Legal Drama

(ANALYSIS) Time Warner SUES Kenya’s Kenafric Over BEN10 Copyright and Trademark Infringement

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Hey folks, happy new week!

I gave you all heads up, already, that this month and next will be quite busy for me. I spent late last week into the weekend at a legal conference. I had a great time, met some really neat people and can’t wait to get back to my base. How was your weekend?  I hope it was fantastic! I see some AML people on the move as well. #Goodlook

Okay you guys, I know you have heard me discuss and predict that it was only a matter of time before the lawsuits came knocking on the doors of African owned businesses in Africa for the infringement of the works of American copyright holders. For the most part, I have focused on African entertainment companies. I have said that all eyes are on Africa and if Africans believe that they will get a free pass when it comes to the infringement of the intellectual property works of the citizens of other nations especially where large sums of monies are involved, then they really don’t know what lies ahead.

Well, one interesting case that has just emerged, which adds boost to my numerous discussions on this point, is the lawsuit filed by USA’s Time Warner against Kenya’s Kenafric over BEN10 Copyright and trademark infringement.

There are a couple of things to note on this case:

1. African entrepreneurs, especially those that leave the diaspora and head to Africa to replicate the same offerings here in the USA, be cognizant of the laws in the respective countries you move from and to, and avoid theft of the works of the citizens of other countries. You really should get an entertainment lawyer involved if you are aiming to do something “big” in Africa.

2. When it comes to Intellectual property laws, do not think you are immune from liability because you are in Africa. US citizens/companies, through several treaties that are applicable to countries in Africa, can still have you defend yourself in a court of law whether if you infringe on their intellectual property rights.

For Copyright Law, for example, a U.S citizen/company can drag you into a court of law through the Berne Convention Treaty, among others. What are the very basics you need to know?

“There is no such thing as an “international copyright” that will automatically protect an author’s writings throughout the world. Protection against unauthorized use in a particular country depends on the national laws of that country. However, most countries offer protection to foreign works under certain conditions that have been greatly simplified by international copyright treaties and conventions. There are two principal international copyright conventions, the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) and the Universal Copyright Convention (UCC).

The United States became a member of the Berne Convention on March 1, 1989. It has been a member of the UCC since September 16, 1955. Generally, the works of an author who is a national or domiciliary of a country that is a member of these treaties or works first published in a member country or published within 30 days of first publication in a Berne Convention country can claim protection under the treaties.

There are no formal requirements in the Berne Convention.

Under the UCC, any formality in a national law can be satisfied by the use of a notice of copyright in the form and position specified in the UCC. A UCC notice should consist of the symbol © (C in a circle) accompanied by the year of first publication and the name of the copyright proprietor (example: © 2006 John Doe). This notice must be placed in such a manner and location as to give reasonable notice of the claim to copyright. Since the Berne Convention prohibits formal requirements that affect the “exercise and enjoyment” of the copyright, the United States changed its law on March 1, 1989, to make the use of a copyright notice optional. U.S. law, however, still provides certain advantages for use of a copyright notice; for example, the use of a copyright notice can defeat a defense of “innocent infringement.”

Even if a work cannot be brought under an international convention, protection may be available in other countries by virtue of a bilateral agreement between the United States and other countries or under specific provision of a country’s national laws. . .” US Copyright Office

For Trademark Law, a U.S Citizen/company can also drag you into a court of law through the Madrid Protocol. This is what Time Warner is essentially doing in this case.

What is the Madrid Protocol?

The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) is an international treaty that allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an “international application.” The International Bureau of the World Intellectual Property Organization, in Geneva, Switzerland administers the international registration system.

The resulting “international registration” serves as a means for seeking protection in member countries, each of which apply their own rules and laws to determine whether or not the mark may be protected in their jurisdiction. Neither the Madrid Protocol nor the Madrid Agreement provide for registration of an “internationally effective” trademark.

Which countries are members of the Madrid Protocol?

As of February 2013, 88 countries have joined the Madrid Protocol. These countries are called “Contracting Parties.” A current list of the Contracting Parties is available online at the World Intellectual Property Organization (WIPO) website:http://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=8.” – USPTO

3. Recall folks, under Trademark law, the key analysis focuses on the “likelihood” of confusion test, since a US company is suing here. If you have no clue what that is, click on my discussion on the Chris Aire Lawsuit against Louis Vuitton here.

4. For Copyright, the key analysis is focused on the “substantial similarity” test.

What is the “substantial similarity test?” In a nutshell, it is the test that the courts use to determine whether an infringement has occurred within a copyright context. Of course, you all can imagine the breadth of litigation that has spurred out of whether an infringed work is “substantially similar” or not.

How about we stop here? Let’s see how this case plays out. It may then warrant a more detailed discussion, including looking at the issue of damages. In the meantime, read an excerpt of the legal drama reported by Business Daily Africa and we will catch up soon.

Have a healthy and productive week ahead.

Cheers,
Uduak
Photocredit: Kenya IP

“New York-listed Time Warner has sued a local sweets manufacturer over the use of its cartoon trademarks  in a legal battle that will test the application of global copyright laws in Kenya.

The firm through its TV unit, The Cartoon Network Inc, wants Kenafric Industries Limited stopped from wrapping its sweets with packages branded BEN 10 –which is a flagship cartoon channel of the US giant.

Cartoon Network alleges that the association of the chewing gum with its brands can damage the reputation of BEN 10 and goods branded with the label toys, video games and clothing valued at Sh275 billion.

“The defendant’s (Kenafric) use of the name BEN 10 amounts to trade mark infringement of BEN 10 Trademarks,” says Cartoon Networks vice president Louise Sams in documents filed at the Milimani Commercial Court. “The unauthorised reproduction or adaptation or publication or broadcast or sale or distribution or possession or importation of the offending chewing gum constitutes copyright infringement.”

Mr Sams in a court document claims that both Kenafric and Cartoon Network use the same distribution channels, which it says could easily lead to the association of the Kenafric chewing gums with its cartoons. . .”

Business Daily Africa has the full story.

For a perspective from an IP lawyer in Kenya, visit KenyaIP Blogas well.

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AFRICA MUSIC LAW™ (AML) is a pioneering music business and entertainment law website and podcast show empowering the African artist and Africa's rapidly evolving entertainment industry through brilliant music business and entertainment law commentary and analysis, industry news, and exclusive interviews.

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ABOUT THE FOUNDER

Credited for several firsts in the fashion and entertainment industry, Uduak Oduok (Ms. Uduak) is a fashion and entertainment lawyer, speaker, visionary, gamechanger, trailblazer, and recognized thought leader, for her work on Africa’s emerging global fashion and entertainment markets, and the niche practice of fashion law in the United States. She is also the founder of ‘Africa Music Law,’ an industry go-to music business and law blog and podcast show empowering African artists. Her work in the creative and legal industries has earned her numerous awards and recognitions, including an award from the American University Washington College of Law for her “legal impact in the field of intellectual property in Africa." She has also taught as an Adjunct Professor at several institutions in the United States. For more information, visit her at https://msuduak.com.

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