[2024] KEHC 11429 (KLR)

Radio Africa Limited v Standard Group PLC & another (Commercial Case E253 of 2019) [2024] KEHC 11429 (KLR) (Commercial and Tax) (20 September 2024) (Judgment)

Neutral citation: [2024] KEHC 11429 (KLR)

Republic of Kenya

In the High Court at Nairobi (Milimani Commercial Courts)

Commercial and Tax

Commercial Case E253 of 2019

MN Mwangi, J

September 20, 2024

Between

Radio Africa Limited

Plaintiff

and

The Standard Group Plc

1st Defendant

Kenya Broadcasting Corporation

2nd Defendant

Judgment

1. The plaintiff instituted this suit against the defendants vide a plaint dated 16th August, 2019 seeking in the following terms -i.A declaration that the plaintiff is the only local broadcaster that has the exclusive right to broadcast Live Audio transmissions with commentary on the 2019/2020 English Premier League within Kenya;ii.A permanent injunction restraining the defendants (whether acting by their servants or agents or any of them or otherwise howsoever) from making Live Audio transmissions with commentary on the 2019/2020 English Premier League and thus (sic) infringing on the plaintiff’s exclusive right;iii.An inquiry as to damages for infringement of copyright or, at the option of the plaintiff, and account of the profits made by the defendants by virtue of their infringement of copyright;iv.An order for the payment of all sums found to be due to the plaintiff upon the taking of such inquiry together with interest;v.Aggravated damages for flagrant infringement;vi.Costs of this suit; andvii.Any further or other order as this Honourable Court may deem fit.

2. The plaintiff claims to be a leading media company whose brands include radio stations; Kiss 100, Classic 105, Radio Jambo, East FM, Smooth FM, Homeboyz Radio and Gukena FM; a National Newspaper - the Star Newspaper; and a TV station - Kiss Television. It further claims to be the exclusive licensee in Kenya for broadcasting and transmitting Live Audio commentary of the 2019/2020 English Premier League season. It states that the right was granted by the Wireless Group Media (GB) Limited through a written license dated 17th May, 2019, for which the plaintiff paid a significant amount. That the only other entities with similar broadcasting rights in Kenya are TalkSport, the BBC, and the Premier League Member Clubs. The plaintiff asserted that the Wireless Group Media (GB) Limited holds certain audio rights for English Premier League Matches through an Agreement with the Football Association Premier League Limited. The plaintiff emphasized the significant interest in the Premier League among the Kenyan public, who rely heavily on radio and television coverage due to the inability to attend Matches in person.

3. The plaintiff claimed that its license from the Wireless Group Media (GB) Limited grants it the exclusive rights to broadcast and transmit Live Audio Programs in English, including live commentary and related programming for up to 5 Premier League Matches each week, as well as similar Live Audio Programs in Swahili for up to 5 Matches per week. The plaintiff contended that on 9th August, 2019, it informed the defendants of its exclusive rights to broadcast the English Premier League, but received no response. On 11th August, 2019, the defendants allegedly infringed on the plaintiff's copyright by broadcasting two Premier League Matches, "Arsenal v Newcastle United" and "Manchester United v Chelsea," with commentary, thereby communicating them to the public through electronic transmission. The plaintiff claims this unauthorized broadcasting caused it loss and damage, and seeks an inquiry into damages or an account of profits.

4. The plaintiff argues that having paid for the license, it is entitled to the exclusive use of the rights, but the defendants are unlawfully profiting from advertisements and betting services in their broadcasts. That despite warnings and demands, the defendants have refused to stop, and unless restrained by an injunction, the plaintiff fears further infringement, which could result in irreparable damage. It asserted that the defendants were previously warned about similar infringements during the 2018/2019 season by the Football Association Premier League Limited, the rights holder, but did not comply.

5. In opposition to the plaintiff’s suit, the 1st defendant filed a statement of defence dated 18th November, 2019 where it denied all the averments in the plaintiff’s plaint and averred that as part of its portfolio, it carries out the business of radio broadcasting including but not limited to the broadcast of Live Audio Commentary on Matches through its Radio Station, Radio Maisha. It further averred that the rights to broadcast the English Premier League Matches are governed by regulations, including the Competition Act. The 1st defendant contended that Live Audio Transmissions, do not fall under copyright protection in Kenya because copyrights in broadcasts apply only after an event has been broadcast, not to live transmissions, thus the plaintiff's cause of action herein is invalid. It asserted that the Agreement granting exclusive rights to transmit Live Audio Programs and restricting other media outlets from broadcasting the Premier League Matches for three seasons (2018/2019 to 2021/2022) is anti-competitive and violates the Competition Act and the Kenya Information and Communications Act.

6. The 1st defendant argued that the alleged rights holder did not conduct an open and competitive bidding process for the broadcasting rights, thus denying other media players in Kenya a fair opportunity to bid, which amounts to restrictive trade practices under the Competition Act. The 1st defendant acknowledged broadcasting three Matches on 11th August, 2019 being ‘Leicester v Wolves,’ ‘Newcastle United v Arsenal,’ and ‘Manchester United v Chelsea’. It contended that it had the right to do so under Article 33 of the Constitution of Kenya, 2010, and its listeners had the right to receive information concerning the Matches in view of the popularity of the English Premier League in Kenya. The 1st defendant maintained that any revenue generated from these broadcasts was lawful and justified, given the widespread interest in the English Premier League in Kenya.

7. The plaintiff filed a Notice of Withdrawal of suit dated 23rd April, 2024, seeking to withdraw the suit against the 2nd defendant with no order as to costs. On 13th June, 2023, the plaintiff withdrew its suit against the 2nd defendant

8. This matter proceeded to hearing where the plaintiff called one witness in support of its case. The 1st defendant also called one witness to ventilate its case.

Plaintiff’s Case. 9. Mr. Steve Agembo testified as PW1. He adopted his witness statement dated 11th October, 2022 and produced the documents in the plaintiff’s bundle of documents filed on 16th September, 2019 as the plaintiff’s exhibit Nos. 1 to 5, the documents filed on 6th June, 2023 as plaintiff’s exhibit Nos. 6 & 7, and recordings of the infringed Matches as the plaintiff’s exhibit Nos. 8 & 9. He testified that the plaintiff was the exclusive licensee in Kenya for broadcasting and transmitting Live Audio Commentary of the 2019/2020 English Premier League Season, a right that was granted by the Wireless Group Media (GB) Limited through a written license dated 17th May, 2019, for which the plaintiff paid a significant amount.

10. It was his evidence that on 9th August, 2019, it notified the defendants of this right, but in complete disregard of the Notice, on 10th & 11th August, 2019, the 1st defendant through its social media platforms announced that it would be broadcasting live Matches from the English Premier League. He stated that the defendant infringed on the plaintiff’s copyright by broadcasting with commentary two English Premier League Matches on 11th August, 2019 and 31st August, 2019, and three English Premier League Matches on 17th August, 2019 and 24th August, 2019. He stated that the plaintiff has suffered loss and damage and is entitled to, and claims an inquiry into damages or an account of profits.

11. On being cross-examined, Mr. Agembo could not confirm how much was paid for the rights for the license. He confirmed that there are over a hundred media houses in Kenya and most of them would be interested in airing the English Premier League. He stated that he was not aware whether there was competitive bidding, but the plaintiff researched on who the rights holders in Africa were, and it placed a bid for the rights and got them. He referred to Clauses 2. 1 and 3. 1 of the License Agreement, stated that their license was exclusive, non-assignable, non-transferable, and non-sub-licensable. He expressed the view that said clauses did not amount to restrictive trade practices. He denied knowledge of an exemption being issued by the Competition Authority. Mr. Agembo contended that the plaintiff’s competitors are Radio Maisha, Radio Citizen, Milele FM and KBC Taifa, thus broadcasting by any of the five aforementioned Radio Stations amounted to an infringement of the plaintiff’s copyright.

12. In re-examination, PW1 stated that he has no knowledge of the 1st defendant having filed a complaint with the Competition Authority or pursuing any of the dispute resolution mechanisms.

Defendant’s Case. 13. Mr. Tom Jappani testified as DW1. He adopted his witness statement dated 25th February, 2021, and produced the documents filed by the 1st defendant as the 1st defendant’s exhibits. He testified that the plaintiff did not have exclusive rights to Live Audio Transmissions with commentary on the 2019/2020 English Premier League in Kenya. He argued that these alleged exclusive rights raise significant competition concerns within the radio broadcast industry. It was his evidence that the Agreement between the plaintiff and the Wireless Group Media (GB) Limited was characterized as a restrictive trade practice because it prohibits healthy competition by granting an exclusive license for a popular product to one player, disadvantaging other Radio Stations in Kenya.

14. He asserted that the said practice had not been exempted by the Competition Authority and that neither the 1st defendant nor other industry players were invited to participate in an open and competitive bidding process for these exclusive rights. The witness claimed that this practice unfairly restricts and distorts competition among Radio Broadcasters in Kenya. He asserted that the 1st defendant has a separate Standard Rebroadcast Agreement with the British Broadcasting Corporation (BBC), which grants it a non-transferable and non-exclusive right to rebroadcast BBC’s live programming of the English Premier League on Saturdays and Sundays for the duration of the license.

15. In cross-examination, he contended that that they obtain rights from the copyright holder before airing copyrighted content. He testified that the first Matches of the 2019/2020 season were broadcast live on 10th and 11th August, 2019 with commentary, and subsequent Matches were rebroadcasted from the BBC. He explained that a rebroadcast involves three stages: pre-match analysis by their commentators, taking a feed from the BBC to go on air, and post-match analysis by their sports commentators. Mr. Jappani mentioned that in 2019/2020, the 1st defendant approached the plaintiff for a sub-license to air the Matches, as they initially broadcasted them without one, but the plaintiff had not granted the 1st defendant a sub-license to air the English Premier League Matches to date.

16. In re-examination, he asserted that the BBC was airing different Matches other than the ones aired by the plaintiff, thus after the initial two Matches and receipt of the plaintiff’s letter, they fell back to their contract with the BBC.

17. I directed the parties herein to file written submissions upon the cloure of the plaintiff’s and the 1st defendant’s case. The plaintiff’s submissions were filed on 14th September, 2023 by the law firm of Kaplan & Stratton Advocates, whereas the 1st defendant’s submissions were filed by the law firm of TripleOKLaw Advocates LLP on 22nd January, 2024.

18. Mr. Kahura, learned Counsel for the plaintiff submitted that the plaintiff held exclusive rights to broadcast and commentate on live football Matches during the 2019/2020 English Premier League Season, granted by a license from the Wireless Group (GB) Media. He submitted that the 1st defendant infringed on the plaintiff's copyright by broadcasting and transmitting Live Audio Programs of the Matches. Counsel referred to Section 26 of the Copyright Act and the Supreme Court of India case of R.G. Anand v M/S Delux Films & ors [1978] A 1 R 1613, [1979] SCR (1) 2018 [1978] SCC (4) 118, as cited by the Court of Appeal in Mount Kenya Sundries Limited v Macmillan Kenya (Publishers) Ltd [2016] eKLR, to support his argument.

19. He submitted argued that the 1st defendant was not permitted to commentate on the Matches during rebroadcasts, which they did, violating the plaintiff's exclusive rights. He cited Section 35 of the Copyright Act, arguing that the plaintiff did not authorize or consent to the 1st defendant's live broadcasting of the football Matches.

20. Mr. Kahura referred to the case of Commissioner of Income Tax & another v M/s Synopsis International Old Ltd [2010] eKLR, cited by the Court in Seven Seas Technologies Limited v Commissioner of Domestic Taxes [2021] KEHC 358 (KLR), to support his contention that the 1st defendant lacked a license or sub-license to broadcast, transmit, or commentate on the Matches, therefore, the 1st defendant infringed on the plaintiff's copyright.

21. Counsel submitted that during cross-examination, the 1st defendant's witness admitted to broadcasting and transmitting Live Audio Programs of the Matches without consent. He supported his submission by citing the decisions in Choitram v Nazari [1984] KLR 327, and 47 Freighter Conversion Lle v One Jet One Airways Kenya Limited & 3 others [2014] eKLR. Mr. Kahura argued that the authority to license, assign, or transfer broadcasting and transmission rights lies solely with the licensor.

22. He stated that under Clause 2. 1 of the License Agreement, the plaintiff is the exclusive licensee for the specified territory and is prohibited from assigning, transferring, or sub-licensing these rights to other media players. He cited the case Governor of Kericho County v Kenya Tea Development Agency & 30 others Ex parte KTDA Management Services Limited [2016] eKLR, to support his argument and contended that if the 1st defendant believed that the License Agreement was anti-competitive, it should have filed a complaint of unfair competition with the Communications Authority of Kenya, as outlined under Section 84T of the Kenya Information and Communications Act. Mr. Kahura noted that the 1st defendant has neither lodged such a complaint nor served the plaintiff with an order restricting it from engaging in unfair competition.

23. He cited the decisions in Franz Frederichs v Kenya Medical Supplies Agency [2019] eKLR, and British United Provident Association Limited v Bupa Kenya Limited [2020] eKLR, to support his argument that an inquiry into damages is necessary to determine the royalties paid for the license rights by the plaintiff, as it would enable the Court to calculate a reasonable royalty for the copyright infringement. In submitting that the plaintiff is entitled to the orders of damages sought, Mr. Kahura cited the provisions of Section 35 of the Copyright Act.

24. Mr. Ogutu, learned Counsel for the 1st defendant submitted that other than the plaintiff, there are other entities in Kenya such as the British Broadcasting Corporation (BBC)that held the relevant broadcasting rights at the material time. He further submitted that the 1st defendant held a separate Standard Rebroadcasting Agreement with the BBC dated 25th September, 2018, which granted it a non-transferable and non-exclusive right to rebroadcast BBC’s live programming of the English Premier League on Saturdays and Sundays for the duration of the License. He stated that the 1st defendant did not interfere with the rights allegedly held by the plaintiff nor did it interfere with or rely on content of the plaintiff in their broadcast of the English Premier League Matches in question. To buttress the said submissions, Counsel relied on the Supreme Court of Kenya case of Communications Commission of Kenya & 5 others v Royal Media Services Limited & 5 others [2014] eKLR and the case of Optima Sports Management (UK) Limited v Kenya Broadcasting Corporation [2020] eKLR.

25. He argued that, under Section 2 of the Copyright Act and Clause 2 of the Rebroadcasting License Agreement with the BBC, the 1st defendant was permitted to comment on the football Matches it rebroadcasted, which did not infringe on the plaintiff’s copyright. He also noted that other radio stations, such as Citizen Radio, Mulembe FM and West FM also broadcasted the English Premier League Matches without facing legal action from the plaintiff. He contended that the plaintiff unfairly targeted the 1st defendant, which had its own rebroadcasting rights under a separate Agreement.

26. The defendant's Counsel contended that the Agreement between the plaintiff and TalkSport violated Sections 21, 25 and 26 of the Competition Act, as it created an unfair market disadvantage for other players, including the 1st defendant, due to its exclusive nature and restrictive trade practices. He expressed the view that the said exclusive Agreement prevented other players from securing rights to a popular product in the industry.

27. Mr. Ogutu referred to the English contract law case of Holman v Johnson [1775 – 1802] All ER 98, cited with approval in the case of Attorney General v Law Society of Kenya & another [2017] eKLR, to support the claim that the said Agreement was illegal and should not be enforced. Furthermore, he stated that the request for a permanent injunction against the 1st defendant for broadcasting live commentary on the 2019/2020 English Premier League Season is moot since the League is now in the 2023/2024 Season.

28. In citing the case George Ngige Njoroge v Attorney General [2018] eKLR, he argued that the plaintiff is not entitled to aggravated damages. He suggested that if this Court finds the 1st defendant liable, a sum of Kshs.150,000/= per Match, for each of the ten disputed matches should be sufficient damages. He stated that the said amount was based on evidence from the plaintiff’s witness showing that during out-of-court negotiations, the parties had agreed on a sub-licence fee of Kshs.150,000/= per Match for the proposed sub-licensing of broadcasting rights for the 2022/2023 English Premier League Season.

Analysis And Determination. 29. I have considered and analyzed the evidence adduced by the two (2) witnesses in line with the pleadings filed, alongside with the written submissions by Counsel for the parties. The issues that arise for determination are -i.Whether the plaintiff’s exclusive license constitutes restrictive trade practices, thus being anti-competitive;ii.Whether the 1st defendant infringed on the plaintiff’s copyright; andiii.Whether the plaintiff is entitled to the reliefs sought in the plaint.

Whether the plaintiff’s exclusive license constitutes restrictive trade practices, thus being anti-competitive. 30. The plaintiff adduced evidence in support of the fact that it had an exclusive, non-assignable, non-transferable, non-sub-licensable license to use, communicate to the public, broadcast and transmit the content via analogue Radio Broadcast on the English Premier League Matches for the year 2019/2020. The parties herein agree that the English Premier League is very popular in Kenya. I note that the 1st defendant does not dispute that the plaintiff possesses the aforesaid license. Instead, it asserts that granting the plaintiff an exclusive, non-assignable, non-transferable, non-sub-licensable license, amounts to restrictive trade practices, which places other media players such as the 1st defendant at an undue disadvantage hence being anti-competitive.

31. Section 26(1) (f) of the Copyright Act provides that –Copyright in a literary, musical, artistic or audio-visual work shall be the exclusive right to control the doing in Kenya of any of the following acts –… 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. (Emphasis added).

32. The license acquired by the plaintiff from the Wireless Group Media (GB) Limited finds backing in Section 26(1) (f) of the Copyright Act reproduced hereinbefore. It was submitted by the 1st defendant’s Counsel that theA between the plaintiff and TalkSport violated Sections 21, 25 and 26 of the Competition Act, as it created an unfair market disadvantage for other players, including the 1st defendant, due to its exclusive nature and restrictive trade practices. He contended that the exclusive Agreement prevented other players from securing rights to a popular product in the industry.

33. Upon perusal of the provisions of the Competition Act relied on by the 1st defendant’s Counsel, I am not persuaded that is the case, because the 1st defendant and any other media player in the country had the liberty of getting into a rebroadcasting Agreement with any entity with a broadcasting license, to rebroadcast the English Premier League Matches . The 1st defendant admitted that it was able to rebroadcast the said Matches following a Rebroadcasting Agreement it entered into with the BBC.

34. Nonetheless, in as much as the 1st defendant’s Counsel claims that the Agreement between the plaintiff and TalkSport violated Sections 21, 25 and 26 of the Competition Act, as it created an unfair market disadvantage for other players due to its exclusive nature and restrictive trade practices, no evidence has been led to the effect that that the validity of the said Agreement was challenged on the said ground, was declared to be anti-competitive and/or that the 1st defendant lodged a complaint with the Communications Authority of Kenya as provided for under Section 84T of the Kenya Information and Communications Act, which states the following –Any person having a complaint of a breach of fair competition against a licensee shall lodge a complaint to the Commission and the Commission shall, if it appears that a breach of fair competition has been or is being committed, investigate the act and omission and give written notice to the licensee stating -a.that the Commission is investigating a possible breach of fair competition;b.the reasons for the suspicion of contravention or breach, including any matter of facts or law which are relevant to the investigation;c.further information required from the licensee in order to complete the investigations; andd.where appropriate, the steps to be taken in order to remedy breach.

35. In light of the above provisions, it is my finding that a determination of whether or not the Agreement between the plaintiff and TalkSport was anti-competitive is a preserve of the Communications Authority of Kenya, which is charged with the responsibility of conducting investigations on the same, either on its own motion or on application by an individual.

Whether the 1st defendant infringed on the plaintiff’s copyright. 36. Works that are eligible for copyright are provided for under Section 22(1) of the Copyright Act as hereunder –Subject to this section, the following works shall be eligible for copyright or related rights -a.literary works;b.musical works;c.artistic works;ca)dramatic works;d.audio-visual works;e.sound recordings; andf.broadcasts.

37. The above notwithstanding, Section 22(2) of the Copyright Act provides that a broadcast shall not be eligible for copyright until it has been broadcast. Copyright infringement is provided for under Section 35(1) of the Copyright Act which states that -Copyright or related rights shall be infringed by a person who, without the license of the owner of the copyright or related rights -a.does, or causes to be done, an act the doing of which is controlled by the copyright or related rights; orb.imports, or causes to be imported, otherwise than for his private and domestic use, an article which he knows to be an infringing copy.

38. It is evident from the documents produced by the plaintiff that it entered into an Agreement dated 17th May, 2019 with the Wireless Group Media (GB) Limited, granting the plaintiff exclusive, non-assignable, non-transferable, non-sub-licensable license to use, communicate to the public, broadcast and transmit the content via analogue Radio Broadcast. Clause 3. 1 of the said Agreement provides that TalkSport shall not for the duration of the term, grant any other license of the broadcast rights to a third party in respect of the territory. This means that in Kenya, it was only the plaintiff who had the rights to broadcast and commentate on the English Premier League Matches for the year 2019/2020 via live and recorded radio transmissions.

39. Vide a letter dated 9th August, 2019, the plaintiff informed the 1st defendant that it had exclusive radio broadcast and commentary rights for the English Premier League 2019/2020 Season in Kenya and warned it not to infringe on the said rights. I am persuaded that the 1st defendant received the said letter since on the face of a copy of that letter as produced before this Court, there is the 1st defendant’s stamp confirming receipt of the said letter. It is however evident that the 1st defendant did not heed to the warning as it readily admitted that on 11th August, 2019, it broadcasted three Matches being ‘Leicester v Wolves,’ ‘Newcastle United v Arsenal,’ and ‘Manchester United v Chelsea’, and asserted it had the right to do so under Article 33 of the Constitution of Kenya, 2010, which provides for freedom of expression. It is my finding that the 1st defendant’s broadcasting of the said three (3) Premier League Matches amounts to an infringement of the plaintiff’s copyright in view of the License Agreement between the plaintiff and the Wireless Group Media (GB) Limited dated 17th May, 2019.

40. The 1st defendant’s witness during cross-examination testified that other than the three (3) Matches broadcasted on 11th August, 2019, the subsequent Matches were rebroadcasted with a license from the BBC. In support of this testimony, the 1st defendant produced a Radio Broadcasting Agreement between the 1st defendant and the BBC World Service dated 25th September, 2018. Upon perusal of the said Agreement, it is manifest that the BBC World Service licensed the 1st defendant to rebroadcast the English Premier League Matches on Saturdays and Sundays Live. The 1st defendant’s witness explained that a rebroadcast involves three stages: pre-match analysis by their commentators, taking a feed from the BBC to go on air, and post-match analysis by their sports commentators.

41. The Copyright Act defines “rebroadcasting” as simultaneous or subsequent broadcasting by one or more broadcasting authorities of the broadcast of another Broadcasting Authority. It therefore follows that when rebroadcasting the English Premier League Matches broadcasted by the BBC, the 1st defendant was not allowed to include its own live commentaries from its commentators, but rebroadcast the content from the BBC as was, without any amendments or additions.

42. After listening to the recordings of the infringed Matches produced by the plaintiff as exhibit Nos. 8 and 9, I agree with Counsel for the plaintiff that in as much as the 1st defendant has demonstrated that it had obtained the rights to rebroadcast the English Premier League Matches from the BBC, the 1st defendant made its own commentaries on the Matches during rebroadcasts, thus infringing on the plaintiff’s copyright. In the case of Optima Sports Management (UK) Limited v Kenya Broadcasting Corporation (supra), it was held that in order to successfully defend itself against a claim for copyright infringement, a defendant must demonstrate that it acquired the right to broadcast its Matches from another source, other than the complaining plaintiff. In this instance, based on its own admission, the 1st defendant has fallen short in defending itself against the allegations brought against it on infringing the rights of the plaintiff’s Copyright. In the premise, I am satisfied that the 1st defendant infringed on the plaintiff’s copyright.

Whether the plaintiff is entitled to the reliefs sought in the plaint. 43. As was correctly submitted by Mr. Ogutu for the 1st defendant, the order for a permanent injunction restraining the 1st defendant from making Live Audio Transmissions with commentary on the 2019/2020 English Premier League has since been overtaken by events since the English Premier League is currently in the 2023/2024 Season.

44. Section 35(4) of the Copyright Act provides for the remedies and/or relief available to the plaintiff in the case of infringement of a copyright. It states that-Infringement of any right protected under this Act shall be actionable at the suit of the owner of the right and in any action for infringement the following reliefs shall be available to the plaintiff -a.the relief by way of damages, injunction, accounts or otherwise that is available in any corresponding proceedings in respect of infringement of other proprietary rights;b.delivery up to the plaintiff of any article in the possession of the defendant which appears to the court to be an infringing copy, or any article used or intended to be used for making infringing copies;c.in lieu of damages, the plaintiff at his option, be awarded an amount calculated on the basis of reasonable royalty which would have been payable by a licensee in respect of the work or type of work concerned;d.for the purpose of determining the amount of damages or a reasonable royalty to be awarded under this section or section 33(2), the court may direct an enquiry to be held and may prescribe such procedures for conducting such enquiries as the court considers necessary; ande.before the owner of the right institutes proceedings under this section, he shall give notice in writing to the exclusive licensee or sub-licensee of the copyright concerned of the intention to do so, and the exclusive licensee or sub-licensee may intervene in such proceedings and recover any damages he may have suffered as a result of the infringement concerned or a reasonable royalty to which he may be entitled.

45. The plaintiff demonstrated compliance with the provisions of Section 35(4)(e) of the Copyright Act, since vide an email sent to the copyright’s holder on 14th August, 2019, it notified the copyright’s holder of its intention to move the Court for an injunction barring two media houses, and any other media house from infringing on its rights.

46. In this case, the plaintiff prays for an order for aggravated damages for flagrant infringement and payment of all sums found to be due to the plaintiff upon the taking of an inquiry as to damages for infringement of copyright and account of the profits made by the 1st defendant by virtue of its infringement of copyright. Having found that the 1st defendant infringed on the plaintiff’s copyright, I am satisfied that the plaintiff is entitled to an award of damages on account of the said infringement.

47. As for aggravated damages, they go beyond compensation. They are meant to punish the wrongdoer and act as a deterrent from similar conduct in the future. In determining whether to award aggravated damages or not, the Court held as hereunder in the case of Abdulhamid Ebrahim Ahmed v Municipal Council of Mombasa [2004] eKLR-Aggravated damages are awarded in actions where the damages are at large, that is to say where the damages are not limited to the pecuniary loss that can be specifically proved. They are normally awarded in actions of defamation, intimidation, false imprisonment, malicious prosecution, trespass to land, persons or goods, conspiracy and infringement of copy right. Such damages are part of, or included in, the sum awarded as general damages and are therefore at large. As such they need not be specifically pleaded or included in the prayer for relief.

48. Aggravated damages are provided for under Section 35(6) of the Copyright Act which states as follows-Where in an action under this section an infringement of copyright protected under this Act is proved or admitted, and the court, having regard (in addition to all other material considerations) to -a.the flagrancy of the infringement; andb.any benefit shown to have accrued to the defendant by reason of the infringement is satisfied that effective relief would not otherwise be available to the plaintiff, the court, in assessing damages for the infringement, may award such additional damages by virtue of this subsection as the court may consider appropriate in the circumstances.

49. From the above provisions of the law, I am not persuaded that this a proper case for making an award for aggravated damages. This is because after the Court granted the plaintiff an order of injunction against the 1st defendant, the 1st defendant stopped the live broadcasting of the English Premier League Matches for the 2019/2020 Season. In the premise, I am satisfied that damages for infringement of the plaintiff’s copyright are sufficient in this case.

50. Section 35(4) (d) of the Copyright Act allows this Court to make an order for an enquiry to be conducted for purposes of determining the amount of damages to be awarded to a successful party. In the case of British United Provident Association Limited v Bupa Kenya Limited [2020] eKLR, the Court in making an order for enquiry held that –A Plaintiff bringing an action for infringement of intellectual property may choose to prove damages contemporaneously with liability. But it may, like here, first seek to establish infringement and once infringement has been determined to move to the next step of proving damages. It seems to me that this latter approach could be a more efficient way of use of the Court’s time. Parties should allow the Court to make a decision as to whether there is infringement in the first place, so that an inquiry of damages is undertaken only if necessary. The parties and Court should strive to make the proceedings on liability efficient and expeditious.As to the taking of account of profits of an infringer, the philosophy behind the remedy is that a party who has profited unlawfully from using or riding on another’s intellectual property should not be allowed to keep the profits made from such venture. To permit that would be to allow for unjust enrichment.

51. In the premise, an order for enquiry is necessary to enable this Court to determine the amount of damages that may be adequate to compensate the plaintiff for the loss suffered as a result of the 1st defendant’s infringement of its copyright.

52. It is my finding that the plaintiff’s suit against the 1st defendant is successful. Section 27 of the Civil Procedure Act provides that costs follow the event. The costs of this suit shall therefore be borne by the 1st defendant.

53. In the circumstances, I make the following orders: -i.A declaration is hereby made that the plaintiff is the only local broadcaster that had the exclusive right to broadcast Live Audio transmissions with commentary on the 2019/2020 English Premier League within Kenya;ii.An enquiry as to damages for infringement of copyright or, at the option of the plaintiff, and account of the profits made by the 1st defendant by virtue of its infringement of the plaintiff’s copyright;iii.Payment of all sums found to be due to the plaintiff upon taking such inquiry;iv.Costs of the suit are hereby awarded to the plaintiff; andv.Interest is hereby awarded to the plaintiff for orders (iii) & (iv) above at Court rates from the date of filing suit until payment in full.It is so ordered.

DATED, SIGNED AND DELIVERED AT NAIROBI ON THIS 20TH DAY OF SEPTEMBER, 2024. JUDGMENT DELIVERED THROUGH MICROSOFT TEAMS ONLINE PLATFORM.NJOKI MWANGIJUDGEIn the presence of:Mr. Kahura for the plaintiffMr. Ochieng for the 1st defendantMs. B. Wokabi – Court Assistant.Page 6 of 6 NJOKI MWANGI, J.