Mount Kenya Sundries Ltd v Macmillan Kenya (Publishers) Ltd (Civil Appeal 318 of 2010) [2016] KECA 377 (KLR)
The bottom line
#Kenya's Court of Appeal confirmed that copying even a substantial part of someone's maps or creative work is copyright infringement, even without an exact copy.
What this practically means
#Executive summary
#Questions the Court framed
#The issues the Court set itself to decide, in its own words.
- 1.Whether the respondent had locus standi to bring the action in the High Court notwithstanding that the copyright assignment was effected after the suit was filed
- 2.As between the appellant and the respondent, which company had copyright in the maps to protect
- 3.Whether the appellant infringed the respondent's copyright by reproducing a substantial part of the respondent's maps
Key legal issues
#Locus standi of an assignee suing before formal assignment of copyright
The respondent, as equitable owner for whom the maps were made, had capacity to commence the action pending assignment; assignment obtained before conclusion of the suit cured any deficiency
The maps were produced under the control and direction of Macmillan Publishers Ltd (UK) specifically for the respondent. Relying on equitable principle, the trial Judge held the respondent entitled in equity to sue pending assignment. The assignment of 20th January 2003 was obtained before the High Court suit concluded. The appellant's own defence acknowledged the maps were the respondent's work, and the appellant never contested locus at trial.
Ownership and priority of copyright in the maps
The respondent produced its maps in 1985, revised them in 1989 and published them in 1990, before the appellant produced its maps in or about 1990; the respondent had copyright in its maps
The appellant's own defence and counterclaim acknowledged the respondent made maps as early as 1985 with additions in 1990. The appellant bought and sold the respondent's 1985 map before producing its own. The trial Judge, who saw and heard DW1, preferred PW1's consistent evidence over DW1's self-serving testimony, a factual finding this Court saw no basis to disturb.
Whether reproduction of a substantial part of a copyright work amounts to infringement
Reproduction of a substantial part of the work, not merely the entire work, constitutes infringement under Section 7 and Section 15(1) of the repealed Copyright Act
Section 7 confers the exclusive right to control reproduction of the whole work or substantial part thereof, and Section 15(1) makes infringement actionable by a person who without licence does an act controlled by the copyright. Expert cartographic evidence showed substantial copying: scales, details and placement of names were the same, with minor presentation differences. Persuasive Indian authority to the same effect was adopted.
Weight to be accorded to expert evidence and to the trial Judge's assessment of witness demeanour
The trial Judge was entitled to prefer the evidence of the qualified cartographer Esther over the appellant's unqualified 'experts', whose reports were copied from one another and discredited
Obel and Ongong'a lacked formal professional qualification in cartography and their testimonies were discredited: Obel reversed his position on cross-examination, and the two reports were identical. The trial Judge who saw Sapra testify was entitled to find her evidence self-serving and inconsistent; an appellate court can interfere with such a finding only if unsupported by the record.
Legal principles established
#- On a first appeal, the Court of Appeal must reconsider and evaluate the evidence itself and draw its own conclusions, while making due allowance for not having seen or heard the witnesses, and must rule only on the evidence on record
- Copyright is infringed not only by reproduction of the entire protected work but also by reproduction of a substantial part of it, without the licence of the copyright owner
- A company for whom copyright material is produced under its control and direction, and to whom the copyright is subsequently assigned (even after suit is filed but before conclusion), is the equitable owner entitled to sue and to complain of infringement
Court orders
#- 1.The appeal is dismissed
- 2.The appellant shall pay the costs of the appeal
- 3.The judgment of Visram, J. dated 23rd October 2008, including the injunction restraining the appellant from selling the Kenya Pictorial Tourist Route Map or any map based thereon, delivery up of the infringing maps, inquiry as to damages or alternatively an account of profits, interest and costs, stands
The bench
#One judgment of the whole court — no separate or dissenting opinions.
- On appeal from
- High Court of Kenya
- Not stated in judgment
- Jurisdiction invoked
- First appellate jurisdiction of the Court of Appeal (statutory appeal from the High Court; specific provision not cited in the judgment)
Relief refused
#The appellant's appeal, premised on twelve grounds condensed to eight plus one additional ground on locus standi allowed by leave
The trial Judge correctly found that copyright subsisted in the respondent's maps and that the appellant infringed that copyright; the appeal had no merit
Costs
The appeal was dismissed with costs to the respondent ("the appeal fails and is accordingly dismissed with costs")
Quotable passages
#Verbatim from the judgment, each located to the page it appears on in the official PDF — so these can be cited and checked directly.
On a first appeal from the High Court the Court of Appeal should reconsider the evidence, evaluate it itself and draw its own conclusions though it should always bear in mind that it has neither seen nor heard the witnesses and should make due allowance in that respect.
it is not only the reproduction of the entire protected work that would constitute an infringement, in our view, reproduction of a substantial part of the work would still constitute an infringement
We agree that the respondent was the company entitled to the copyright in equity and had capacity to commence the action in the High Court.
…it is not necessary that the alleged infringement should be an exact or verbatim copy of the original but the resemblance with the original in a large measure, is suficient to indicate that it is a copy
Third that to constitute piracy of a copyright it must be shown that the original has been either substantially copied or to be so imitated as to be a mere evasion of the copyright.
The result is that the appeal fails and is accordingly dismissed with costs.
Issues in the judgment
#The judgment records contradictory dates for the appellant's production of its maps and discovery of the respondent's later map: Sapra's testimony refers to 'their 1998 (sic) map until 22/3/95' while elsewhere the 1989 revision is discussed, and the counterclaim comparison is against the '1990 Revised Edition'; the text itself flags the date as 'sic'
The judgment opens stating it is an appeal but the final deliverance is dated and delivered by three Judges of Appeal without any judge identified as author; also the case number and neutral citation do not appear in the certified copy supplied
Key timeline
#Practical implications
#Frequently asked questions
#Cite this brief
#Cite this brief
Caselaw, "Mount Kenya Sundries Ltd v Macmillan Kenya (Publishers) Ltd (Civil Appeal 318 of 2010) [2016] KECA 377 (KLR)", Case Analysis (2016). Court of Appeal appeal (number not stated in judgment). Source: https://new.kenyalaw.org/akn/ke/judgment/keca/2016/377/eng@2016-07-15
Suggested citation format for research notes or client memos. Always verify the original judgment before relying on any point.