Nonini, Willis Raburu, Them Mushrooms: How artistes are cashing in on copyright fights

In recent years, intellectual property (IP) disputes from copyright and patent violations have been on the rise. Attributing the rise to publicity, IP lawyer David Katee notes that over the years, the public has realised the importance of protecting their copyright—and making money from any infringement.

So far, a number of high profile Copyright Infringement cases in the creative space have been settled, with a cumulative total of more than Sh31.5 million awarded by the courts.

“There is growing information on IP. In the past, copyright violations cases would never make it to the news headlines unless the saga involved the government. But copyright has been with us for decades, only that people never thought they could make money out of it until recently with the publicity” Mr Katee observes.

Also Read: Ridiculous demands made by top African musicians

The Nation takes a review of notable copyright infringement cases in the creative industry.

Also Read: Sakaja, the self-styled ‘mbinguni hakuna digiri’ artiste

Willis Raburu Vs Airtel Kenya

Determination: Raburu awarded Sh6.5 million

On June 24, 2022, media personality Mr Raburu successfully sued telecom giant Airtel Kenya for the use of his trademark ‘Bazu’ in promoting its new bundle plan ‘Bazu Bundle’. MrRaburu argued that Bazu had become his stage name in music, and his other advertising and commercial dealings.

He sought a permanent injunction to restrain Airtel Kenya whether itself, its directors, officers, employees or agents from infringing on his registered Trademark No 116744.

He also sought special damages amounting to Sh5 million attributed to the loss of any potential license fee that Airtel may have paid to him in lieu of the defendants infringing activities.

Mr Raburu also sought an order that profits earned by the defendant by wrongful and/or unauthorised use of the mark alike to that of the plaintiff, be awarded to the plaintiff as may be found due on calculating the accounts.

In the case, Mr Raburu argued that the word ‘Bazu’ originated from him during his engagement with the public and he thereafter has been using the same in all his business activities.

He claimed that people assumed that he had endorsed Airtel since they had used the name Bazu within their dealings which wasn’t the case. Therefore, it has affected his business as it has caused confusion among the consumers and general public.

He stated that as registered proprietor who had exclusive rights to the trademark, he had seen Airtel advertise the trademark in their promotional advertisement for over a year without his consent and was therefore claiming Sh5 million for the use of the trademark for that period.

In defense, Airtel Kenya argued that Mr Raburu was only aiming for quick enrichment and hoped for a silent settlement.

But Magistrate Rawlings Lilum Musiega in his judgment stated that he finds and holds that as registered owner of the Trademark, Mr Raburu is entitled to its exclusive use. That the plaintiff had attained registration of the Trademark Bazu on April 13, 2021 which was before the defendant had started using the aforementioned mark to promote its internet products which was about December 16, 2022.

“I find and hold that the plaintiff herein has proved that the defendant is liable for infringement and passing off the brand name ‘Bazu’. I have considered the authorities cited by the Plaintiff in support of his claim for damages,” the magistrate stated.

The magistrate ordered an injunction on Airtel on use of the trademark, publishing any material in the print and broadcast media using the mark Bazu.

He awarded special damages amounting to Sh5 million attributed to the loss of any potential license fee that the defendant may have paid the plaintiff in lieu of the infringing activities. the magistrate further awarded Mr Raburu Sh1.5 million in general damages.

Nonini Vs Brian Mutinda & Syinix Electronics

Determination:: Nonini awarded Sh1 million

Rapper Hubert ‘Nonini’ Nakitare moved to court in July 2022 suing content creator Brian Mutinda and Japanese electronics manufacturer Syinix for copyright infringement.

Nonini successfully argued in court that Syinix included part of his hit song ‘We Kamu Tu’ in their commercial without obtaining his consent.

He stated that the song ' ‘We Kamu’’ was synchronised with the visuals of the video commercial without a synchronisation license from him. The case stemmed from a video posted by Mr Mutinda on his Instagram promoting a new flat screen TV from Syinix. The video was also shared on Syinix verified Facebook account.

Syinix denied creating any video that infringed on Nonini’s copyright and claimed to be unaware of any rights associated with the song. In March 2023, Milimani Commercial court awarded Nonini Sh1 million in general damages, and ordered that the copyright infringing content be pulled down from all Syinix platforms.

Them Mushrooms Vs Royal Media Services (RMS)

Determination: Them Mushroom awarded Sh3 million

In the case No 6161 of 2009 filed at Chief Magistrate’s Court, John Katana- founder member of the legendary band Them Mushroom sued RMS for infringement of copyright on the band’s musical works titled ‘Kazi ni Kazi’.

Mr Katana told court that in 2005, he became aware the song was used as a signature tune for a radio programme aired by Radio Citizen dubbed ‘Chapa Kazi’ that aired virtually every day.

Mr Katana claimed RMS had not obtained the licence or authority from him or the members of his band to reproduce or use the song on the radio show. As a result, Mr Katana contended that the song has become unduly associated with RMS to the extent that no broadcasting station wanted to have anything to do with the song, as most potential licensees believed the song and the band to have a relationship with RMS. Mr Katana testified that he approached RMS for compensation but he was ignored.

The singer then moved to court, quantifying damages for the copyright at Sh5 million which included loss of royalties calculated at a minimum of Sh300,000 per year. In defense, RMS relied on the ‘fair dealing’ provision of the Copyright Act.

RMS argued that the radio show in question was educational in nature and was never used for profit making. RMS also argued that it had popularised the song through its use on its show and therefore Mr Katana and the band, were a major beneficiary of RMS’s use of the song.

In the judgment, the magistrate observed that it is trite law that the right to authorise the inclusion of any musical works in an audio-visual work or a broadcast known as synchronisation right can only be authorised/licensed by respective foreign or local copyrights owner. For that violation, the court awarded Mr Katana Sh3 million in damages.

John Boniface Maina Vs Safaricom & Interactive Media Services & Liberty Afrika Technlogies & MCSK

Determination: JB Maina gets Sh15.5 million in out-of-court settlement

In 2008, telecom giant Safaricom introduced Skiza Tunes, a caller ring back tone service that enabled subscribers to customise their ringtones leased from the telecom.

Safaricom also set up a competition styled ‘Surf 2 Win Promotion’ through which its customers could download Skiza tones at a fee. Premium Rate Service Providers (PRSPs) Interactive Media and Liberty Afrika Technologies listed in the suit by the popular Gikuyu recording artiste J.B Maina as 1st, 2nd defendants assigned various copyrights, licenses and sublicenses of his music and other content to support the Skiza Tune service. JB Maina entered into an agreement with Music Copyright Society of Kenya (MCSK) in June 2007, authorising the collective management organisation to only collect mechanical royalties for all his music works.

However, in May 2012 when JB Maina moved to court suing the parties for infringing his copyright, he accused MCSK- listed as 3rd defendant for assigning those rights to Interactive Media and Liberty Afrika without his knowledge.

He told court that he had already withdrawn as MCSK member when he found out that in August 22, 2008, the society had assigned musical rights of his recordings to Liberty Afrika. He asserted he never authorised Safaricom or any of the third parties to exploit his work in the manner in which they did.

In its defense, Safaricom stated it signed Content Provision Agreement with Interactive Media Service and Liberty Afrika Technologies which had licenses by MCSK, to provide JB 10 songs for use as ringtones on Skiza Tunes and ‘Surf 2 Win Promotion’.

Safaricom however confessed to having previously uploaded JB Maina’s musical works in question for Skiza and Surf 2 Win Promotion on the basis of the content provision agreement, between itself and the two PRSPs-Interactive Media and Liberty Afrika. In addition Safaricom argued that it had made payments to the third parties as per the content provision agreement but the plaintiff denied knowledge or consent.

Safaricom also conceded to have partially purged JB Maina’s musical works from its Skiza portal and only completely removed his works, after it was served with a court order in May 28, 2012.

JB argued that by December 2011, Surf 2 Win promotion and Skiza had downloaded 3,840,000 tunes totaling to Sh45,600,000 based on Sh7 per tune and over 10,000 cartoon synchronisation given at the same costs, which gave a total to over Sh60,600,000; an amount which was increasing daily.

Justice G.K Kimondo ruled that he was satisfied Safaricom used the catalogue of JB Maina’s music and that the public downloaded the tunes from the Safaricom platforms, before the catalogue was deleted for profit. The judge also ruled that the contractual foundation upon which Safaricom was trading with the musician’s copyright was questionable. The suit didn’t culminate into a judgment with Safaricom and JB Maina reaching an out of court settlement in May 2014.

“I JB Maina being the plaintiff herein and having been informed of the offer from the defendant Safaricom to pay Sh15.5 million. I hereby authorise Gikunda Miriti and Co Advocates, who are my advocates in the matter, to apply for the case to be marked as settled,” JB Maina stated in a document filed in court.

When JB Maina first moved to court he was seeking a compensation of Sh5 million as general damages in addition to any money due after accounting for the illegal sale of his musical works through promotions.

Bamboo Vs Safaricom, Bernsoft Interactive Ltd & Mtech Communication Ltd

Determination: Bamboo awarded Sh4.5 million

In December 2015, former hip-hop artiste-turned-businessman Simon ‘Bamboo’ Kimani filed a civil case at the High Court against telecom giant Safaricom and Premium Rate Service Providers (PRSP) Bensoft Interactive Ltd and Mtech Communication Ltd for unauthorised use of his three records Mama Africa (2005) featuring Akon, Yes Indeed (2005) and Move On (2012) featuring Camp Mullah.

The three songs were used on Safaricom’s Skiza callback tunes. Bamboo told court the three companies used his songs without consent, to generate revenue without compensating him. He argued he had expended substantial efforts and resources in composing, writing, recording, promoting and marketing the three musical works but did not recoup his investments due to copyright infringement by Safaricom, Bernsoft and Mtech.

The rapper who has since quit music, accused the three entities of jointly reproducing, publishing, broadcasting, distributing and selling his musical works commercially through the Safaricom’s Skiza platforms, benefiting from those records without making any attempts to obtain his authorisation or even to pay him from the revenue generated.

In its defense, Safaricom stated it had obtained the songs having entered into separate agreement with third parties Bensoft and Mtech to provide musical content for use of the Skiza tunes.

The Telecom giant admitted having put a fee to the three songs but denied liability on the grounds that it had received the songs from the two PRSPs.

Bensoft argued it had received the songs through a non-exclusive license by MCSK under license agreement and a mechanical license agreement. Mtech and Bensoft argued they had been licensed by MCSK to provide content to Skiza tunes under those licenses aforementioned.

MCSK argued it provided the songs because Bamboo had been its member since 2012.

But the musician denied authorising MCSK to assign his music to a separate entity as that would require a separate contract which he did not have with any party including the three accused.

MCSK admitted to have faulted on that front and effectively compensated Bamboo with Sh600,000

In the judgment, Justice Asenbath Nyaboke awarded general damages for infringement of right of Sh1.5 million for each of the three songs.

Wangechi Waweru Vs Tecno Mobile

Determination: Wangechi awarded Sh500,000

November 2016 popular rapper and songwriter Wangechi instituted civil suit No 494/2016 against smartphone manufacturer Tecno Mobile, for using her photo in an advert video campaign to promote its latest phone at the time Camon C9, without consent.

Ms Wangechi moved to court after talks to have her compensated by Tecno failed.

In defense, Tecno argued that it used the image after it was submitted by Ojok photography (2nd defendant) through a competition held by the company for photographers whom they believed to be the Copyright owner of the image.

Tecno also argued that in the video in which Wagechi’s image was insignificantly used, no reasonable person would have assumed that the image thereon and the people in them were endorsing its product.

The company also argued that it notified Ms Wangechi by tagging her in the video through social media accounts and without her raising any objection.

In her judgement Justice Margaret Muigai stated that Tecno had failed to prove that they had obtained consent from Ms Wangechi and that they were also unable to prove that the copyright to the image belonged to Ojok photography.

“In light of these circumstances, nominal damages of Sh500,000 is sufficient compensation for breach of constitutional right to privacy to be paid by defendants to plaintiff,” the judge ordered.

Hellen Muthoni Vs Solpia Kenya Ltd T/A Sistar Kenya

Determination: Muthoni awarded Sh500,000

Gospel musician Muthoni was awarded a compensation of Sh500,000 in a judgment by Data Protection Commission, after it found hair brand Sistar Kenya culpable of using the singer’s image to promote its business without her consent.

The former Inooro TV host, told the commission that sometime in October 2020 she posted a picture of her new hairstyle at the time which was then picked by Sistar Kenya without her consent and used by the brand to promote its business.

Sistar Kenya refuted the claims stating that the picture was posted by the plaintiff and at no point did the hair brand use the image to advertise its products.

In a decision dated January 6, 2024 Data Commissioner Immaculate Kassait found Sistar Kenya guilty for unlawfully using the singer’s image to advertise their business and products without her approval.

Roseline Mwihaki Vs Adawnage Band

Determination: Band ordered to comply with plaintiffs' plants

Roseline Mwihaki, founding member of the popular gospel Adawnage band, filed a civil suit No E1475/2021 against the band in a copyright infringement case. She sought to be paid her royalties for a period of eight years which she argued the band had collected and not remitted her portion.

Adawnage was registered as a n LLP (Limited Liability Partnership) in 2013 with 13 members-with Ms Mwihaki included.

In court papers, Ms Mwihaki stated that her troubles with the band began in 2015 when she stepped back from her role as lead singer as a result of a divorce case against her ex-husband as she was in no state emotionally or to participate in the band’s activities. She argued that’s when the rest of the band began to distance itself from her.

It wasn’t long before the band locked her out of access to Adawnage music catalogue and later kicked her out of the band.

She would later reach out to the band requesting her royalties for the 12 songs out of 20 contained in the band’s initial album Safari and Maisha which she composed and authored.

“The plaintiff has demonstrated her contribution to the band since inception. The plaintiff has proved her case on a balance of probability and this court enters judgement in her favour,” ruled Principal Magistrate Caroline Cheptoo

She ordered that Ms Mwihaki be given her equal share of all revenue collected from show performances, merchandise and other sources since inception of Adwanage LLP under partnerships.

Hellen Winfrida Arika Vs Google, Safaricom, Boomplay, Apple Music & Others

Determination: Suit struck out

December, 22, 2021, Justice David Majanja struck out a copyright infringement suit number HCCOM/E545/2020 filed by Hellen Arika, kin of the TPOK Jazz legends Josky Kiambukuta and DJo Mpoyi. The two singers, songwriters and performers were members of the Congolese TPOK Jazz band passed on in 2021 and 1993 respectively.

Ms Arika filed the case alongside Sysera Milani Ignarce, Eric Sentama Mpoyi son of Djo Mpoyi, who has also since passed away.

Ms Arika claimed she had the power of attorney granted to her by Kiambukuta and Eric Mpoyi. She claimed the power of attorneygave her rights to sue and defend the two artists' musical and artistic rights.

In the case, Milani and Mpoyi sued as administrators of the late legends' estates. Justice Majanja stated that Ms Arika no longer has power of attorney after death of Kiambukuta and Djo Mpoyi. s as the said powers are extinguished upon the death of the donor.

“She cannot maintain this suit on the basis of powers of attorney granted to her by the personal representatives of the deceased artistes,” Justice Majanja ruled.

The judge also ruled that the plaintiff lacked the capacity to pursue the case as personal representative of the two greats under Kenya’s Law of Succession Act as Democratic Republic of Congo where the two singers hail from is neither a Commonwealth country nor a gazette for such a legal consideration. Ms Arika had sought damages and payment of royalties collected from the artist's musical works. She had accused the companies (defendants) of infringing the artist's economic and intellectual property rights.

But Justice Majanja ruled that Ms Arika had failed to define the specific intellectual property rights infringed and how the said rights had been violated.

Sam Eli Are Jedidah Vs Nyashinski & Tecno Mobile

Determination: On going

Also Read: Nigerian producer Sam Eli sues Nyashinski over song used in Tecno endorsement

Nigerian music producer Sam Eli instituted a civil suit No E617/2023 against rapper Nyashinski and Tecno Mobile over copyright infringement.

Sam accused Nyashinski of using the hit song ‘Wach Wach’ he produced to promote and endorse Tecno’s Camon 20 smartphone.

Sam argues that as the producer of Wach Wach, he is entitled to 50 per cent of the fortune made by Nyashinski from the brand ambassadorial deal he signed with Tecno.

In court documents Sam claims Nyashinski has denied him his fair share of the deal which is reportedly to be Sh12 million. The case will be mentioned on on April 12 .