COPYRIGHT INFRINGEMENT OR INCIDENTAL INCLUSION. WHERE DOES THE LAW DRAW THE LINE?

Copyrighted works are part and parcel of Intellectual property that involve intangible assets which are works of the mind and comprise of literary and artistic works, inventions and designs that are legal protected. Due to the  nature of these works and their commercial viability, they are protected under the law through various conventions and statutes. 

Often featured in advertisements, photographs and social media content , copyrighted works emanate from creative original works more often than not created for a specific purpose. Unauthorized use of creative works may amount to copyright infringement. As defined in the Copy right act, infringement entails , violation of the exclusive rights of creatives and their original works. The exclusive rights being ; reproducing, publishing, adapting, distributing,  communicating it to the public and commercializing on it.

Copyright Infringement

The famous song dubbed ‘We Kamu’ by one of Kenya’s musicians Hurbert Mbuku Nakitare famously known as Nonini , was at the heart of a copyright  suit against a  content creator . The case of Hubert Nakitare (Nonini) vs Brian Mutinda and Syinix Electronics, was premised on the use of the song in a promotional video advertising a Syinix television set without the artists authorisation. The artist claimed unauthorized use leading to infringement of his copyright. Nonini contended that the respondents had synchronised his song with the advertisement and published it on social media without obtaining the necessary license, thereby infringing his copyright.

In determining the dispute, the court found that the song was deliberately synchronised with the advertisement and used to enhance its commercial appeal therefore amounting to copyright infringement. The plaintiff was thereafter awarded damages on the same.

Additionally, Infringement can occur when someone other than the original creator carries out an exclusive act without prior consent from the copyright owner or without meeting the criteria for a legal exception under the Act. 

Our focus today will be specifically on exceptions, with a primary emphasis on the exception regarding incidental inclusion.

Incidental inclusion

Incidental inclusion as recognized in the copyright Act is a statutory exception to copyright infringement, whereby a copyrighted work may sometimes appear in an ancillary form in other works unintentionally or as a secondary element. 

The idea behind this expectation being to preclude accidental and unplanned appearances of copyrighted work from being termed as infringement. The Copyright Act does not prescribe a strict test for incidental inclusion and barely scratches the surface when it comes to deciphering what it entails. The courts  however as interpreters of statute have in recent times laid out a couple of grounds by considered various factors to determine whether the use of a copyrighted work is genuinely incidental or intentionally included to amount to copyright infringement.

The courts are however not blind to the uniqueness of each case and as such accordingly, consider various factors based on the merits  of each case. The merits of any case assist the court in drawing the line between a permissible incidental use and an unauthorised exploitation of a copyrighted work.

The case of Nairobi Map Service Limited vs Celtel Kenya Limited (Zain Kenya) & 2 Others, looks at a case where the plaintiff alleged infringement its copyright by use of its “Kenya Administrative Map” in a television advertisement without prior authorisation. The defendants, premised their defence on the  map’s appearance in the advertisement as merely incidental consequently relaying on the statutory exception under Section 26(1)(c) of the Copyright Act.

The High Court and thereafter the Court of Appeal  in agreement with the defendants, held that the defendants purpose could have been achieved without the subject map. Therefore,  inclusion of the map was found to be secondary or subordinate to the overall objective of the advertisement, and therefore incidental. 

The decisions of the courts enunciated above demonstrate that courts look beyond the mere presence of a copyrighted work and further consider factors such as the intention behind its inclusion, the purpose it serves, whether there is commercial exploitation and whether it forms an integral or merely inadvertently included. 

Courts in their decisions lay the grounds of determining on infringement and incidental inclusions upon assessment of merits, purpose, significance and manner in which the work is used. It is therefore important for one to ensure that they seek the requisite licences when using creative works to ensure full compliance with the regulatory framework set.

At HMS Africa Advocates LLP, we offer comprehensive legal services in intellectual property, including:

• Registration of trademarks, copyrights, patents, industrial designs, and other intellectual property rights.
• Protection and enforcement of intellectual property rights for businesses, investors, innovators, and creators.
• Advisory on intellectual property management, commercialization, licensing, and assignment of IP rights.
• Due diligence and intellectual property audits for businesses and investment transactions.
• Representation in intellectual property disputes through negotiation, alternative dispute resolution, and litigation.
• Strategic legal support to safeguard clients’ innovations, brands, and commercial interests across the East Africa region.