Wednesday 6 February 2013

Afro Leo

A step forward for Uganda's copyright law - landmark case

Tony Kakooza, Afro-IP's highly respected new contributor helping to cover the East African region has provided us with a report of a Ugandan collecting society's successful copyright battle against one of Africa's most powerful brands. I got you Babe! is my take on his report on a tale of Africans enforcing IP to benefit Africans:

"Uganda Performing Rights Society (UPRS), a Collective Management Organization that oversees the administration of copyrights for its members in Uganda, has cause to smile after a landmark judgment that was recently passed in the Commercial Division of the High Court in Uganda.

UPRS dragged mobile giant MTN to court for refusal to pay performance royalties to UPRS after sponsoring a show by the UB40 in February 2008. By way of a flashback, in 1987 the UB40 artists had assigned all their copyright for purposes of effective management to the Performing Rights Society of United Kingdom (PRS-UK). In the Deed of Assignment, PRS-UK was granted the management of all copyrights worldwide. In January 2006, PRS-UK signed a contract of Reciprocal Representation with UPRS. It was by virtue of this Reciprocal arrangement that UPRS demanded for performance royalties from MTN prior to the UB40 show in February 2008 in Kampala, Uganda.

In its defense, MTN rejected any obligation to obtain a license from UPRS. It argued that the individual members of UB40 reserved the exclusive rights to contract and deal with their copyrights without prior authorization of anybody inclusive of PRS-UK and that the Deed of Assignment did not strip them of this right. It further argued that there was no copyright infringement in this case considering that MTN contracted directly with the individual members of UB40 in organizing the concert which effectively makes UPRS an agent of a disclosed principal.   

The Court took into consideration evidence in testimony from the Senior Corporate Counsel for PRS-UK, Ms. Karen Fishman. She testified to the effect that in becoming members of PRS-UK, musicians effectively assign/transfer their performing rights in their copyrights work throughout the world to PRS-UK. The Collecting Society then has the obligation of enforcing the copyrights on behalf of the members.

In scrutinizing the Deeds of Assignment, Court concluded that the UB40 members had indeed assigned all their performing rights for all parts of the world to PRS-UK making PRS-UK the owner of the assigned rights with power to enforce them. Citing the preamble to the Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS Agreement), the Court further reasoned that the 2006 Copyright legislation in Uganda (particularly sec. 58) was enacted so as to give effect to the guidelines in the TRIPS agreement. As such, the reciprocal agreement between PRS-UK and UPRS effectively conferred the power to enforce the former’s rights to another collecting society in a foreign jurisdiction.

Although UPRS was not able to recover damages due to a technical glitch in its legal maneuvers, the fact that the Commercial Court came out with a pronouncement on the powers of a Collecting Society to demand for royalties in music performances, is a step in the right direction. One of the biggest challenges in the administration and enforcement of copyright work by the UPRS on behalf of its members has always been the inadequate awareness of the limitations and extensions of copyright by persons in the legal profession as well as non-lawyers. The judgment of Uganda Performing Rights Society v. MTN (U) Ltd, Civil Suit No. 287 of 2010, is a landmark in Ugandan copyright jurisprudence in highlighting the avenues music sponsors and organizers have to undertake before staging shows in Uganda and places UPRS at a well-deserved higher pedestal."

About the author: Anthony C.K. Kakooza is a Ugandan Expert in intellectual property and cyber law. He practices out of the law firm Sipi Law Associates and teaches intellectual property at the Ugandan Christian University (Mukono). He holds a law degree from Makerere University (Kampala, Uganda) and an LL.M in International Economic Law, majoring in IP, from Warwick University (Coventry, UK). He is currently pursuing a Doctorate in Law (J.S.D) in IP and ICT law at the University of Illinois College of Law (USA)

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17 February 2016 at 16:34 delete

thank you for your publication as it is very insightful. However, i have a question on the same, particularly in as far as what the implaications are where an artist delivers his music to say a radio station so that it can promote and also play his or her music. is this radio station infringing on any copyright in the circumstances?