirubi could not claim copyright infringement. Ink Productions relied on Nairobi Map Services Limited v Airtel Networking Kenya Limited & 2 others [2019] eKLR where the Court of Appeal upheld the High Court decision that the inclusion of the appellant’s map was incidental as it was secondary or subordinate to the overall objective of the advertisement.

18. Ink Productions again argued that no financial benefit accrued from use of the photograph as background images in the programme since payment accrued from audio and visuals of the drama content in the show. According to Ink Productions, background images are interchanged from time to time and the programme still gets many views or even more. For that reason, Ink Productions argued that no financial gain accrued from the use of the photograph.

19. Ink Productions contended that Mr. Kirubi was not entitled to the orders sought because there was no proof of copyright over the photograph or copyright infringement. Reliance was placed onGeneral Tire and Rubber Co. v Firestone Tyre and Rubber Co. Ltd [1975] 1 WLR 819, for the proposition that a claimant has to prove loss since the aim of damages is compensation and not punishment. Such damages should be liberally assessed. Ink Productions urged the court to dismiss the appeal and also set aside the injunction that was granted by the trial magistrate.

DeterminationI have considered this appeal, submissions and the decisions relied on. I have also perused the record and the impugned judgment. This being a first appeal, it is the duty of this court, as the first appellate court, to re-evaluate, reanalyse and reconsider the evidence afresh and come to its own conclusion on that evidence. The court should however bear in mind that it did not see the witnesses testify and give due allowance for that. 20. In Gitobu Imanyara & 2 others v Attorney General[2016] eKLR, the Court of Appeal held that a first appeal is by way of retrial and the principles upon which the court acts in such an appeal are well settled. The court must reconsider the evidence, evaluate it itself and draw its own conclusions, though it should always bear in mind that it neither saw nor heard the witnesses and make due allowances in that respect.

21. In Peters v Sunday Post Ltd [1958] EA 424, the Court held thus:Whilst an appellate court has jurisdiction to review the evidence to determine whether the conclusions of the trial judge should stand, this jurisdiction is exercised with caution; if there is no evidence to support a particular conclusion, or if it is shown that the trial judge has failed to appreciate the weight or bearing of circumstances admitted or proved, or had plainly gone wrong, the appellate court will not hesitate so to decide.

22. Mr. Kirubi, testified before the trial court through his witness statement, further statement and relied on his bundle of documents. Mr. Kirubi’s evidence was that he took the disputed photograph (PEX 3) at night from Lonrho House Nairobi, using a long exposure technique, which is different from the normal technique of taking a photograph. In this Mr. Kirubi let the camera shutter open for 30 seconds instead of a few seconds in normal circumstances. Mr. Kirubi then registered the image and obtained a registration certificate. He thereafter posted the image on his blog and YouTube. In 2017, Mr. Kirubi spotted a show on You Tube on the internet with the photograph at the background in a programme on K24. Mr. Kirubi clicked and confirmed that his photograph had indeed been used in the programme without his consent. The photograph was used on several episodes, while the You Tube had about 42,000 subscribers. Mr. Kirubi explained the similarities between his photograph and that in the background of the episodes of Nairobi Diaries.

23. According to Mr. Kirubi, the photograph had been taken to celebrate the beauty of Kenya and for commercial purposes. Mr. Kirubi admitted, however, that he did not have a receipt to show payment for registration of the copyright over that photograph. Mr. Kirubi also confirmed that photographs on his website have a watermark with imprints “picha duka” and “click” at the centre while the disputed photograph did not have a watermark. Mr. Kirubi again admitted that there were many people with cameras similar to his who could also take similar photographs. Mr. Kirubi maintained, however, that such a photograph could not have all the characteristics on his photograph. Mr. Kirubi further admitted that the photograph had been used by another company but no action had been taken against that company. Mr. Kirubi maintained that Ink Productions had used the photograph for profits.

24. Brian Mwaluda, (Mr. Mwaluda), a director of Ink Productions testified, adopting his witness statement dated 11th June 2019, that Ink Productions deals with film production; shoots TV Programmes and advertises pictures among other things. Regarding Nairobi Diaries Programme, Mr. Mwaluda stated that the programme started in 2014 and when Mr. Kirubi obtained the certificate in September 2014, the programme had already started. Mr. Mwaluda testified that Ink Productions does photography using cat ways in films and also takes different photographs for use in the programme. The photograph in issue was taken in 2007 by Ruth Mutheu, an intern.

25. According to Mr. Mwaluda, Mr. Kirubi did not contact Ink Productions before filing the suit and that at the time the suit was filed, season 6 was being shown. Mr. Mwaluda told the trial court that Ink Productions earn revenue from the drama but not from the photograph in the background since the photograph is not the main focus. Mr. Mwaluda could not tell how much they had made from the show on K24, You Tube and Face Book. Mr. Mwaluda however testified that Ink Productions stopped using the photograph after being served with cease and stop notice.

26. Mr. Mwaluda produced photographs from Mr. Kirubi’s website as DEX2 and DEX3 to show that they had watermarks “click” and “picha duka” respectively, unlike Ink Productions’ photographs (DEX1) which had no watermarks. Mr. Mwaluda also pointed out that the colour of Ink Productions’ photographs was different from that of Mr. Kirubi’s photographs. Mr. Mwaluda maintained that the certificate of copyright registration Mr. Kirubi produced in court did not relate to the disputed photograph.

27. In cross examination, Mr. Mwaluda told the trial court that the photographs looked similar but explained that it was possible for two Photographs to look similar if edited. Mr. Mwaluda maintained, however, that the two photographs were different because of the watermark.

28. The trial court considered the above evidence and was satisfied that Kirubi was the original author of the photograph based on the explanation given to court compared by that by Ink Productions. The trial court also accepted the evidence that Ink Productions used Mr. Kirubi’s photograph in the back ground of Nairobi diaries programme without consent. The trial court however held that Mr. Kirubi had not proved copyright since there was no evidence that certificate of registration dated 3rd September, 2014 was for that particular photograph, given that the certificate was for various photographs numbered AT 00260. The trial court concluded, therefore, that copyright infringement had not been proved.

29. Regarding the claim for damages, the trial court held that Mr. Kirubi had not demonstrated that financial benefit accrued to Ink Productions from the use of the photograph. The court dismissed all the reliefs sought in the plaint except the prayer for an injunction restraining Ink Productions from using the photograph, prompting this appeal.

30. Mr. Kirubi raised 6 grounds of appeal. However, from those grounds, the issues that arise for determination are, whether there was proof of copyright; whether there was copyright infringement and whether the trial court should have awarded damages. Before dealing with these issues, there is a small issue that this court would wish to dispose of first.

31. Mr. Kirubi raised a general complaint in grounds 1 and 2 that the trial court did not substantially consider and objectively evaluate the evidence. I have gone through the record and the impugned judgment and it is clear to this court that the trial court considered and evaluated the evidence before it. For instance, the trial court analysed Mr. Kirubi’s evidence including when and where the photograph was taken and the technique used. The trial court also analysed Ink Productions’ evidence and was satisfied that Mr. Kirubi’s explanation that was plausible. It was on that basis that the trial court concluded that Mr. Kirubi was the author of the photograph.

32. I must be pointed out that there is no precise manner of evaluating evidence. This court, and indeed any appellate court, cannot prescribe the format a trial court should adopt or follow in evaluating evidence. It suffices if a trial court considers evidence on record, identifies factual and legal issues for consideration, analyses evidence tendered and determines what facts have been proved or disproved. (see John K Malembi v Trufosa Cheredi Mudembei & 2 others [2019] eKLR)

33. In the premise, I am unable to fault the trial court on this aspect of Mr. Kirubi’s complaint.

Whether copyright was proved 34. Mr. Kirubi faulted the trial court for finding that there was no proof of copyright. According to Mr. Kirubi, although the trial magistrate found that he was the author of the photograph, the court still went on to hold that there was no evidence that the certificate of registration related to the photograph in question. relying on section 22 (5) of the Act, Mr. Kirubi argued that non registration does not deprive one copyright protection under the Act.

35. I have considered this argument and perused the record. It is indeed true that the trial court found that Mr. Kirubi had taken the photograph and, therefore, was the author thereof. This was due to Mr. Kirubi’s satisfactory explanation on how the photograph was taken and the technique used. The trial court, however held that Mr. Kirubi had not proved ownership of the copyright because there was no evidence that the certificate of registration relied on and produced as an exhibit, was for that particular photograph. The certificate was for various photographs that had not been produced.

36. I have perused the record and the evidence on this issue. From that evidence, I do not think there would be an argument on who took the photograph. Mr. Kirubi’s evidence before the trial court, and as was appreciated by that court, was that the photograph was taken at night from Lonrho House, Nairobi, using a particular technique. On the other hand, Ink Productions’ evidence was that the photograph was taken by an intern, Ruth Mutheu, who was not called as a witness. Although Ink Productions’ evidence was that Ms Mutheu took the photograph in 2007, it was not clear at what time since Mr. Mwaluda testified that it was between 6 and 7 pm. On that ground, this court cannot fault the trial court’s finding of fact that Mr. Kirubi took the photograph.

37. Mr. Kirubi argued that the trial court having reached the conclusion on who took the photograph, the trial court fell into error when it held that copyright ownership had not been proved, which was a contradiction. Ink Productions supported the trial court’s finding that there was no evidence to prove copyright protection. According to Ink Productions, the certificate of registration produced was for various photographs and not the contested photograph.

38. I have considered the arguments on both sides on this issue and perused the record. In order to answer this complaint we must turn to the statute. Section 22(1) on works eligible for copy right provides that works eligible for copyright protection include artistic works. Under subsection (3), literary, musical or artistic work will not be eligible for copyright unless sufficient effort had been expended on making the work to give it an original character, and the work has been written down, recorded or otherwise reduced into material form.

39. Section 2(1) of the Act defines “artistic work” to mean, irrespective of quality, among others, photographs not comprised in audio-visual works. “Audio- visual” is defined to mean a fixation in any physical medium of images either synchronised with or without sound, from which a moving picture may by any means be reproduced and includes video tapes and video games but does not include a broadcast. “fixation” is defined to mean the embodiment of sounds or images, or of the representation thereof, from which they can be perceived, reproduced or communicated through a device.

40. Flowing from the definitions above, it is clear that the photograph in question fell within the description of artistic work since sufficient effort had been expended to turn into material form and, therefore, eligible for copyright protection under section 22(1). In this regard, section 22(5) states that rights protected by copyright accrue to the author automatically on affixation of the work subject to copyright in a material form, and non-registration of any copyright work or absence of formalities, is not a bar to any claim from the author.

41. The law is clear that where artistic work capable of copy right protection exists, non registration is not a bar to any claims from the author. In that respect, Mr Kirubi having satisfied the trial court with regard to the photograph, did not have to prove registration of that copyright since it was not a requirement under the law. The trial court’s finding that there was no proof of copyright was based on the fact that the certificate of registration dated 3rd September 2014 was for various photographs which were not produced in court and, therefore, there was no evidence that the photograph in question was one of those photographs. such a finding would only apply as proof of trademark but not proof of copyright under the Act.

42. Although Mr. Kirubi’s case was presented on the basis of copyright registration over the photograph as was pleaded at paragraphs 5 and 6 of the plaint, Mr. Kirubi’s witness statement and testimony before the trial court, that could not defeat a clear provision of the law, that non registration should not defeat a copyright claim. I therefore disagree with the trial magistrate’s finding that there was no proof of copyright.

Copyright infringement 43. Mr. kirubi faulted the trial court for holding that there was no copyright infringement. Ink Productions on the other hand relied on section 26(1) (c) to argue that there was no infringement because the photograph was an incidental inclusion and not the main focus.

44. Section 35 of the Act 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.”

45. On the other hand, section 26(1) provides that:(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 recognisably derived from the original; but copyright in any such work shall not include the right to control;(a)…(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

46. From the pleadings and evidence before the trial court, there is no doubt that Ink Productions is involved in film production, a fact that was also acknowledged by Mr. Kirubi in the plaint. There is also no doubt that Ink Productions used the photograph in a filmed drama and the photograph was in a place where it was being viewed by the public and was incidental inclusion. Use of the photograph in the background of Nairobi Dairies Programme per se would amount to reproduction. However, the photograph was an incidental inclusion which is permitted by law (section 26(1)(c). In that respect, there would be no infringement of the copyright as Mr. Kirubi argued.

47. In Nairobi Map Services Limited v Airtel Networking Kenya Limited & 2 others (supra), the Court of Appeal held that copyright in a work is not infringed by its incidental inclusion in an artistic work. In other words, secondary or subordinate use to the primary objective is not copyright infringement.

48. I respectfully agree with the trial magistrate that the inclusion of the photograph was incidental and not the primary message in the programme. This is so because there was no evidence that the photograph in the background played a significant role in the programme and that without the photograph, the programme could not attract viewers. In any case, Ink Productions told the trial court that use of the photograph was stopped as soon as cease and stop notice was served. There was no evidence that the Nairobi Dairies programme could not go on anymore and had to be stopped because of the withdrawal of the photograph. Even without the photograph, the message or content in the programme would still be passed and, therefore, there was no copyright infringement. I find no reason to differ with the trial magistrate’s finding that there was no copyright infringement.

Damages 49. The trial court having determined that there was no infringement and that the use of the photograph was incidental, and this court having come to the same conclusion, the trial court did not err in concluding that damages were not awardable. I also agree.

50. Finally, Ink productions urged this court to set aside the injunction issued by the trial court restraining use of the photograph. As Mr. Kirubi correctly argued, there is no cross appeal, and I will say no more.

51. In the end, the conclusion I come to is that this appeal lacks merit and is dismissed with costs.

DATED, SIGNED AND DELIVERED AT NAIROBI THIS 3RD DAY OF JUNE 2022E C MWITAJUDGE