[2023] KEHC 25367 (KLR)

Nyamigwa v Seventh Day Adventist Church (EA) Union (Civil Case 154 of 2011) [2023] KEHC 25367 (KLR) (8 November 2023) (Judgment)

Neutral citation: [2023] KEHC 25367 (KLR)

Republic of Kenya

In the High Court at Kisii

Civil Case 154 of 2011

REA Ougo, J

November 8, 2023

Between

Joel Gichana Nyamigwa

Plaintiff

and

Seventh Day Adventist Church (EA) Union

Defendant

Judgment

1. Joel Gichana Nyamigwa, the plaintiff filed suit against the defendant on the 29th of July 2011 seeking various prayers plus costs of the suit. The defendant is the Seventh Day Adventist Church ( E. A.) Union. After the plaintiff gave evidence in court he filed a Notice to withdraw his suit the said notice was accepted and the suit was marked as withdrawn on November 22, 2022.

2. The defendant in its Defense and Counterclaim dated the 1st of September 2011 denied the plaintiff’s claim. The defendant’s counterclaim is as follows; that it is still the originator and compiler and/or translator and/or arranger of the whole of the songbooks ‘Nyimbo ya Kristo’ and ‘Ogotera Kw’ogotogia Nyasae’ which was composed and/or complied and/or translated and/or arranged by members of the Seventh Day Adventist church through its subsidiary Africa Herald and Publishing home. That the plaintiff without any color of right and/or justification at all registered a copyright with the Kenya Copyright Board of t Kw’ogotogia Nyasa’ and Nyimbo za Kristo’ numbered KCB 0xx and KCB 1xx respectively hence converting and/or alienating and/or appropriating to himself the property of the aforesaid literary works to himself in total, disregard of the defendant’s rights.

3. At paragraphs 12 (a) to (k) the defendant particularizes the particulars of infringement by the plaintiff of the defendant's literary works as follows;a.Secretly registering the defendant’s works in his name and/or his nominee.b.Plagiarizing the defendant’s work.c.Publication of the defendant’s work without permission.d.Distributing the defendant’s work for gain.e.Selling the defendants literary works.f.Reproducing the entire preface of the defendants revised and enlarged 1998 Edition in the plaintiff’s plagiarized copy of ‘Ogotera Kw’ogotogia Nyasae’g.Reproducing the songs, material notes, numbering and paging of the defendants literally works in ‘Ogotera Kw’ogotogia Nyasae’ word for word from the defendants published copy and thereafter claiming the same to be the plaintiff’s literally works.h.Plagiarizing the defendant’s literally works known as ‘ Nyimbo Za Kristo’ copying the same literally and claiming the same as hisi.Constantly harassing the defendant members by confiscating the defendant’s songbooks through the aid of the provincial administration and the police, I bid to prevent the defendant’s members from singing, performing and using the defendant’s originals works of art during worshipj.Profiting from literally works of the defendantk.Going round the defendant’s churches hawking the defendant’s pirated song books and proclaiming that the plaintiff now holds the copyrights thereto.

4. The defendant avers that the plaintiff has in his possession a large number of copies of the aforesaid two songbooks which he has wrongfully printed and/or caused to be printed by the plaintiff without the permission of the defendant. That the defendant through the letter dated January 10, 2011 demanded the surrender of the copyright, documents, manuscripts, lates, films, and copies of the printed works from the plaintiff the same has not elicited a response from the plaintiff.

5. The defendant pleads particulars of damage as loss of business. The defendant claims against the plaintiff a permanent injunction to issue restraining the plaintiff from reproducing the defendant's work ‘Ogotera Kw’ogotogia Nyasae’ and ‘ Nyimbo Za Kristo’ or any part thereof in any material form whatsoever without the defendant counter claimer’s license, damages for infringement of copyright, alternatively an account of the profits earned by the plaintiff be made and the said profits be paid to the defendant from the amount found to be due on taking of such accounts.

6. The defendant seeks judgment as follows;a.A permanent injunction to issue restraining the plaintiff from reproducing the defendant work ‘Ogotera Kw’ogotogia Nyasae’ and ‘Nyimbo Za Kristo’ or any part thereof in any material form whatsoever without the license of the defendant.b.An order to issue cancelling the registration of the plaintiff as the copyright holder No KCB 0xx and KCB 1xx for‘Ogotera Kw’ogotogia Nyasae’ and ‘Nyimbo Za Kristo’ respectively and the said copies do revert to the defendant.c.An order to issue taking account of the profit made by the plaintiff by the said infringement and payment of the amount found to be due on taking such account.d.An order of delivery to the defendant of all copies of the said books, manuscripts, plates negatives, films both hard copies and soft copies, and dummies which are in the plaintiff’s possession as aforesaid and damages for the conversion and retention.e.Costs and interest at court rates.

7. The plaintiff filed a reply to the defense and a defense to the counterclaim. He maintains that he originated, composed, translated, and compiled the 2 songbooks commencing in the year 1973, and that he fully developed the 2 songs books and the rights over the 2 songbooks vests in him. The defendant only constituted a technical team known as the ‘Ogotera Review Panel’ (ORP), in the year 1996 for purposes of reviewing the ‘Ogotera Kw’Ogotogia Nyasaye’ with the permission, consent, and participation of the plaintiff. That at the time of reviewing the book there was already the original work composed, compiled and translated by the plaintiff and that the review panel did not appropriate and /or assume ownership of the Ogotera Kw’ogotogia Nyasaye hymn book. That the registration and issuance of the copyright mandate over and in respect of the 2 hymn books were lawfully done and /or undertaken by the Copyright Board, after satisfying itself as to the originality of the literary works by the plaintiff and with the knowledge of the defendant.

8. The defendant responded to the reply to the defence to counterclaim in its reply filed on September 23, 2011. It denied the plaintiff’s claims in its reply and averred that it fully compensated the plaintiff for the work done during the review. That it is the plaintiff who has stolen the defendant’s copyright. The plaintiff was a member of the review panel and the team reviewed the songbook that had previously been published many times since the 1950s and this did not entitle the plaintiff to misappropriate the copyright to the songbooks. That the copyright board did not satisfy itself as to the originality of the two songbooks prior to the registration of the copyright in the plaintiff’s name and that the plaintiff plagiarized the defendant’s work.

9. The defendant called two witnesses namely; Elkana Ondari Judson and Alvin Ahamani. Elikana Ondari Jadison (Dw1) testified as follows; he has a relationship with the defendant as a member of the church and a nominated chairman of South Kenya Conference as a division of the defendant to copy and correct (edit) songs used by SDA in South Kenya Conference SDA Church. He relied on his statement dated September 1, 2011. The panel had the following persons; Elkanah Amboga, Joel Gichana (the plaintiff), Hezekiah Nyakora, Pastor Philip.O. Mosioma, and David Nyambega. The said panel was under his chairmanship and Elkanah Amboga who was the secretary. They worked tirelessly until the 1984 edition of ‘Ogotera Kw’ogotogia Nyasyae was published. The book had a series of mistakes and they again continued with the review of the book which culminated in the 1998 edition of the same book. The plaintiff was a member of the panel that resulted in the publication of the 1998 edition. At no time did the panel assume ownership of the copyright of the 2 books. That the copyright is the preserve of the defendant through its agent African Herald Publishing House. That the contribution to the panel members could not entitle the panel members or the plaintiff to assume the copyright over the 2 songbooks. The defendant's church gave them a token appreciation for the work they voluntarily did for which he paid Kshs 28100/- and the plaintiff was paid Kshs 34553. 00. That there was no other claim against the church from the panel members as they could not be paid and take away the copyright from the church at the same time in total they received Kshs 150,000/-. He does not support the plaintiff as he is one of the members of the panel who were reviewing the songs and it was not right for him to register the copyright in his own name. He requests the court to order the cancellation of the 2 copyright certificates in possession of the plaintiff and also that the plaintiff accounts for all the sales made with respect to the books and be restrained from further production of the books. That the plaintiff should also deliver all the manuscripts, and soft copies that he may have produced illegally. He produced a list of documents as exhibits 1-20, plus the copyright registration certificates No KCB 0xx registered on April 28, 2008 and No KCB 1xx was registered on September 19, 2008 as exhibits 21 and 22. On cross-examination, Dw1 maintained that the work they did was voluntary and that what they were paid was a token of appreciation. In re-examination, he stated that the songbook existed before and was not the work of the plaintiff. The songbook was published in 1984 and the review was in 1998. The plaintiff published the book in 2008, the same copy they had done.

10. Alvin Aliamani (Dw2) adopted his statement filed on September 1, 2011 and testified that; he is the current manager of Africa Herald Publishing House, a subsidiary of the Seventh-Day Adventist Church (E.A) Union Ltd. In 1983 the defendant, the S.D.A church through the Africa Herald Publishing House (‘A.H.P.H’) set up a committee to review the Kisii Song book known as ‘Ogotera Kw’ogotogia Nyasae’ by reviewing the songs and adding other songs, translating some other songs into, correcting the musical notes and words in the said songbook and editing the same with a view to enlarging the songbook. In 1996 the defendant through the South Kenya Conference of the Seventh-Day Adventist church mandated a committee of people, namely Elkanah Ondari (Dw1), Elkanah Amboga, Joel Gichana (plaintiff), Pastor P.O. Mosioma, Hezekiah Nyakara and David Nyambega. They were to complete the revision work of the songbook. Elkana Amboga was the custodian of the manuscript which was being revised. The said panel completed the works and the book was published in 1998 being a revised edition of the Song Book ‘Ogotera Kw’nyasae’ 1984 edition. The panel was paid Kshs. 150,000/- for the review works. That the defendant all along held the copyright for both ’Ogotera Kw’ Ogotogia Nyasae’ and ‘Nyimbo za Kristo’ and at no time has the defendant given and/or sold her rights to the plaintiff. That sometime in 2008 without the knowledge of the defendant, the plaintiff registered a copyright over the two songbooks. In 2010 the plaintiff working with some police officers from Kisii Police Station raided the Adventist Book Centre in Kisii and took away 2000 copies of ’Ogotera Kw’ Ogotogia Nyasae’ which the plaintiff and his agents are still holding to date. Dw2 sought to have the plaintiff’s copyright infringement stopped, the unlawful registration of the plaintiff as a copyright owner of both songbooks be deregistered, and that the plaintiff renders accounts on the profits he has earned since he registered the copyright to the two songbooks. On cross-examination, Dw2 reiterated his evidence. He maintained that the plaintiff was paid his money and he was not aware of any balance that was left. He is aware that the plaintiff has been publishing some books. That the copies have been circulating.

11. As stated earlier the plaintiff withdrew his case through a withdrawal notice filed on the August 1, 2022. The defendant continued with its counter-claim as expressed in his defense, counter-claim, and evidence. The plaintiff did not file his submission on the counter-claim. The defendant filed written submissions on November 24, 2022. I have read the said submissions. A summary of the said submissions is as follows; that the plaintiff did not author the said books. That the plaintiff abrogated the rights of the defendant by unlawfully acquiring an interest in the works he did not author. Reliance was made on section 31 of the Copyright Act on the first ownership of copyrights. That the plaintiff was not the author of the two songbooks. That the plaintiff was paid for the review works, the same was commissioned by the defendants for which the defendants paid the plaintiff. Reliance was made on the following cases; Aikman vs Muchoki [1984] KLR, Janet Oburu Odhiambo vs Catholic Diocese of Homabayt/aSt. Joseph Mission Hospital Kisii High Court ELC Case No 442 of 2013, Yego vs Tuiya and another 1986 KLR and the case of Music Copyright Society of Kenya Limited vs Parklands Shade Hotel Limitedt/aKlub House 2000KLR.

Analysis and determination 12. I have considered the pleadings, the evidence, and the law. The issues for determination are as follows;i.Whether the defendant is the owner of the two songbooks referred to herein;ii.Whether the plaintiff infringed on the defendant's copyright;iii.Whether the defendant should be granted the orders sought; andiv.Who should bear the costs of the suit"

13. Whether the defendant is the owner of the two songbooks? The defendant claims that it is the originator/ and/ or compiler and/or translator and/or arranger of the songbooks ‘Nyamibo Za Kristo’ an Ogetra Kw’ogotogia Nyasa’ which were composed and/or complied through the subsidiary Africa Herald and Publishing House. To prove this the defendant produced a copy of a copy of, Ogotera Kw’ Nyasae’ (1st Songbook) on page 53 of its list of documents and ‘Nyimbo za Kristo’ (2nd Songbook) at page 62 of its bundle of documents. The 1st songbook was Revised and Enlarged in 1984. The publisher was Africa Herald Publishing House. The publisher of the 2 songbooks was Africa Herald Publishing House. This was the evidence that Dw1 and Dw2 both referred on the publication of the two songbooks as shown at pages 43-61 of the defendant’s bundle of exhibits, being copy of ‘Ogotera Kw’ogotogia Nyasae’ published by Africa Herald Publishing House revised and Enlarged edition 1998, Copy of ‘Ogotera Kw’ogotogia Nyasae’ published by Africa Herald Publishing House revised and Enlarged edition 1984, a copy of ‘Nyimbo Za Kristo’ published in 1998 by Africa Herald Publishing House, a copy of ‘Nyimbo Za Kristo’ published by East Africa Publishing House a precursor of Africa Herald Publishing House, a copy of ‘ Ennyimba Za Kristo’ published by Africa Herald Publishing House in 1965 and a copy of ‘Nyimbo Za Mtaso’ published in 1967 by Africa Herald Publishing House in 1967. This evidence of Dw1 and Dw2 was not challenged by the plaintiff. The defendant has demonstrated that they are the originators, compilers, and owner of the 2 songbooks from as early as 1967 and that the 2 songbooks were published by Africa Herald Publishing House.

14. On whether the plaintiff infringed the defendant’s copyright. The defendant annexed the plaintiff’s plagiarized copy of the 2 songbooks at pages 32-42 which is an exact replica of the words by word of the defendant published in 1984. The plaintiff registered a copyright of the books. It is evident that the plaintiff was not the author of the 2 songbooks. Section 31 of the Copyright Act states as follows on the first ownership of copyright;(1)Copyright conferred by sections 23 and 24 shall vest initially in the author:Provided that where a work—(a)is commissioned by a person who is not the author’s employer under a contract of service; or(b)not having been so commissioned, is made in the course of the author’s employment under a contract of service, the copyright shall be deemed to be transferred to the person who commissioned the work or the author’s employer, subject to any agreement between the parties excluding or limiting the transfer.

15. The defendants through the evidence of Dw1 and Dw2 demonstrated that the plaintiff was engaged with other persons to work on some discrepancies in the songbooks and they were fully paid for the said works (see letter dated January 29, 1996. The plaintiff was not authorized to inherit any part of the works and to make a claim to them. To go ahead and publish an exact songbook like that of the defendant’s songbooks is an infringement of the defendant’s copyright. The copyright in the 2 songbooks is vested in the author the defendant.

16. The defendant has sought various orders. Having proved that the plaintiff infringed their copyright they have proved that they have a prima facie case and are entitled to an injunction. In the case of Kenya Power & Lighting Co. Limited v Sheriff Molana Habib [2018] eKLR the court held as follows:“…A permanent injunction which is also known as perpetual injunction is granted upon the hearing of the suit. It fully determines the rights of the parties before the court and is thus a decree of the court. The injunction is granted upon the merits of the case after evidence in support of and against the claim has been tendered. A permanent injunction perpetually restrains the commission of an act by the defendant in order for the rights of the plaintiff to be protected.’

17. The defendant has proved its case for a permanent injunction. A permanent injunction shall issue restraining the plaintiff by himself or his servants or his agents or otherwise howsoever from reproducing or authorizing the reproduction of the defendant’s literal works ‘Ogotera Kw’ogotogia Nyasae’ and ‘Nyimbo Za Kristo’ or any substantial part thereof in any material from whatsoever without the license of the defendant. There shall also be a cancellation of the registration of the plaintiff as the copyright holder No KCB 0xx and KCB 1xx for ‘Ogotera Kw’ogotogia Nyasae’ and ‘Nyimbo Za Kristo’ respectively and the said copyrights shall revert to the defendant.

18. The defendant has also sought that an order be issued for taking accounts of the profits made to the plaintiff by the said infringement and payment of the amount found to be due on taking such account. In my view, the defendant did not tender sufficient evidence to prove that the plaintiff had made profits and that accounts were available. There was no specific period indicated nor was there evidence of the sales made by the plaintiff. Some proof was required of the sale made by the plaintiff in order to request for accounts as sought. I therefore decline to grant the said order.

19. There is evidence that the plaintiff plagiarized the defendant’s songbooks the plaintiff shall deliver to the defendant all copies of the said books, manuscripts, plates, negatives, films both hard copies and soft copies and dummies which are in his possession.

20. On the claim for damages, I am guided by the passage in Halsbury's Laws of England 4th Edition at Pg 389 Para 616 on the measure of damages. The authors stated-"615. Nominal measure of damages. … In general, damages in conversion are compensatory, their object being to repair the actual loss which the claimant suffers by reason of the conversion. This conforms to the general rule that damages in tort must (so far as money can do so) put the person whose right has been invaded in the same position as if it had been respected. Accordingly, an award of damages in conversion must operate neither by way of penalty to the Defendant nor by way of windfall to the claimant. In general, there must also be a causal connection between the act of conversion and the loss sustained, and proof of actual loss."

21. No evidence was adduced on the damages sought for conversion and retention. He who alleges must prove the fact pleaded. It was upon the defendant to adduce evidence of what they lost or the damage incurred as a result of the plaintiff’s action. I decline to award any damages. The defendant is granted costs of the counterclaim, plus costs awarded when the plaintiff withdrew his case. Orders accordingly.

DATED, SIGNED AND DELIVERED VIA MICROSOFT TEAMS THIS 8TH DAY OF NOVEMBER 2023. R.E. OUGOJUDGE