Nairobi Map Services Limited v Airtel Networking Kenya Limited & 2 others [2019] KECA 701 (KLR)
The bottom line
#Kenya's Court of Appeal confirmed that using copyrighted material as background in an advert can be 'incidental inclusion' — not copyright infringement.
What this practically means
#Executive summary
#Key legal issues
#Distinction between passing off and copyright infringement
The complaint that the Judge wrongly treated the claim as passing off fails because it was the appellant who pleaded passing off, but the Judge resolved the matter solely on copyright infringement.
Passing off is a tort under the law of unfair competition requiring goodwill, misrepresentation and damage, and may be actionable as trademark infringement. Copyright infringement concerns dealing with copyrighted material inconsistently with the owner's interests. The appellant's own plaint and its witness's evidence introduced passing off concepts, but the Judge framed and decided only copyright issues, so there was no misdirection.
Meaning of 'incidental inclusion' under Section 26(1)(c) of the Copyright Act
Inclusion is incidental where it is casual, inessential, subordinate or merely background; this is a factual, case-by-case determination applying the Panini objective test.
The court adopted the Panini test asking why the protected work was included in the impugned work, and the IPC Magazines approach treating 'incidental' as casual, inessential, subordinate or merely background. The court also noted deliberate inclusion does not necessarily negate incidental inclusion. Applying these, the Judge correctly found the map's appearance subordinate since network coverage had been demonstrated by other means.
Whether filming and broadcasting the map amounted to reproduction requiring authorisation
Filming the map and displaying it as an advertisement is a reproduction and broadcast of copyrighted work, but the Section 26(1)(c) incidental-inclusion exception applies.
The court accepted that the appellant, as copyright owner, had the exclusive right to reproduce and broadcast the work, and that filming and airing the map in the advertisement constituted reproduction and broadcast. However, the exception in Section 26(1)(c) removes the right to control incidental inclusion of an artistic work in a film or broadcast, and that exception was properly invoked on the facts.
Legal principles established
#- Whether the inclusion of a protected work in an impugned work is 'incidental' is a question of fact determined on a case-by-case basis, applying the objective test of why the work was included.
- Where the inclusion of the protected work in the impugned work is essential to the object for which the impugned work was created, the defence of incidental inclusion fails; but where the appearance of the work is subordinate or merely background, the inclusion is incidental.
- The test for incidental inclusion is the objective enquiry formulated by Chadwick LJ in the Panini case: why, having regard to the circumstances in which work B was created, has work A been included in work B?
Court orders
#- 1.The appeal is dismissed
- 2.Costs awarded to the respondents
- On appeal from
- High Court of Kenya
- Jurisdiction invoked
- Appellate jurisdiction of the Court of Appeal over a first-instance decision of the High Court (first appeal on fact and law).
Key timeline
#Practical implications
#Frequently asked questions
#Cite this brief
#Cite this brief
Caselaw, "Nairobi Map Services Limited v Airtel Networking Kenya Limited & 2 others [2019] KECA 701 (KLR)", Case Analysis (2019). Court of Appeal at Nairobi (Civil Appeal). Source: https://new.kenyalaw.org/akn/ke/judgment/keca/2019/701/eng@2019-06-07
Suggested citation format for research notes or client memos. Always verify the original judgment before relying on any point.