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Title: Music Copyright Society of Kenya v Parklands Shade Hotel t/a KlubHouse
Venue: High Court at Nairobi (Milimani Commercial Courts)
Case ID: Civil Case 1458 of 2000
Authoring Judge: Jeanne W. Gacheche
Date of Decision: 23rd November, 2000
Plaintiffs: Music Copyright Society of Kenya
Defendant: Parklands Shade Hotel t/a Klub House
Keywords: Copyright infringement

Facts
The plaintiff is a society acting as a licensing authority on behalf of music performers who are members of the society. The defendant is a hotel and entertainment establishment. The plaintiff claims that the defendant had committed copyright infringement by playing music recording within its establishment without due regard to the members member’s represented by the plaintiff. The plaintiff states that the defendant has neglected to pay royalties for the use of the music in question. The defendant contends that the plaintiff is not the sole licensing body of copyright works and that there was no evidence that the musicians had assigned their rights to the plaintiff.

The plaintiff sough injunction to restrain the defendant from playing any recorded or live band music that would infringe the copyright of its original members.

Issues
Whether, the defendant infringed on the copyright owners’ rights.

Holding
The court found in favour of the defendant and stated that the plaintiff had not proved that the damage could not be cured by means other than an injunction. The court in dismissing the plaintiff’s application further stated that the defendant’s business would suffer greater harm if the injunction was granted.

Ruling
The Music Copyright Society of Kenya Limited (hereinafter called the Society) filed its suit against Parklands Shade Hotel Ltd. t/a Klub House (hereinafter called Klub House). It prayed for inter-alia, an injunction to restrain Klub House b y itself, its servants and/or agents from playing music at its two premises in Nairobi without a license from it.
It also prayed for damages for infringement of copyright and conversion together with costs and interest thereon.
It simultaneously filed an application under Order XXXIX Rule 2 and 3 of the Civil Procedure Rules, and sought orders to restrain Klub House, from playing any music whether recorded by a live band which is the subject of the copyright agreement between it and its members.
The application is based on the grounds that Klub house has continually and unlawfully played through live band and recorded music the musical works of the plaintiff’s members, which is the subject of copyright, in flagrant disregard of the plaintiff’s members copyright rights in the said music.
Further that the plaintiff’s members continue to suffer loss of royalties through the said breach of copyright in the said musical works.
The application is supported by the affidavit Rachel Shamalla the plaintiff’s General Manager who depones that the society is the sole licensing body, which enforces the copyright of all music works in Kenya and also enforces the copyright of all music works in Kenya and also enforces the copyright of the music works registered with the Performers Rights Society Ltd.
She also depones that the Society requires that all establishments which broadcast or play the members’ music to take out an annual license. She also depones that Klub house was licensed by her Society prior to 1997. Further, that it paid the royalties that were assessed in 1997, 1998 and 1999 but that in 2000, that although it paid the royalty fee which is equivalent to what it had paid the previous years, it however, refused to take out a license and continues to play its members’ music.
The application is opposed.
A director at Klub House has sworn the replying affidavit. It is his contention that the Society is not the sole licensing body of copyright of all music works in Kenya. He goes further to add that even if it was, it would only enforce the copyright of musicians and artistes who have in writing specifically assigned the rights to that copyright and this would thus not apply to musicians generally. He depones that his company had paid the license fee over that specific period due to the harassment, demand and coercion of the society which has never despite demand supplied Klub House with a list of members whose music it is alleged has been infringed. He however insists that his company can freely negotiate and enter into contacts with live band performing musicians whose services it has paid for directly to them. This fact has been confirmed by John Desmond Katana Harisson one of the performers who has sworn an affidavit and deponed that he has been performing for Klub House at a negotiated fee. 
He also depones that Klub House has continually paid Multi-Choice Ltd the requisite fee that covers club and pub restrictions and to Kenya Broadcasting Corporation for the various television sets that it shows, which license authorizes it to show all the music relayed by the said stations. It is his contention that to allow the plaintiff to collect royalties would amount to double taxation. It is his contention that in any event damages would be an adequate remedy as these would be equivalent to the fees that have been assessed prior hereto.
All in all, Klub House maintains that it stands to suffer irreparably if the court were to grant the orders sought, which it contends are oppressive.
Several issues arise namely;
•    Who is the owner of the copyright in the music that the society claims is being infringed
•    Has Klub House infringed those copyrights?
•    What are the rights of the society
•    Is the society entitled to the prayers that it now seeks
  Normally the owner of the music, that is, the one who writes, compiles or composes is the first owner of copyright.
But it is well established that a copyright can be transferred by assignment in writing signed by the owner of the copyright or his duly authorized agent.
On broadcasts I have had to refer to section 8 and 16 of the Copyright Act Cap 130 which stipulate that:
“ 8 (1) Where the owner of copyright in any literary, music or artistic work authorizes a person to incorporate the works in an audio-visual works and broadcasting authority broadcasts the film, it shall in the absence of any express agreement to the contrary, be deemed that the owner of the copyright authorized the broadcast.
(2) Notwithstanding section (1), where broadcasting authority broadcasts audio-visual works in which a musical work is incorporated, the owner of the right to broadcast in the musical work, shall subject to the provisions of this Act, be entitled to receive fair compensation from the broadcasting authority, and in the absence of an agreement the amount of compensation shall be determined by the competent authority appointed under section 17.”
“16 (1) Any person at a time when copyright or the rights of a performer subsists in a work:-
a)    Makes for sale or hire any infringing copy;

b)    Sells or lets for hire or by way of trade or exposes or offers for sale or hire any infringing copy;

c)    Distributes infringing copies;

d)    Possesses otherwise than for his private and domestic use, any infringing copy;

e)    Imports into Kenya otherwise than for his private use and domestic use any infringing copy; or

f)    Makes or has his in his possession any contrivance used or intended to be used for the purposes of making infringing copies

Shall, unless he is able to prove that he acted in good faith and had no reasonable grounds for supposing that copyright or the rights of a performer would or might thereby be infringed, be guilty of an offence.”
(2)    Any person who causes a literary or musical work, an audio-visual work or a sound recording to be performed in public at a time when copyright subsisted in such work or sound recording and where such performance was an infringement of that copyright shall be guilty of an offence unless he is able to prove that he acted in good faith and had no reasonable grounds for supposing that copyright would or might have been infringed.
(3)    For the purposes of paragraphs (a) to (f) of section 1 any person who has in his possession, custody or control three or more infringing copies of s work in the same form, shall unless the contrary is proved be presumed to be in possession of or to have imported such copies otherwise than for private and domestic use.
Klub House has intimated that it has paid all dues to both Kenya Broadcasting Services and Multi-Choice Africa Ltd. I have no reason to doubt that they have.
In view of this is the society entitled to claim to be the sole licensing authority which enforces copyright of all music works?
In my humble opinion it cannot. Only the copyright owners would have a right to enforce compliance. Although to its further affidavit it exhibited a list of its members no executed assignments were provided as would be necessary to support its contention on the basis of which it has brought this suit.
Further, the agreement between the plaintiff and the Performing Right Society Limited, which attached as an exhibit to the further affidavit clearly stipulate that “By this contract the PRS confers on MCSK the exclusive right to authorize within Kenya all public performances………………..of the musical works, with or without lyrics, as the member of PRS and of the members of the scheduled society which are protected by and under Copyright law of Kenya.
It is worth to note that the applicant is not quite clear of the orders it seeks in its application, for although the deponent of the affidavit states that she depones in support of an application for a mandatory injunction she however depones in paragraph 9 thereof;
“That I swear this affidavit in support of an application for an injunction restraining the defendant from playing any music of our members until the final determination of this suit.”
Both counsels did not refer to any cases in support their submissions.
I have however had to refer to Halsbury’s laws 8 pp 444-5 at p. 8 which reads:
“The general principles under which injunctions are granted for the protection of copyright do not differ from those which are granted for protection of other property. The nature of copyright property however makes an injunction, a peculiarly suitable and normal remedy.”
 It however goes on in the next paragraph to say that:
“If the granting of an injunction will not seriously interfere with the defendant, it may be granted although the plaintiff does not fully prove his title to the right alleged to be infringed or has equitable title, or although the quantity of the defendant’s work which constitutes infringement has not been ascertained.”
“An interlocutory injunction will not however, be granted where the plaintiff can properly be protected by the defendant properly keeping an account of the defendant might suffer irreparable injury from an injunction restraining him from publishing pending that; nor will an interlocutory injunction be granted if the plaintiff has been guilty of undue delay in coming to court or if his conduct has amounted to acquiescence of infringement, or there is any substantial doubt at the plaintiff’s right to succeed.”
Having heard the advocates from both parties and taking the above into consideration, in my humble opinion the plaintiff has not established a prima facie case with a probability of success any damage that it is likely to suffer would be easily assessed as I have found prior hereto. I however find that the business Klub House will be greatly interfered with and that it stands to suffer irreparably if the orders sought were granted and by being stopped to play the music at both its premises, which performances are the basis of its success as business.

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