HABYARIMANA v MTN RWANDA CELL LTD (1)

HABYARIMANA v MTN RWANDA CELL LTD (1)

- Source: Amategeko - Section: Decisions (Judgements) - Date: 2023-06-23 - Case/document no.: RS/INJUST/RCOM 00002/2020/SC - Collection: Supreme Court

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HABYARIMANA v MTN RWANDA CELL LTD (1) [Rwanda SUPREME COURT – RS/INJUST/RCOM 00002/2020/SC (Mukamulisa, P.J., Cyanzayire, Nyirinkwaya, Hitiyaremye and Muhumuza J.) June 23,2023] Law on the protection of intellectual property – Copyright – The primary moral and economic rights to any literary, artistic, scientific, or audiovisual work belong to its creator or those who collaborated in its creation. Law on the protection of intellectual property – Copyright – Being an actor in a fictional work does not grant a person the rights of the author of that work, as everything they perform is directed and controlled by the director. Law on the protection of intellectual property – Infringment on the copyright – Liability – A person or company that commercially exploits creative works in their own name and for their own benefit without authorization from the rightful owner is liable, as such works are protected by law. Facts: Habyalimana Charles filed a lawsuit against MTN Rwandacell Ltd before the Nyarugenge Commercial Court, alleging that MTN used his fictional characters, Kanyombya and Sekaganda, for its commercial gain without his authorization. He claims that this infringed

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upon his moral and economic rights as the creator of these works. As a result, he is requesting the court to order MTN to compensate him with various damages. MTN raised a preliminary objection to the admissibility of Habyalimana Charles’ lawsuit, arguing that he lacked legal standing to file the claim since the certificate of registration indicated that the rights to protect the disputed works belonged to Société de Production Audiovisuelle et Multimédia 2a2m. The court ruled that the case was inadmissible due to his lack of legal standing. Habyalimana appealed to the Commercial High Court, which ruled that he had the legal standing to sue over the fictional characters Kanyombya and Sekaganda. Consequently, the previous judgment was set aside, and the case was referred to the Commercial Court for a full hearing on the merits. The case was referred to the Commercial Court and Yellow Dot Rwanda Ltd, Netsolutions Ltd, Kayitankore Ndjoli and Niyitegeka Gratien intervened in the case at MTN's request. The court ruled that MTN had used the fictional characters Kanyombya and Sekaganda for commercial purposes upon the permission of the rightful owners. Habyalimana appealed to the Commercial High Court, which ruled that his appeal was unfounded. He then lodged a second appeal with the Court of Appeal, which determined that the matter was outside its jurisdiction. Subsequently, Habyalimana applied for a review of the Commercial High Court's judgment, claiming it was vitiated by injustice. He argued that the creator of a work

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holds the primary moral and economic rights to it, and that for someone to be recognized as the rightful owner, it is sufficient for the creator's name to appear on the work in the usual manner, unless evidence suggests otherwise. MTN submitted that the films featuring the fictional characters Kanyombya and Sekaganda were not registered under Habyalimana's name, but were instead registered by Société de Production Audio, Audiovisuelle et Multimédia 2 à 2m under the name of Marie Goretti Niragire, as reflected on the certificate. Therefore, MTN argued that this company holds the rights to the works as the rightful owner. In its submission, Netsolutions Ltd also stated that it had nothing to say on the issue of whether Habyalimana Charles was the rightful owner of the fictional characters Kanyombya and Sekaganda, since the contracts between Netsolutions Ltd and Niyitegeka Gratien only concern his personal comedies, which have nothing to do with these fictional works. Niyitegeka Gratien stated that he played the character of Sekaganda in the film Zirara Zishya at the request of Habyalimana Charles. He clarified that the name Sekaganda was not used elsewhere, except when he was called by that name in everyday life. He also argued that there was no reason for him to be involved in the case as his contract with Netsolutions Ltd has nothing to do with the fictional character Sekaganda. In his submission, Kayitankore Ndjoli (Kanyombya) further stated that he was not a fictional character created by Habyalimana Charles, as they never entered into any

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contract. He explained that the name Kanyombya, which he has portrayed in films since 2002, was his own creation. He added that if Habyalimana Charles registered the name as his own work, it would be an error, as Charles should have first sought his permission to use and register the name. Habyalimana further requested that MTN be ordered to compensate him for using his works for commercial gain without his authorization. He also disputed MTN's claim that the fictional characters Kanyombya and Sekaganda were not the ones sold on their platform, arguing that what was sold were the comedies of Kayitankore Ndjoli and Niyitegeka Gratien, and that this claim had no merit. Habyalimana also demonstrated that MTN operates a business that includes airtime, internet, and other services, and that if someone wants to sell content, MTN provides a platform for distribution, and they agree on a profit- sharing arrangement for the content sold. MTN also argued that works must be registered as private property in order to be considered as used without authorisation. It stated that Habyalimana Charles had not provided evidence that he had registered the fictional characters Kanyombya and Sekaganda as his personal property. Furthermore, MTN pointed out that the registration with the RDB relates to the film Zirara Zishya and not to the fictional works in question. Held: 1. The primary moral and economic rights to any literary, artistic, scientific, or audiovisual work belong to its creator or those who collaborated in its creation.

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2. Being an actor in a fictional work does not grant a person the rights of the author of that work, as everything they perform is directed and controlled by the director.

3. A person or company that commercially exploits creative works in their own name and for their own benefit without authorization from the rightful owner is liable, as such works are protected by law.

4. Registering a work with RDB alone is not sufficient to claim moral rights over it unless there is evidence showing that you are the creator of the work. MTN used the fictional characters Kanyombya and Sekaganda by Habyalimana Charles for commercial gain without authorization; The case will resume with the analysis of the issue regarding compensation on a date to be communicated to the parties by the Court Registry.

Statutes and statutory instruments referred to: Law N° 31/2009 of 26/10/2009 on the protection of intellectual property, articles 195 and 222. No cases were referred to Judgment I.

BACKGROUND OF THE CASE

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Habyalimana Charles sued MTN Rwandacell Ltd (referred to in this case as MTN) in the court formerly known as the Nyarugenge Commercial Court, seeking various forms of compensation. His claim is based on MTN's unauthorised use of his fictional characters, Kanyombya and Sekaganda, in its business operations, for profit. He argues that by selling these characters, MTN has violated his moral and economic rights as the creator of these characters.

He claims that his fictional characters, Kanyombya and Sekaganda, appear in a book titled BIBLE1, in another called SCENARIO2, and in the films NTAWE UMENYA AHO BWIRA AGEZE, HARANIRA KUBAHO, and ZIRARA ZISHYA, which he wrote and directed. He further stated that MTN, capitalizing on their popularity, created what they called the KANYOMBYA

1 He explains that BIBLE is a small booklet that contains the names of fictional characters and the detailed characteristics of each one, as well as the relationships between them. This allows anyone who is to portray these characters to fully understand how the fictional character was conceived, including their traits and how they interact with others in the story. 2 He explains that SCENARIO is a book that outlines the dialogue each actor must say, how they should deliver it, the actions they must perform, the manner in which they should perform them, and the timing of those actions. It also includes the emotions the character should express at every moment. It is essentially the document that contains the entire story (plot) as it should be represented by the actors.

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COMEDY SERVICE and the SEKAGANDA DRAMA SERVICE, altering their appearances.

MTN objected to the admissibility of Habyalimana Charles' claim, arguing that he lacked the capacity to bring the case. They pointed out that the registration certificate N16/09/RDB indicated that the entity granted the rights to protect these works was the Société de Production Audiovisuelle et Multimédia 2a2m. In the RCOM Nyarugenge judgment, it was ruled that Charles Habyalimana's application was inadmissible because he did not have the legal capacity to file it.

Habyalimana Charles appealed to the Commercial High Court, and in judgment

RCOMA 00055/2017/CHC/HCC, rendered on 08/03/2018, the court ruled that he has the legal standing to challenge the use of his fictional characters, Kanyombya and Sekaganda, who appeared in the credits of the films NTAWE UMENYA AHO BWIRA AGEZE, HARANIRA KUBAHO, and ZIRARA ZISHYA, used in other activities without permission. The court set aside the previous judgment and ordered that the case be referred back to the Commercial Court for a hearing on its merits. Additionally, the court directed MTN to pay Habyalimana Charles 800,000 Rwandan Francs as counsel's fees.

The case was referred back to the Commercial Court, and at MTN's request, Yellowdot Rwanda Ltd, Netsolutions Ltd, Kayitankore Ndjoli, and Niyitegeka Gratien intervened in the case. In the judgment RCOM 00731/2019/TC, rendered on 04/10/2019, the court ruled that MTN, Yellowdot Rwanda Ltd, and Netsolutions Ltd

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lawfully used the fictional characters Kanyombya and Sekaganda for commercial purposes that generated revenue. Consequently, the court ordered Habyalimana Charles to pay MTN 700,000 Rwandan Francs as the counsel’s fee.

The court made the following decision, motivated by the following reasoning: - In the credits of the film ZIRARA ZISHYA, a fictional character named Sekaganda is credited, whose real name is Niyitegeka Gratien. Similarly, in the films HARANIRA KUBAHO and NTAWE UMENYA AHO BWIRA AGEZE, a fictional character named Kanyombya appears, whose real name is Kayitankore Ndjoli. These pieces of evidence confirm that Kayitankore Ndjoli and Niyitegeka Gratien, together with Habyalimana Charles, collaborated in the creation of the fictional characters and the films in which they appeared. Consequently, they hold equal rights with Habyalimana Charles regarding the intellectual property of the characters they portrayed in these films; - Although Kayitankore Ndjoli and Niyitegeka Gratien were bound by employment contracts with Habyalimana Charles while acting as fictional characters Kanyombya and Sekaganda in

ZIRARA

ZISHYA and HARANIRA KUBAHO, these contracts do not extinguish their rights to the fictional

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characters they portrayed unless these contracts explicitly prevent them from using the names of those characters; - Kayitankore Ndjoli and Niyitegeka Gratien retained the right to enter into contracts to sell their private intellectual property related to the comedic characters Kanyombya and Sekaganda, as they owned the rights to these fictional creations; - MTN, Yellowdot Rwanda Ltd, and Netsolutions Ltd did not commit any wrongdoing by distributing works based on the fictional characters Kanyombya and Sekaganda, as they had obtained permission from Kayitankore Ndjoli and Niyitegeka Gratien, who, in collaboration with Habyalimana Charles, created those characters.

Habyalimana Charles appealed to the Commercial High Court. In judgment RCOMA 00876/2019/HCC, rendered on 15/01/2021, this court ruled that his appeal lacked merit and ordered him to pay MTN 1,000,000 Rwandan Francs as counsel’s fees and 700,000 Rwandan Francs as procedural fees.

The court explained that Habyalimana Charles himself admitted that he had no claims against Kayitankore Ndjoli and Niyitegeka Gratien and had no objections to the agreements they had entered into with Yellowdot Rwanda Ltd and Netsolutions Ltd, as these agreements related to their own comedy works. He also

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did not dispute Kayitankore Ndjoli's claim that he personally created the name "Kanyombya" and used it as a character he portrayed in the films NTAWE UMENYA AHO BWIRA AGEZE, HARANIRA KUBAHO and ZIRARA ZISHYA on which they collaborated. In light of the above, the Tribunal found no basis to conclude that the fictional characters Kanyombya and Sekaganda, which Habyalimana Charles claimed to be his creations, were the same as those featured in these films and subsequently commercialised on MTN's platform. As a result, there was no basis on which to determine whether MTN, Yellowdot Rwanda Ltd and Netsolutions Ltd required authorisation from the rightful owners of these characters.

Habyalimana Charles appealed to the Court of Appeal, which ruled that his second appeal did not fall within its jurisdiction. On 18/11/2021, Counsel Bundogo Innocent, representing Habyalimana Charles, filed an application with the President of the Court of Appeal for a review of the judgment RCOMA 00876/2019/HCC delivered by the Commercial High Court on 15/01/2021, on the grounds that it was vitiated by an injustice. After considering the application, the President of the Court of Appeal referred the matter to the President of the Supreme Court for further consideration. After considering the report submitted, the President of the Supreme Court granted the petition for review and the case was set for hearing before the Supreme Court on 18/01/2023.

On the scheduled date, the Court called the case, and the parties appeared as follows: Habyalimana Charles, represented by Counsel Bundogo Innocent;

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MTN, represented by Counsel Kabera Jean Claude alongside Counsel Bizimana Emmanuel; Netsolutions Ltd, represented by Counsel Semadwinga Claude; and Niyitegeka Gratien, represented by Counsel Uwamahoro Marie Grâce. Kayitankore Ndjoli appeared in person but without legal representation, while Yellowdot Rwanda Ltd failed to appear, having been summoned to an unknown address. Since it is not permissible for a litigant to appear before the Supreme Court without legal assistance, the Court adjourned the hearing to allow Kayitankore Ndjoli time to secure legal counsel. Furthermore, the Court ordered Niyitegeka Gratien to appear in person at the next hearing.

The case was heard in a public on 17/ 04/ 2023, with Habyalimana Charles assisted by Counsel Bundogo Innocent; MTN represented by Counsel Kabera Jean Claude alongside Counsel Bizimana Emmanuel; Netsolutions Ltd represented by Counsel Semadwinga Claude; Niyitegeka Gratien was assisted by Counsel Uwamahoro Marie Grâce; and Kayitankore Ndjoli assisted by Me Nshimiyimana Moubaraka. However, Yellowdot Rwanda Ltd failed to appear despite being summoned to an unknown address.

The court first analyzed the objection raised by Counsel Semadwinga Claude, representing Netsolutions Ltd, who argued that, based on Article 55 of Law No. 30/2018 of 02/06/2018, which determines the jurisdiction of courts, Habyalimana Charles’s claim should not have been admitted since he failed to demonstrate any legal injustice in his case. However, the court informed the

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parties that it was unnecessary to examine this objection, as it did not concern a matter of public order. Furthermore, in line with several established jurisprudences, once the President of the Supreme Court has authorized the review of a case, it must be heard on its merits, and no objections except those related to public order can prevent it from proceeding.

Having made this ruling, the Court proceeded to hear the case on the merits, addressing the following issues: a. Determining the rightful owner of the rights to the fictional characters Kanyombya and Sekaganda; b. Whether MTN had used the fictional characters Kanyombya and Sekaganda for commercial purposes without authorisation; c. With regard to the damages claimed by Charles Habyalimana based on his allegation that MTN had commercialised the fictional characters Kanyombya and Sekaganda by altering their appearance without authorisation, and the damages claimed in this regard, the Court informed the parties that it would first rule on the two above- mentioned issues. II. ANALYSIS OF LEGAL ISSUES

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a. Determining the rightful owner of the rights to the fictional characters Kanyombya and Sekaganda

Habyalimana Charles and his legal counsel, Bundogo Innocent, argue that in judgment RCOMA 00876/2019/HCC, the Commercial High Court upheld the previous ruling despite the contradictions within it. They pointed out that after reviewing the credits of the films ZIRARA ZISHYA, HARANIRA KUBAHO, and NTAWE UMENYA AHO BWIRA AGEZE, the court acknowledged that Habyalimana Charles was both the writer and director of these films, while Kayitankore Ndjoli and Niyitegeka Gratien were merely actors. However, the court still concluded that they had jointly created the fictional characters, despite the fact that an actor cannot be considered an author. They based their argument on Article 227 of Law No. 31/2009 of 26/10/2009, on intellectual property rights, which stipulates that "the original owners of the moral and economic rights shall be the co-authors of the audiovisual work, namely the director, the author of the scenario, or the composer of the music."

They argue that the creator of a work has the primary rights, both moral and economic, over his or her creation. Furthermore, for a person to be recognised as the author of a work, it is sufficient for his or her name to appear on the work in the usual manner, unless there is evidence to the contrary. This argument is based on Articles 222 and 223 of the aforementioned Law No. 31/2009 on the Protection of Intellectual Property Rights.

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They explain that several professions are involved in the creation of an audiovisual work such as a film. Experts in film production classify these professions into 57 key roles, divided into two main groups namely creative professions (conception) and technical execution professionals (execution), who implement what has been conceived by the artists. In this classification, the scriptwriter belongs to the creative group, while the actor belongs to the execution group.

They argue that a fictional character is created before the film itself is produced. The character is developed by the film’s writer, known as the scénariste, who first drafts the BIBLE—a document that details the characteristics and attributes of each fictional character. These details are then incorporated into the SCENARIO, the screenplay that guides the entire film production. Therefore, an actor merely portrays a pre-existing fictional character, strictly following the director’s instructions. Since the actor is compensated for their performance, their rights over the work end there, and they do not acquire any further ownership or intellectual property rights over the character they played.

They provide the example of the globally recognized fictional character James Bond, created by Ian Fleming in 1953. They noted that the first James Bond film was produced in 1962, nine years after the character's creation, and by 2019, a total of 25 films had been made, featuring nine different actors portraying the role. They argue that the fictional character James Bond belongs to Ian Fleming and his heirs until it enters the public domain,

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while the actors merely assume the role temporarily, with one actor replacing another over time.

They further provide the example of the popular fictional character Spider-Man, created by Stan Lee and Steve Ditko, who has been portrayed by more than eight different actors over time. They emphasized that while different actors come and go, the fictional character itself remains the intellectual property of its original creators (co-authors) and their heirs until it enters the public domain.

Counsel Kabera Jean Claude and Counsel Bizimana Emmanuel, representing MTN, argue that the films featuring the fictional characters Kanyombya and Sekaganda were registered under Société de Production Audio, Audiovisuelle et Multimédia 2 à 2m, which is listed under Marie Goretti Niragire. They contend that since this company appears on the certificate, it holds the copyright ownership of these works.

Counsel Semadwinga Claude, representing Netsolutions Ltd, states that he has no comment on whether Habyalimana Charles is the rightful owner of the fictional characters Kanyombya and Sekaganda. He argues that the contracts between Netsolutions Ltd and Niyitegeka Gratien only concern his personal comedy sketches and has no connection to those fictional characters.

Niyitegeka Gratien states that, at the request of Habyalimana Charles, he played the fictional character Sekaganda in the film ZIRARA ZISHYA and has never

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used that name elsewhere, except in everyday life when people called him by it, to which he responded. His legal representative, Counsel Uwamahoro Marie Grâce, adds that there is no reason for Niyitegeka Gratien to be involved in the case since the contracts he had with Netsolutions Ltd has no connection to the fictional character Sekaganda.

Kayitankore Ndjoli states that he is not a fictional character created by Habyalimana Charles and that the name Kanyombya, which he used in Habyalimana Charles' films, was created by him. He further claims that if Habyalimana Charles registered the name as his creation, it would be a mistake, as he should have sought his permission to use and register his name. When asked when he began using the name Kanyombya, he responded that it began in 2002 when he started working with Habyalimana Charles. His legal representative, Counsel Nshimiyimana Moubaraka, also argues that Kayitankore Ndjoli never had a contract with Habyalimana Charles to be considered his fictional character, and therefore he cannot be deemed to have violated any agreement.

DETERMINATION OF THE

COURT

Article 195, paragraph one (10), of the Law n° 31/2009 of 26/10/2009 on the protection of intellectual property, reads that literary and artistic works that are original intellectual creations in the literary and artistic domain are subject to protection granted by this Law, including, among others, works expressed by writing

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(books, pamphlets and other writings) as well as audiovisual works.

Article 222 of the very Law further reads that the owner of a copy right shall have priority on moral and economic rights on his/her work, and article 227 states that The original owners of the moral and economic rights shall be the co-authors of the audiovisual work, as the director, the author of the scenario or the composer of the music.

Article 6 of the Law on the protection of intellectual property provides definitions for terms related to copyrights. It is stated that : - An “author”means a natural person who created a work (subparagraph 20) ; - A “work” means any literary, artistic or scientific work (subparagraph 170) ; - An “audiovisual work” means a work that consists of a series of related images which impart the impression of motion, with or without accompanying sounds, susceptible of being made visible, and where accompanied by sounds, susceptible of being made audible (subparagraph 190) ; - A “work of joint authorship” means a work produced by the collaboration of two or more authors (subparagraph 220).

All the aforementioned legal provisions clearly state that the primary moral and economic rights to any

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literary, artistic, scientific, or audiovisual work belong to its creator or those who collaborated in its creation.

With regard to the requirements for the protection of original intellectual works, Article 197 of the law protecting intellectual property reads that : The protection of an original intellectual creation provided under this law shall not be subject to any prior permission from authorities. However, if that happens, authors of works under protection of this law may register their works at the empowered authorities (paragraph one), and that Protection of works shall take place at the beginnings of their creation, even if they are not incorporated to a medium. A works shall be deemed to be created, irrespective of its disclosure and shall be protected by the sole fact of their creation, even if it is not fully accomplished and during the time it is designed by its author (paragraph two). The provisions in the aforementioned pargraphs clarify that a work is protected even if it is not registered, and the protection applies as soon as it is created.

Regarding the evidence that demonstrates the ownership of copyrights (the holder of the author's rights), Article 223 of this law, paragraph one, states that : In order for an author of a work to be presumed as the owner of the copyright, in the absence of proof to the contrary, and so as to be entitled to rights of claiming for damages relating to violation of rights of the author, it is sufficient for his/her name to be indicated on the work in the usual manner.

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As far as this case is concerned, among the evidence presented by Habyalimana Charles showing that he is the rightful owner of the characters Kanyombya and Sekaganda, the following were included: - BIBLES containing the names of the actors in the films NTAWE UMENYA AHO BWIRA AGEZE, HARANIRA KUBAHO, and ZIRARA ZISHYA. In the Bible of the film ZIRARA ZISHYA, the fictional character Sekaganda is listed; in the Bible of that film and in the Bibles of the films HARANIRA KUBAHO and NTAWE UMENYA AHO BWIRA AGEZE, the fictional character Kanyombya is listed; - The summary of the film ZIRARA ZISHYA mentions that it is the third season of a story that started with NTAWE UMENYA AHO BWIRA AGEZE as the first season and HARANIRA KUBAHO as the second season. It is also mentioned that the scriptwriter of the play is Habyalimana Charles.

The closing credits of the films NTAWE UMENYA AHO BWIRA AGEZE, HARANIRA KUBAHO, and ZIRARA ZISHYA mention that the scriptwriter and director of the plays is Habyalimana Charles, and that Kayitankore Ndjoli played the character Kanyombya. It is also mentioned in the credits of the film ZIRARA ZISHYA that Niyitegeka Gratien played the character Sekaganda.

The court finds that the fact that the opening and closing credits of both the films NTAWE UMENYA AHO BWIRA AGEZE, HARANIRA KUBAHO, and ZIRARA

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ZISHYA each state that Habyalimana Charles is the writer is sufficient on its own to show that he is the sole creator of the characters Kanyombya and Sekaganda mentioned in those films. No evidence has been presented to refute this, and there are no other names listed as the writers of these films that could suggest joint authorship.

The court finds that, in addition to what is stated in the credits of the aforementioned films regarding the writer and director, the documents, including the Bibles of the films NTAWE UMENYA AHO BWIRA AGEZE, HARANIRA KUBAHO, and ZIRARA ZISHYA, as well as the synopsis of ZIRARA ZISHYA, are also included in the list of works protected by the law aimed at protecting intellectual property. Based on what is stated in Article 195 referenced earlier, these documents further confirm that Habyalimana Charles is the one who created the films and the fictional characters Kanyombya and Sekaganda mentioned therein.

The court also finds that the fact that the credits of these films mention Kayitankore Ndjoli and Niyitegeka Gratien as actors is sufficient to demonstrate that they did not play a role in the creation of the fictional characters Kanyombya and Sekaganda, whom they portrayed. This is understood because acting in a fictional work does not grant one the rights of an author. This is clear as their actions were directed and guided by the director of the film.

As for MTN's argument that Société de production Audio, Audiovisuelle et Multimédia 2 à 2m holds the copyright over the fictional characters Kanyombya and

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Sekaganda because it registered the films featuring them with RDB, the Court finds this claim unfounded. The presented evidence, including the credits, film bibles, and summaries, clearly indicates that Habyalimana Charles is the creator of these characters. Furthermore, Articles 222 and 227 of the Intellectual Property Law establish that the original creators or co-creators of a work hold the primary moral and economic rights over it.

Regarding Kayitankore Ndjoli's claim that he invented the name "Kanyombya," the Court finds this assertion unsubstantiated, as he himself acknowledges that he began using the name in 2002 while working with Habyalimana Charles. Furthermore, the credits of the films NTAWE UMENYA AHO BWIRA AGEZE, HARANIRA KUBAHO, and ZIRARA ZISHYA indicate that he had no role in their creation other than acting in them.

Based on the law and the evidence outlined above, it is in the finding of the Court that Habyalimana Charles is the rightful holder of the legally protected rights to the fictional characters Kanyombya and Sekaganda. b. Whether MTN had used the fictional characters Kanyombya and Sekaganda for commercial purposes without authorisation

Habyalimana Charles and his legal representative, Me Bundogo Innocent, argue that the Commercial Court ruled that MTN, Yellow Dot Rwanda Ltd and Netsolutions Ltd had commercialised comedy sketches attributed to the fictional characters Kanyombya and Sekaganda, having obtained permission from Kayitankore

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Ndjoli and Niyitegeka Gratien, who were considered to be co-creators of these characters alongside Habyalimana Charles and co-creators of the films in which they appeared. They further contend that the Commercial High Court, instead of rectifying this decision, found that no evidence had been produced to prove that the fictional characters Kanyombya and Sekaganda were actually disseminated through MTN's platform, making it unnecessary to assess whether MTN had obtained proper authorisation from their rightful owner. They argue that the court disregarded the evidence in the case file, which showed that MTN had exploited the popularity of these characters to create the so-called "SERIVISI Y'URWENYA YA Kanyombya" and "SERIVISI Y'IKINAMICO SEKAGANDA".

They also argue that MTN dragged Yellow Dot Rwanda Ltd and Netsolutions Ltd into the case by claiming that it had acted with proper authorisation, claiming that these companies had obtained rights from Kayitankore Ndjoli and Niyitegeka Gratien on the basis of agreements they had signed. However, they claim that none of these agreements explicitly granted the right to use the fictional characters Kanyombya and Sekaganda. Therefore, the plaintiffs are not suing these actors and these companies, but MTN, because it is obvious that MTN has commercialised their comedy/content by exploiting the popularity of these fictional characters Kanyombya and Sekaganda. They classify this as character merchandising, which refers to the practice of using the fame of a well-known character to attract consumers to a product or service.

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They argue that no one other than Habyalimana Charles himself, as the creator of the fictional characters Kanyombya and Sekaganda, had the authority to grant MTN the right to commercialise these works. Since MTN used these fictional characters for profit-driven business purposes without proper authorisation and even altered their original form, they claim that MTN should be held liable and ordered to pay damages.

Counsel Kabera Jean Claude and Counsel Bizimana Emmanuel, representing MTN, argue that the characters Kanyombya and Sekaganda were not the works sold on MTN's platform. Instead, they claim that the content sold consisted of jokes created by Kayitankore Ndjoli and Niyitegeka Gratien.

They also argue that MTN is primarily engaged in the business of selling airtime, internet, and other services. When an individual wants to commercialize content, MTN simply provides a platform for distribution, with an agreed-upon revenue-sharing model. It is within this framework that MTN entered into agreements with Yellowdot Rwanda Ltd and Netsolutions Ltd.

They further argue that the services available on MTN's platform were not provided directly by MTN itself, but rather by Yellowdot Rwanda Ltd and Netsolutions Ltd, who independently sourced the comedy content from individuals who assured them that they had full rights to it. Therefore, they contend that Habyalimana Charles' claim that his copyrighted characters Kanyombya and Sekaganda were used without permission should not be attributed to MTN. They

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emphasise that MTN had no contractual agreement with Niyitegeka Gratien or Kayitankore Ndjoli and therefore had no obligation to verify the rights they had to the comedy content they provided to Yellowdot Rwanda Ltd and Netsolutions Ltd under their respective agreements.

They further argue that for intellectual property to be considered as used without authorization, it must be officially registered as private property. They claim that Habyalimana Charles has not provided any evidence proving that he registered the fictional characters Kanyombya and Sekaganda as his personal intellectual property. They also point out that the only work registered with RDB is the film ZIRARA ZISHYA, not the fictional characters themselves.

Counsel Semadwinga Claude, representing Netsolutions Ltd, states that there was no specific contract between Netsolutions Ltd and MTN regarding the sale of comedy content, as Netsolutions Ltd already had a platform agreement with MTN for selling its products. He explains that MTN provided the platform, but the content uploaded was given by the artists themselves in relation to their own works. He further clarifies that the contract between Netsolutions Ltd and Niyitegeka Gratien pertained only to his personal comedy content and had nothing to do with the fictional character Sekaganda. Niyitegeka Gratien also asserts that the works he sold were his original creations and that he never signed any agreement granting Netsolutions Ltd or any other entity the right to use the name Sekaganda for promotional

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purposes. He emphasizes that, as an artist, he wants his work to be recognized under his own name.

Regarding the fact that his name was followed by A.K.A Sekaganda in the contract with Netsolutions Ltd, he says that this is a matter of writing but does not mean that the comedy sketches he performed should be labelled as Sekaganda's. Counsel Uwamahoro Grace, also representing Niyitegeka Gratien, adds that MTN has not produced any evidence to show that Niyitegeka Gratien authorised the use of his name to promote his comedy content under the name Sekaganda.

Counsel Nshimiyimana Moubaraka, representing Kayitankore Ndjoli, argues that his client's agreements with Yellowdot Ltd have no relevance to the disputed works. He explains that the comedy sketches provided by Kayitankore Ndjoli were based on the agreements with Yellowdot Ltd and that the name Kanyombya was not used in these sketches.

DETERMINATION OF THE

COURT

In order for the Court to assess the issue of whether MTN used the fictional characters Kanyombya and Sekaganda for commercial purposes without authorization, it is essential to first examine the following questions: - Whether the fictional characters Kanyombya and Sekaganda were sold on the MTN

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platform and the role MTN played in that process; - If MTN sold the fictional characters Kanyombya and Sekaganda, establish whether they were required to obtain authorization from Habyalimana Charles. c. Whether the fictional characters Kanyombya and Sekaganda were sold on the MTN platform and the role MTN played in that process

In assessing whether the fictional characters Kanyombya and Sekaganda were sold on MTN's platform, as alleged by Charles Habyalimana, or whether what was sold on their platform were the comedy sketches of Kayitankore Ndjoli and Niyitegeka Gratien, as alleged by MTN, there is no other evidence on which the Court can rely other than the evidence in the case file.

Article 12 of Law no 22/2018 of 29/04/2018 relating to civil, commercial, labor and administrative procedure provides, in its first paragraph, reads that that he claimant must prove a claim, failing which the respondent wins the case. And Article 3 of the Law no 15/2004 of 12/06/2004 on evidence and its production in courts reads that Each party has the burden of proving the facts it alleges.

The case file contains the following elements of evidence: a. A short text message encouraging MTN subscribers to access the Kanyombya Comedy

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Service by calling 765 and an instruction message indicating that when calling that number, subscribers were told: "To listen to today's joke, press 1. To go to your account, press 2. To hear the humorous joke, press 3. Dear esteemed customer, you have selected the minute-long comedy, to subscribe for a monthly subscription for 400 RWF, press 1; weekly subscription for 100 RWF, press 2." By following these instructions, they were provided with what MTN called " URWENYA RWA

KANYOMBYA (KANYOMBYA COMEDY)." b. A short text message encouraging MTN subscribers to access the Sekaganda Comedy Service structured as follows: "Sekaganda! Call 1757 to listen to the joke," along with an instruction message indicating that by following the given steps, they were told: "Welcome again to the drama service. To listen to Sekaganda, press 1; to listen to SEBURIKOKO, press 2; to listen to UMUTWARE, press 3. Here, you can listen to various dramas including love, comedy, and others. Subscribe for the weekly drama service to listen to Sekaganda, UMUTWARE, and others for free in the first 20 minutes. To confirm, press 1 for 15 RWF per 5 minutes."

The court found that the fact that MTN subscribers were sent messages encouraging them to call 765, where they were told they would hear jokes from Kanyombya, but when they called, they found jokes from Kayitankore

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Ndjoli instead; similarly, the fact that subscribers received messages inviting them to call 1757 where they were told they would hear jokes from Sekaganda, but when they called they found jokes from Niyitegeka Gratien instead, is in itself a clear indication that the fictional characters of Kanyombya and Sekaganda were used to promote and commercialise the comedy content of Kayitankore Ndjoli and Niyitegeka Gratien.

Furthermore, since Kayitankore Ndjoli played the fictional character Kanyombya in the films Haranira Kubaho, Ntawe Umenya Iyo Bwira Ageze, and Zirara Zishya, and Niyitegeka Gratien played the fictional character Sekaganda in Zirara Zishya, the court finds that linking the fictional characters of Kanyombya and Sekaganda to the comedy content of the actors who portrayed them clearly indicates an intent to leverage the popularity of these characters. This strategy aimed to attract fans of these fictional characters to purchase the comedy content of Kayitankore Ndjoli and Niyitegeka Gratien by calling the designated phone numbers. Consequently, the Court concludes that the fictional characters of Kanyombya and Sekaganda were indeed commercialized on MTN’s platform, rendering MTN’s claim that only the personal jokes of Kayitankore Ndjoli and Niyitegeka Gratien were sold unsubstantiated. - Regarding MTN’s role in this activity, various pieces of evidence submitted in the case file are examined. Apart from the SMS messages mentioned in paragraph 50 of this case, the following evidence is included:

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 SMS messages sent to MTN subscribers stating:  "Y'ello, your Kanyombya 1-minute daily subscription has been successfully renewed. You have been granted three days of free service. Call 765 and enjoy the comedy."  "Y'ello, your Kanyombya 1-minute daily subscription could not be renewed due to insufficient balance. Please top up your account."  "Y'ello, your Kanyombya 1-minute daily service subscription has been deactivated. You can resubscribe by sending STOP 1 to 765."  SMS messages sent to MTN subscribers when they checked their remaining balance, which displayed their account balance followed by the message:  "Sekaganda! Call 1757 to listen to comedy."  The contract between MTN and Yellowdot Rwanda Ltd, signed on April 26, 2016, indicating that it was for the commercialization of sports news.  The contract between MTN and Netsolutions Ltd, signed on August 27, 2014, outlining their collaboration.

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 The contract between Yellowdot Rwanda Ltd and Kayitankore Ndjoli, signed on May 9, 2016, as well as the contract between Netsolutions Ltd and Niyitegeka Gratien, signed on July 28, 2016, stating that they would provide audio content.

The Court finds that upon reviewing the contracts between MTN and Yellowdot Rwanda Ltd, as well as MTN and Netsolutions Ltd, along with the agreements these companies signed with Kayitankore Ndjoli and Niyitegeka Gratien—who were all brought into the case by MTN—there is no mention of the use of the fictional characters associated with Kanyombya and Sekaganda. This aligns with the statements of Niyitegeka Gratien and Kayitankore Ndjoli, who assert that they sold their works under their own names and did not use the names Kanyombya or Sekaganda in any way.

The Court finds that even when the messages sent to MTN subscribers are examined, there is no indication that they were issued by Yellowdot Rwanda Ltd or Netsolutions Ltd, as the names of these companies do not appear anywhere in the messages. Therefore, it cannot be concluded that these companies were responsible for adding the wording linking the comedy sketches of Kayitankore Ndjoli and Niyitegeka Gratien to the fictional characters associated with Kanyombya and Sekaganda. Instead, it is clear that the messages were sent directly by MTN under its own name.

The Court finds that these messages further demonstrate that all commercial activities were conducted

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solely in MTN’s name. MTN was the entity that advertised the sale of the fictional characters of Kanyombya and Sekaganda, entered into agreements with its subscribers, terminated those agreements when a subscriber lacked sufficient funds on their MTN account, and collected all payments generated from this business.

On the basis of the evidence presented, the Court finds that MTN sold, in its own name and for its own benefit, the fictional characters of Kanyombya and Sekaganda, created by Charles Habyalimana, and used them to promote the comedy sketches of Kayitankore Ndjoli and Niyitegeka Gratien. d. Regarding whether MTN had no right to sell the fictional characters of Kanyombya and Sekaganda without authorization from Habyalimana Charles

Article 228 of the Law N° 31/2009 of 26/10/2009 on the protection of intellectual property stipulates that : The moral rights shall not be transmissible to another when the owner still lives, they shall only be transmissible through testamentary disposition or basing on the Law on succession.

Article 229 of the very Law states that : The economic rights are personal property and are transmissible by testamentary disposition or under the law on succession. During the period of protection, the right owner may assign, by contract arrangement, those rights, in whole or in part, to third person or legal entity (paragraph one). The assignment contract shall be valid

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only if it is made in writing and signed by parties to the contract (paragraph two).

The foregoing provisions must be considered together with the provisions of Article 199, paragraph 2 of the said Law, which states that : even if such rights are transferred to others, the author of a work shall have the right to object to any distortion, mutilation or other modification of his/her work[…], and article 200, paragraph one, subparagraph 3 of the same Law provides that the author of the work shall have the exclusive right to carry out or to authorize the adaptation, arrangement or other transformation of the work.

Regarding this case, it has been established above that Habyalimana Charles is the creator of the fictional characters Kanyombya and Sekaganda and that MTN, leveraging their popularity, used them in its business to promote the comedy content of Kayitankore Ndjoli and Niyitegeka Gratien. It has also been demonstrated that MTN did not seek prior authorization from Habyalimana Charles for this usage, a fact that MTN does not deny, apart from defending itself by arguing that Habyalimana Charles did not register these creations with RDB as intellectual property, and therefore, he cannot claim that they were used without authorization.

The Court finds that, although MTN does not cite any specific law to support its argument, it is confusing the legal provisions related to trademarks—mentioned in the second paragraph of Law no 31/2009 of October 26, 2009, on the protection of intellectual property, which must be registered to grant exclusive rights to the

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registrant under Article 1413—with the provisions regarding original works in literature, art, and science. These original works are protected under Article 197 of the same law without requiring prior registration with the authorities. Protection applies from the moment of creation, even if the work has not yet been fixed in a tangible medium.

On the basis of the foregoing legal provisions and the evidence presented, the Court finds that MTN has used the fictional characters Kanyombya and Sekaganda for its commercial advantage without the necessary authorisation. MTN did not obtain permission from Charles Habyalimana, who holds the legally protected rights to these works. I.

DECISION OF THE COURT

Holds that MTN used the fictional characters Kanyombya and Sekaganda, created by Habyalimana Charles, for commercial gain without the necessary authorization.

Decides that the hearing will resume with the analysis of the issue of compensation on a date that will be communicated to the parties by the court registry.

3 The exclusive right to a mark conferred by this law shall be acquired by means of registration, in accordance with the provisions thereof.