Chelagat Cherwon V Hon Martha Karua & 5 Others (civil Case 4 of 2023) [2024]

Case Summary 

In July of 2019 the Plaintiff, a graffiti artist, was contracted by a tenant at 209 State House Road to paint murals at an office, restaurant and an additional space at the basketball court. The tenant paid her for the office and restaurant murals. As for the murals at the court, there was an understanding that she would be compensated for any commercial use of her artwork.  

On June 30, 2022, the Plaintiff saw her murals featured on Hon. Martha Karua’s presidential campaign video, ‘Heko Mama’, which had been created and produced by the 2nd Defendant. The murals were also featured in 3rd Defendant’s Instagram posts and reels as well as the 4th Defendant’s music video production titled Better Days. Subsequently, her artwork featured the 5th Defendant’s music video production titled ‘Fashionista’ released on 22nd February 2021.  

The Plaintiff claims that she did not give permission for her work to be used for commercial purposes by 209 State House Road and that she considers her work stolen and used on various occasions without her consent.  

Issues for Determination 

1. Whether the Defendants infringed the Plaintiff’s copyrights; and 
2. Whether the Plaintiff is entitled to the remedies she is seeking against the Defendants?  

Did the Defendants infringe the Plaintiff’s Copyright? 

The 2nd Defendant testified that the license terms between himself and the tenant of 209 Statehouse were that he was authorized to use the upper and lower grounds for the purposes of shooting the campaign video. Nothing in the letter containing the license terms created any limitations on the use of the facility. Furthermore, the Plaintiff had failed to produce any contract that contains terms that regulate the use of the premises and the murals. ​     ​  

The other Defendants held the same view, that they were not privy to any contract between the Plaintiff and the tenant which defined any restrictions on use of the premises that featured her artwork. In addition, considering the artwork had been commissioned it gave the tenant the authority to issue express permission to the Defendants to use the premises featuring the artwork. Finally, there was nothing that attributed the artwork to the Plaintiff and therefore the Defendants could not be held liable for any copyright infringement against the Plaintiff.  

What constitutes Copyright infringement? 

​​​The Plaintiff sought several remedies from the Court including: punitive damages for breach of copyright; an order for infringing materials to be pulled down; and a permanent injunction restraining the Defendants and their agents from commercializing the Plaintiff’s art without a compensation arrangement.  

The Copyright Act CAP 130 (the “Act”) provides a clear definition and constitution of infringement as stated below:  

1. Section 2 of the Act defines infringement as any act that violates a right protected by the Act. 
2. Section 35 of the Act provides that copyright shall be infringed by a person who, without the licence of the owner of the copyright does, or causes to be done, an act the doing of which is controlled by the copyright. 

Copyright Exceptions 

Copyright gives an owner the exclusive right to control all uses of their work. Third parties are required to obtain permission from the owner to use their work or exploit the economic rights awarded by copyright protection. The law allows for a few instances where such permission or authority is not mandatory as under the Second Schedule of the Copyright (Amendment) Act, 2019.  

The Hon. A.N. Ongeri aptly stated in his judgment that the Defendants’ main activities were campaign videos, music videos and Instagram reels and posts. The Plaintiff’s murals were merely incidental inclusions to the main activities of the Defendants alluding to the exemptions provided in (e) and (f) of the Second Schedule of the Act below: 

“(e) The reproduction and distribution of copies of an artistic work that is publicly displayed, including where such work is included in an audiovisual work or broadcast. 

(f) The accidental addition of a copyrighted work in an artistic or audiovisual work, sound recording, or broadcast.” 

Shifting the burden of proof 

In view of the facts and the legal provisions on copyright protection, it is important to note Section 107 of the Evidence Act which provides that: 

“Whoever desires any court to give judgment as to any legal right or liability dependent on the existence of facts which he asserts must prove that those facts exist.” 

The Court found that the Plaintiff had failed to provide the details of any agreement between herself and the tenant. There existed no licensing agreement that showed how much she would be compensated for any commercial use of her artwork or a commissioning agreement that restricted the use of her art work in any way. Moreover, the Defendants were not made aware of any such agreement and the Defendants had already obtained the necessary permission to use the premises of the tenant who had commissioned the artist’s work. 

In view of the above, and considering the works were incidental inclusions in the music videos, Instagram posts and reels, the Plaintiff was not entitled to the remedies sought and the case dismissed.  

How to protect your Copyright? 

In Kenya​,​ ​c​opyright protection lasts for the life of the author plus 50 years. If the author is unknown, the period of protection is 50 years from the date it is published. In case of a joint authorship, copyright will last for the lifetime of the authors and 50 years after the death of the last author.  

The Copyright Act provides for several ways of protecting Copyright including registration of rights with the Kenya Copyright Board. In the instant case​, however,​ we can consider the following contractual agreements as protection avenues:  

1. Commissioning of work 

A person who pays a commission for the creation of work to a person who is not an employee under a contract of service will acquire the copyright in the work. The conditions for commissioning work depends on any agreement between the parties excluding or limiting the transfer. The agreement may delineate use of the artwork for commercial purposes for example.  

2. Licensing  

A licence refers to a permit or approval given to the licensee for the use of the economic rights in a copyrighted work. With a licence, the right to use, or control the use of the copyright in a work is returned to the author/creator at the end of the licence term. This agreement should also be in writing and executed by both parties.  

Conclusion  

At CM Advocates LLP, we have an experienced team of lawyers who can offer you legal advice on your Intellectual Property Rights. Please contact us for our services via ip@cmadvocates.com for more information on our services. 

Author 

Sandra Chesanai - Associate 

schesanai@cmadvocates.com  

Disclaimer 

This article is for informational purposes only and should not be construed as legal advice.