HABYARIMANA v MTN RWANDACELL LTD (2)

HABYARIMANA v MTN RWANDACELL LTD (2)

- Source: Amategeko - Section: Decisions (Judgements) - Date: 2024-03-05 - Case/document no.: RS/INJUST/RCOM 00002/2022/SC - Collection: Supreme Court

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HABYARIMANA v MTN RWANDACELL LTD (2) [Rwanda SUPREME COURT – RS/INJUST/RCOM 00002/2022/SC (Ntezilyayo, P.J., Hitiyaremye, Cyanzayire, Kazungu, Kalihangabo J.) 05 March 2024] Law on the protection of intellectual property – Infringment on the copyright – Liability – Damages – 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. Procedural laws – Mediation – Mediation brings to end the case under litigation without further formalities, and the terms of the settlement agreement are executed. 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 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

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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 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

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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 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

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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. The case was heard in its merits, whereby the court examided the rightful owner of the copyright of the fictional characters of Kanyombya and Sekaganda, and whether MTN used those characters for commercial purposes without outhorization. The court first examined the issue of the owner of the copyright and ruled that Habyarimana Charles is the owner of the fictional character of Kanyombya and Sekaganda works, and also held that MTN used Habyarimana Charles's works for commercial gain without authorization.

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Consequently, the court again summoned the parties to make their submissions on the remaining issue of compensation. At the beginning of the hearing, the parties informed the court that they have opted for mediation, and they even agreed on the mediator, which the court approved. The Mediator submitted to the Court a mediation report stating that Habyarimana Charles and MTN were able to reach an agreement on the issue of compensation, and that both parties signed a settlement agreement on the issue of compensation. The Court informed the parties that it had received the mediator's report which indicates that the issue of compensation have been settled. Held:1. 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. A person or company that uses sells someone else's artwork in their own name and for their own benefit without permission from the owner of the artwork is liable because it is protected by law.

2. Mediation brings to end the case under litigation without further formalities, and the terms of the settlement agreement are executed. Settlement agreement be executed.

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Statutes and statutory instruments referred to: Law No 22/2018 of 29/04/2018 relating to the civil, commercial, labour and administrative procedure article 241, 7°. Cases referred to: Busoro Gervais et.al v Busoro Mugunga Desiré, RS/INJUST/RC 00022/2018/SC rendered by Supreme Court on 28/06/2019; Semapondo Charles na Rwasimpenzi Wellars et.al, RS/INJUST/RAD 00002/2020/SC rendered by Supreme Court on 10/12/2021. Judgment I.

BACKGROUND OF THE CASE

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

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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 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.

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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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 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

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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 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

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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 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

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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; 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.

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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 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:

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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.

On 23/06/2023, the Court made the prelinary ruling and held as follows: a. Habyarimana Charles is the owner of the copyright protected by law on the Kanyombya and Sekaganda art works; b. MTN used these works of Habyarimana Charles for commercial purposes without having the rights to them.

Following this decision, the Court again summoned the parties to hear the remaining issue of compensation. On 17/10/2023, all appeared, Habyarimana Charles represented by Counsel Bundogo Innocent, MTN represented by Counsel Kabera Jean Claude, NETSOLUTIONS Ltd represented by Counsel

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Semadwinga Claude, Niyitegeka Gratien represented by Counsel Uwamahoro Marie Grâce, Kayitankore Ndjoli represented by Counsel Karangwa Olivier, while YELLOWDOT Rwanda Ltd did not appear but was summoned to an unknown location.

At the beginning of the hearing, the parties informed the Court that they wished to proceed to mediation, and even agreed on the mediator, Prof. Sam Rugege.

After hearing the parties' requests, the Court decided to adjourn the hearing of the case and to allow the parties to proceed to mediation. It also decided that Prof. Sam Rugege was to be the mediator in the case between Habyarimana Charles and MTN, and that he should submit a mediation report no later than 31/12/2023.

On 29/12/2023, Prof. Sam Rugege submitted to the Court a mediation report prepared on that date, stating that Habyarimana Charles and MTN were able to reach an agreement on the issue of compensation, so that on 28/12/2023, they signed a settlement agreement in case RS/INJUST/RCOM 00002/2022/SC on the issue of compensation.

The hearing to approve the mediation decision was held on 05/03/2024, with all parties present, Habyarimana Charles represented by Me Bundogo Innocent, MTN represented by Me Kabera Jean Claude, Niyitegeka Gratien represented by Me Uwamahoro Marie Grâce, Kayitankore Ndjoli represented by Me Kagabo Théoneste, while

NETSOLUTIONS Ltd and

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YELLOWDOT Rwanda Ltd did not appear but were duly summoned. The court informed the parties that it had received the mediator's report stating that the dispute over compensation had been completely resolved and that nothing remained to be considered. II. ANALYSIS OF THE LEGAL

ISSUE Determining whether the settlement agreement should be approved 

Hashingiwe kuri raporo y’ubuhuza yo ku wa 29/12/2023 ivuga ko Habyarimana Charles na MTN bumvikanye ku kibazo cy’indishyi cyari gisigaye gusuzumwa muri uru rubanza, Urukiko rurasanga uru rubanza rugomba gusozwa nta yindi mihango, bityo hakazarangizwa ibikubiye mu masezerano y’ubwumvikane Habyarimana Charles na MTN bagiranye ku wa 28/12/2023, nk’uko biteganywa n’ingingo ya 241, 7° y’Itegeko N° 22/2018 ryo ku wa 29/04/2018 ryerekeye imiburanishirize y’imanza z’imbonezamubano, iz’ubucuruzi, iz’umurimo n’iz’ubutegetsi, iteganya ko inyandiko y’ubwumvikane iriho umukono w’impande zombi n’ubwunzi byakorewe hanze y’urukiko ari inyandikompesha.

Based on the mediation report of 29/12/2023 stating that Habyarimana Charles and MTN have reached an agreement on the issue of compensation which was the only issue pending in this case, the Court finds that this case should be concluded without further formalities, thus

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giving effect to the terms of the settlement agreement between Habyarimana Charles and MTN on 28/12/2023, as provided for in Article 241, 7° of Law No. 22/2018 of 29/04/2018 relating to civil, commercial, labor and administrative proceedings, which provides that a settlement agreement signed by both parties and a settlement concluded outside of court are enforceable III.DECISION OF THE COURT

It holds that the issue of compensation, which was still pending in case RS/INJUST/RCOM 000002/2021/SC, was settled as agreed between Habyarimana Charles and MTN Rwandacell Ltd in the agreement they made.

Orders that the a settlement agreement be executed as it is.