Patents and breach of confidence Patentable inventions What is an invention Getting and owning a patent Entitlement Patent infringement Infringement Breach of confidence The protection of confidence Related areas of law Chapter 3: Trade Marks Introduction to the course Intellectual property (IP) provides legal protections for creations of the mind, such as musical compositions, paintings, literary works, films, live performances, technical inventions and secret information.
The law also protects commercial creations such as designs, sound recordings, trade marks, and computer programs. We hope that you will find this area of the law stimulating. When you see a film, an advertisement or listen to music, we hope that you will enjoy it all the more for knowing the legal principles which underpin the industry concerned. This course uses the intellectual property laws of the Kenya, which are heavily influenced by European Community (CE) legislation, to develop the various themes.
The texts are: 1 Christie and Garage Blackstone Statutes on Intellectual Property 2004-2005. (Oxford University press, 2004), seventh edition [ISBN: 0199273057] (note: look out for the forthcoming 2005- 2006 edition). Phillips and Firth Introduction to Intellectual Property Law. (Butterscotch, 2001 ) (now Oxford University Press), fourth edition [ISBN: 0406997578]. 3 gently and Sherman Intellectual Property Law. (Oxford University Press, 2004) second edition [ISBN: 0199264309] . This contains the most detailed exposition.
Statutes The Constitution The Industrial Property Act, 2001 The Copyright Act The Seeds and Plant Varieties Act The Trade Marks Act Allocating your time It is impossible to say with great precision how much time you should set aside for studying industrial and intellectual property because you will all eave individual learning rates depending on your circumstances, fluency in English and any prior study of law. Furthermore, some topics of the syllabus require considerably more time than others.
My best advice is that you should allocate a specific amount of time for the study of industrial and intellectual property each week with a view to completing your study of all topics in the syllabus so as to leave ample time for revision before the exam. The examination Your understanding of the material covered by the syllabus for this section will be assessed by two CATS, carrying 30 marks and a written examination of hours length, with reading time catering for the other 70 marks.
TO the extent that there are any prerequisites for this section, knowledge of the materials covered in those prerequisites may be necessary to answer the questions on the exam nation of this section. ONE _ Only certain forms of material or ‘works’ receive copyright protection. In this chapter, you will learn the different types of work in which copyright can exist (or ‘subsist’).
Learning outcomes By the end of this chapter and the relevant readings, you should be able to: define the different forms of work in which copyright can subsist extinguish between copyright works that require originality in order to receive protection and ‘related rights’ (also sometimes known as secondary or entrepreneurial copyrights or neighboring rights) _ apply the definitions of works within s 1(1 ) to determine whether copyright arises in hypothetical situations Essential reading _ Phillips and Firth, up. 146-173. _ Bentley and Sherman, Chapter 3.
Copyright Act 2001 _ Berne Convention for the Protection Of Literary and Artistic Works, Art. 2. Rome Convention, Arts 1-9. TRIPs Agreement, Arts 9, 10, 14. _ WIPE copyright Treaty, Arts 1-5. WIPE Performances and Phonograph Treaty, Arts 1-3. _ Creation Records Ltd v News Group Newspapers Ltd  EMIL 444. Emmet (ASK) Ltd v GHZ Managua (Plastics) Ltd  FSP 718. _ Exxon corp. v Exxon Insurance Consultants International Ltd  Chi 119 (CA). _ Green v Broadcasting Corporation of New Zealand [1 989] 2 AY RE 1056 (PC). _ asking v Hyper Records Ltd  EMIL 27.
Norwegian v Arks (No. 2)  EMIL 67. _ George Henries Limited v Erstwhile upholstery (Lands) Limited [1 976] AC 64 (HAL). _ Anaconda v Environmental Research Technology [1 994] FSP 659. Electronic Techniques v Crotchety  FSP 401. Newspaper Licensing Agency Ltd v Marks and Spencer  1 AC 551 (HAL). Button, ‘Legal Determinations of Artistic Merit – Works of Artistic Craftsmanship under UK Copyright Law’ (1996) Art, Antiquity and Law 123. Works requiring ‘originality’ Copyright protection is granted to original literary, dramatic, musical or artistic works.
You should note the range of different forms of material that can be protected as a ‘literary work’ (e. G. Spoken words, databases, tables or compilations and computer programs). In the case of musical works, we have very little in the way of a definition (although, see now Asking v Hyperfine Records Ltd  EMIL 27). We do know, however, that it is necessary to distinguish between the creation of a copyright musical work and the performance of such a work (see Hadley v Kemp  EMIL 589, considered in section 2. 1 on authors and first owners below).
The predominant problem that courts have faced in relation to the protection of artistic works is the tendency of claimants to seek copyright protection for forms of work that were probably never intended to be protected by copyright ? for example, industrial molding, exhaust pipes and prototypes for mass-produced furniture. A great deal of judicial energy and imagination has been spent patrolling the boundary between copyright law and other intellectual property regimes better suited to the protection of industrial designs.
Industrial and intellectual property: In this section of the materials, you will study three separate criteria that apply either to all or some of the copyright works considered- namely, the criteria of recording originality and qualification. Recording ‘Copyright does not subsist in a literary, dramatic or musical work unless and until it is recorded, in writing or otherwise… ‘. This is sometimes referred to as the requirement of ‘fixation’. Can you think of situations in which a recording could be made without consent?
Originality The requirement that a work must be ‘original’ applies to literary, dramatic, musical and artistic works. It provides an important threshold for copyright protection – ensuring that only works that are the product of some ‘skill, judgment and labor’ are protected under copyright law. ‘Originality’ will be present in obvious cases, such as an original novel or poem, but also in works in which pre-existing source material has been chosen and rearranged. Thus, for example, copyright can arise in translations, compilations, editorial work or musical arrangements.
Qualification In order for a work to be protected by copyright , it is necessary for it to be ‘qualified’ As you will see, this connection can arise through the author (citizenship, nationality, domicile etc. ), through first publication. In studying the provisions on qualification, you should also bear in mind the principle of non-discrimination within the Treaty of Rome (Art. 6 CE). The development of Kenya copyright law, beginning with the Copyright Act f 1 966, essentially illustrates the (post) colonial impact on the construction of Jenny’s copyright legal system..
The Copyright Act Cap 1 30 of 1 966 marked the declaration of Jenny’s copyright independence to some extent. It repealed and replaced the UK Copyright Act of 1956 and Section 17 of the new Act Of 1 966 sought to abrogate the common law of copyright. This development may be regarded as an attempt to De-link Kenya from English copyright. The Copyright Act Cap 130 as revised in 1 975 essentially consolidated national imperatives in an international context, with folklore retorted as a literary, artistic, or musical work.
The intention was: to preserve the national cultural heritage and economic welfare, especially in the context of an international movement to protect natural and cultural heritage; as well as to promote the then-incipient interest in international trade in cultural products. The copyright amendments of 1982, 1989, 1 992 and 1995 mainly introduced new and re-defined existing definitions under the Copyright Act, partly as a result of technological changes.
These amendments introduced traditional relief for copyright infringement, including judicial remedies such as injunctions and damages as well as delivery up; criminal sanctions were also reformed. After Kenya acceded to the Berne Convention in 1993, the Attorney-General exercised his relegating powers under Section 18 of the Copyright Act and extended the protection of the Act to literary and artistic works belonging to nationals of other Berne Member States.
The Current Copyright Act of 2001 was drafted mainly to meet the standards established under the TRIPS Agreement of 1994 and the WIPE Internet Treaties’ (WAC and WEPT) of 1996 Works Protected by Copyright The Copyright Act provides for works that are eligible for copyright protection. These are: literary works (including computer programmers); musical works; artistic works; audio-visual works; sound recordings; performances; and broadcasts. Literary work” means, irrespective of literary quality, any of the following, or works similar thereto – (a) novels, stories and poetical works; (b) plays, stage directions, film sceneries and broadcasting scripts; (c) textbooks, treatises, histories, biographies, essays and articles; d) encyclopedias and dictionaries; (e) letters, reports and memoranda; (f) lectures, addresses and sermons, but does not include a written law or judicial decision; “audio-visual work” means a fixation in any physical medium of images either synchronized with or without sound from which a moving picture may by any means be reproduced and includes Videotapes and biodegrades but does not include a broadcast; “broadcast” means a sound or television broadcast of any material and includes a diffusion over wires, but does not include the emission of programmer-carrying signals to a satellite; musical work” means any musical work, irrespective of musical quality, and includes works composed for musical accompaniment; “sound recording” means the first fixation of a sequence of sounds capable of being perceived aurally and of being reproduced, but does not include a soundtrack associated with audio-visual works; “artistic work” means, irrespective of artistic quality, any of the following, or works similar thereto (a) paintings, drawings, etchings, lithographs, woodcuts, engravings and prints; (b) maps, plans and diagrams; (c) works of sculpture; (d) photographs not comprised in audio-visual works; e) works of architecture in the form of buildings or models; and (f) works of artistic craftsmanship, pictorial woven tissues and articles of applied handicraft and industrial art; Nature of Copyright Copyright in a literary, musical or artistic work or audio-visual work shall be the exclusive right to control the doing in Kenya of any of the following acts, namely the reproduction in any material form of the original work or its translation or adaptation, the distribution to the public of the work by way of sale, rental, lease, hire, loan, importation or similar arrangement, and the immunization to the public and the broadcasting of the whole work or a substantial part thereof, either in its original form or in any form recognizably derived from the original; but copyright in any such work shall not include the right to control – (a) the doing of any of those acts by way of fair dealing for the purposes of scientific research, private use, criticism or review, or the reporting of current events subject to acknowledgement of the source; (b) the reproduction and distribution of copies, or the inclusion in a film or broadcast, of an artistic work situated in a place where it can be viewed by the public; (c) the incidental inclusion of an artistic work in a film or broadcast; (d) the inclusion in a collection of literary or musical works of not more than two short passages from the work in question if the collection is designed for use in a school registered under the Education Act or any university established by or under any written law and includes an acknowledgement of the title and authorship of the work; (e) the broadcasting of a work if the broadcast is intended to be used for purposes of systematic instructional activities; (f) the reproduction of a broadcast referred to in the preceding arcograph and the use of that reproduction in a school registered under the Education Act or any university established by or under any written law for the systematic instructional activities of any such school or university; (g) the reading or recitation in public or in a broadcast by one person Of any reasonable extract from a published literary work if accompanied by a sufficient acknowledgement of the author; (h) the reproduction of a work by or under the direction or control of the Government, or by such public libraries, non-commercial documentation centers and scientific institutions as ay be prescribed, where the reproduction is in the public interest and no revenue is derived therefore; (i) the reproduction of a work by or under the direction or control of a broadcasting authority where the reproduction or copies thereof are intended exclusively for broadcast by that broadcasting authority authorized by the copyright owner of the work and are destroyed before the end of the period of six calendar months immediately following the making of the reproduction or such longer period as may be agreed between the broadcasting authority and the owner of the relevant part of the upright in the work; and any reproduction of a work made under this paragraph may, if it is of an exceptional documentary nature, be preserved in the archives of the broadcasting authority, but, subject to the provisions of this Act, shall not be used for broadcasting or for any other purpose without the consent of the owner of the relevant part of the copyright in the work; (j) the broadcasting of a literary, musical or artistic work or audio-visual works already lawfully made accessible to the public with which no licensing body Before looking at the precise scope of protection for the different kinds of arks, it is noteworthy that the Act contains the following definition of ‘copy: ‘[C]pop’ means a reproduction of a work in any manner or form and includes any sound or visual recording of a work and any permanent or transient storage of a work in any medium, by computer technology or any other electronic means. This definition covers ‘any transient storage of a work in any medium’. This is intended to cover new reproduction and transmission technologies relating to the production and distribution of literary and other copyrightable works. The Act recognizes non-material and non-tangible forms f reproduction as well. It is obvious that the protection of intangible forms of reproduction impacts access to digital teaching and learning materials. Performance” means the representation of a work by such action as dancing, playing, reciting, singing, declaiming or projecting to listeners by any means whatsoever; “performer” means an actor, singer, declaimer, musician or other person who performs a literary or musical work and includes the conductor or director of the performance of any such work; “fixation”, in relation to a performance, means an audiovisual recording or a mound recording – (a) made directly from a live performance; (b) made from a broadcast of or including the performance; or (c) made directly or indirectly from another recording of the performance. The owner of literary, artistic, musical or audio-visual works has the exclusive right to control the reproduction, in any material form, of his work, or its translation, its adaptation, its distribution to the public byway of sale, rental, lease, hire or loan, as well to control the importation or communication to the public and broadcasting of his works. These exclusive rights are, however, subject to limitations and exceptions.
The rights-holder in a sound recording has the exclusive right to: reproduce the sound recording in any manner or form; distribute it to the public by way of sale, hire, rental, lease or any similar arrangements; import it into Kenya; and broadcast and communicate the material to the public. Broadcasting organizations have the right to control the fixation, broadcast and communication to the public of the whole or part of their broadcast. The Act also grants performers exclusive rights to fix and reproduce the action of their performances and to broadcast or communicate their fixed performances to the public. Moral rights apply to authors Of literary, artistic and musical works as well as performers. Ender Section 32 of the Copyright Act, the moral rights are limited to the right to be named or claim authorship and the right to object to any mutilation or derogatory treatment that affects the honor or reputation of the author or performer. According to Section 33 of the Copyright Act, economic rights are transmissible as movable property by assignment,by license, by testamentary exposition or by operation of law. Furthermore, the Act stipulates that the term ‘work’ includes translations, adaptations, arrangements or other transformations of a work and public performance of the work. Lastly, the right of making available is not yet expressly provided for by the Act, but this is to be included in the forthcoming amendments to the law.
This is an extension of the right of communication to the public in the digital environment, which is provided for under the WIPE Copyright Treaty. This right grants the rights-holder more control of the work when it is distributed ever the digital network. Term of Protection The term of protection for literary, artistic and musical works in Kenya is 50 years after the end of the year in which the author dies. In the case of audio- visual works and photographs, the term of protection is 50 years from the end of the year in which the work was either first made available to the public or first published, whichever date is the latest. Sound recordings are protected for 50 years after the end of the year in which the recording was made.