RULING
1. The plaintiff filed a Notice of Motion application date 10th December, 2023 pursuant to the provisions of Sections 1, 1A, 3A & 63 (e) of the Civil Procedure Act, Cap 21 Laws of Kenya, Order 40 Rules 2 & 4 of the Civil Procedure Rules, 2010, Sections 31(1) & (3), 35(4), 35D & 37 of the Copyright Act, and Articles 20, 22(1), 23(1) & (3) & 40(5) of the Constitution of Kenya, 2010, seeking a temporary injunction to restrain the defendant and others from producing, creating, manufacturing, advertising, distributing, or selling any items that infringe on the plaintiff's copyright pending the hearing and determination of this suit. Additionally, the plaintiff seeks an Anton Piller order to allow their representatives to enter the defendant's business premises to inspect, search, collect, and seize any products related to the plaintiff's copyright.
2. The application is supported by an affidavit sworn on 10th December, 2023 by Paulina Raguz Macksoud, a Director of the plaintiff company who averred that the plaintiff is a renowned interior design company in Kenya founded in the year 2011. That the plaintiff specializes in creating and installing high-quality interior works and premier designs, including furniture, accessories, lighting, and décor, and that over the years, the company has built a strong reputation for exceptional design, superior craftsmanship, and enduring product value. She also averred that the plaintiff is committed to providing customers with the best locally made bespoke pieces, crafted by skilled artisans, welders, upholsterers, and tailors. She stated that the plaintiff’s designs are protected as "artistic works" under Section 2(1)(d) & (f) of the Copyright Act.
3. Ms Raguz deposed that the designs include photographs, artistic craftsmanship, pictorial woven tissues, and applied handicrafts and industrial art, all featured in the plaintiff's catalogue, which products are used in designing residences, corporate spaces, hotels, camps, and lodges, and were showcased in various showrooms such as Yaya Centre, The Hub, and the Westgate Mall. She contended that some showrooms were partially closed due to the damage and business reduction caused by the defendant. She deposed that the defendant worked as a trainee designer for the plaintiff from 2017 to October 2022, and that during that time, he implemented instructions from the plaintiff’s lead designers for the creation and production of various products. She further deposed that the defendant also supervised craftsmen, welders, and upholsterers to ensure proper execution of the management's design instructions on various projects.
4. She deposed that the defendant gained extensive knowledge of the plaintiff’s intellectual property including copyrights, industrial designs, utility models, trade secrets, and business processes, as well as access to their clientele. That during his employment, the defendant allegedly registered three business names - Zil Top Enterprises, HIQ Studio, and Kraft IT Creations, to undermine the plaintiff's business.
5. The plaintiff claims that the defendant is diverting its clients and appropriating its copyrighted work by reproducing, adapting, publishing, distributing, and communicating these works to the public without its authorization. That in view of the foregoing, the plaintiff engaged the services of Protection Masters Limited to investigate the defendant, with the outcome that the defendant was found operating through three business entities, and unlawfully appropriating the plaintiff's intellectual property for personal financial gain. The plaintiff claims this constitutes copyright infringement and intellectual property theft. As such, the plaintiff requests this Court to grant the orders being sought so as to prevent further breaches by the defendant, which would cause irreparable harm to the plaintiff that cannot be compensated in damages. Ms. Raguz averred that a raid was conducted in the defendant’s workshop in Ruiru, Kiambu County, on 25th May, 2022, to recover the plaintiff’s stolen raw materials, resulting in the arrest of an employee in possession of materials.
6. Ms Raguz contends that since the raid, the defendant has deleted some infringing products from his website and social media to conceal his actions. She also contends that the defendant still possesses incriminating material that he might destroy or hide before it can be discovered. She argued that an Anton Piller order is necessary to preserve evidence and allow the plaintiff to determine the full extent of the defendant’s actions.
7. The application was opposed vide a replying affidavit sworn on 22nd January, 2024 by Martin Wamai, the defendant herein. He averred that he has not infringed on any protected rights, arguing that no patent, Trademark, or copyright has been registered by the plaintiff. He states that the plaintiff's investigator posed as a potential client and asked for his project profile, which he provided without realizing it would be edited to support the plaintiff's allegations. The defendant asserts that the plaintiff's catalogue is an edited version of his own profile, which the plaintiff is alleging to have compiled and passing as its own. He further states that he possesses the original documents and raw data for the designs and photos of his projects, and that he has never assigned the rights of these works to the plaintiff.
8. The defendant confirmed his previous employment with the plaintiff and noted that he continued to refer clients to them even after leaving. He argued that the request to seize items from his workshop is baseless and malicious since the plaintiff already has the necessary evidence. He claimed the plaintiff sources most products from China, Dubai, and other shops, thus it cannot claim to have designed them, as shown on their website. The defendant asserted that the disputed works were created jointly by him and the plaintiff and that he has the right to display photos of Emaiyan Camp sent to him by the client for his profile. He urged the Court to take Judicial notice of the fact that the items in question are not novel, they have been in the market for ages, and are widely available in showrooms, roadside displays, houses, and online on various design websites.
9. He stated that the displayed items were either designed by him or derived from publicly available designs on the internet, such as Pinterest. He acknowledged registering HIQ Studios and Ziltop Enterprises and argued that no employment clause or law prohibited him from conducting business outside his employment with the plaintiff. The defendant argued that the case herein is being heard in the wrong forum, stating that any infringement claims should be addressed by the Industrial Property Tribunal. He contended that the products in question have been in the market without registered intellectual property protection, allowing any competitor, including himself, to reproduce their own versions without infringement. He also asserted his right to use his designs and prior works to market himself and earn a living, noting that he has not assigned any rights for these works to the plaintiff.
10. In a rejoinder, the plaintiff asserted that Section 26(1)(e) of the Copyright Act grants exclusive rights that prevent the defendant's alleged misconduct. The plaintiff denied altering the defendant's profile or using its content, emphasizing that the proprietary information in its catalogue constitutes original expressions owned by the plaintiff. The plaintiff stated that its catalogue contains proprietary information, which is the reason as to why they sought permission to present it in camera and refrain from public display on their website. Ms. Raguz acknowledged that some items sold by the plaintiff are imported. She alleged that while employed, the defendant established competing businesses and accessed proprietary and confidential information, including the company’s value proposition, business development strategy, client list, and contacts. This, according to the plaintiff, breached the defendant's fiduciary duty and allowed him to unlawfully exploit their trade secrets for personal gain.
11. The instant application was canvassed by way of written submissions. The plaintiff’s submissions were filed on 8th April, 2024 by the law firm of CM Advocates LLP, whereas the defendant’s submissions were filed by the law firm of Wangai Nyuthe & Company Advocates on 27th May, 2024.
12. Mr. Lusi, learned Counsel for the plaintiff relied on the Article 5(2) of the Berne Convention for the Protection of Literary and Artistic Works 1886, to which Kenya is a party since 11th June, 1993 and Section 22(5) of the Copyright Act and submitted that procuring a certificate of registration of copyright is purely voluntary, and does not divest the plaintiff of the lawfully conferred protection. He submitted that subject to the provisions of Section 23(1) of the Copyright Act, the subject upholstery, furniture, interior accessories, lighting fixtures and décor, are in law automatically entitled to copyright protection. Counsel referred to the provisions of Section 31(1)(b) of the Copyright Act and further submitted that since the defendant acknowledged having worked for the plaintiff from 2017 to 2022, and that the items in question were created or expressed artistically during various projects while he was employed at the plaintiff company, the plaintiff has copyright of any work made/created by the defendant in the course of his employment at the plaintiff company.
13. Mr. Lusi cited the provisions of Section 22(4) of the Copyright Act and argued that even if the plaintiff’s designs resembled existing ones, the resulting items are still eligible for copyright protection regardless of the artistic quality of the craftsmanship, handicraft, industrial art, or plaintiff’s collection and collation of pre-existing artistic work. He referred to the provisions of Sections 26(1) & 35 of the Copyright Act and asserted that in view of the evidence adduced by the plaintiff, the defendant is in law infringing on the plaintiff’s copyright.
14. Counsel relied on the case of Douglas v Hello! [2001] QB 967, 1011 (CA), [165], where Keene, LJ observed that breach of confidence is a developing area of the law, the boundaries of which are not immutable, but may change to reflect changes in society, technology and business practice. He also cited extracts from Prof Lionel Bently and Prof Brad Sherman book, Intellectual Property Law (4th Ed), Oxford [2014] at page 1137, and Article 39 of the Trade Related Aspects of Intellectual Property Rights (TRIPS), with Kenya being a signatory to the latter, and stated that breach of confidence is recognized in law as a unique cause of action that prohibits conduct where a party, having received information in a fiduciary capacity discloses or uses such information for personal benefit, so as to promote fair competition and a broader notion of good faith.
15. He further stated that the defendant during his employment accessed the plaintiff’s value proposition, business development strategy, client list, and contacts, and that he had admitted establishing a competing business while still employed, offering identical products, and using the plaintiff's images in his communications and media. Further, that the investigation report shows that the defendant diverted business and payments and targeted the plaintiff’s clients, which actions are deemed unlawful and constitute a breach of the plaintiff’s protection from breach of confidence. Mr. Lusi relied on the case of Jan Bolden Nielsen v Herman Philipus Steyn & 2 Others [2012] eKLR where the Court cited the case of Suleiman v Amboseli Resort Limited [2004] eKLR following Hoffman, J in Film Rover International v Cannon Film Sales Ltd [1986] 3 All ER TR at 780-781 and asserted that the plaintiff has demonstrated that it has a prima facie case.
16. He referred to Kuloba, Richard [1987] Principles of Injunctions, Oxford University Press, Nairobi, and Prof. Moni Wekesa and Prof. Ben Sihanya Intellectual Property Rights in Kenya (2009), Konrad Adenaeur Stiftung and argued that intellectual property being intangible assets, protecting creations and innovations of the mind, cannot be adequately compensated by way of damages. Counsel contended that the balance of convenience lies in favour of the plaintiff. Mr. Lusi relied on the case of Anton Piller KG v Manufacturing Process Limited [1976] Ch 55, cited by the Court in John Boniface Maina v Safaricom Limited [2013] eKLR and submitted that the plaintiff has made out a case for grant of an Anton Piller order.
17. Mr. Chengecha, learned Counsel for the defendant relied on the case of Giella v Cassman Brown & Company Limited [1973] EA 358 and the Court of Appeal decision in Mrao Ltd. v First American Bank of Kenya Limited and 2 others [2003] eKLR and submitted that the instant application does not meet the threshold for issuance of injunctive orders as set out therein. He contended that no evidence of any copyright infringement has been produced before this Court, and that the plaintiff has confirmed that it imports and outsources its items, thus the said items cannot be unique artistic work since they are widely available. Counsel stated that the plaintiff averred that the items in question are sold nationwide by various industry players.
18. He stated that since the items in question are not unique, the plaintiff does not stand to suffer any loss that cannot be adequately compensated in damages. Mr. Chengecha relied on the case of Anton Piller Kg v Manufacturing Processes Ltd & Others [1976] 1 ALL ER and submitted that the plaintiff has not satisfied the conditions for being granted an Anton Piller order, and in addition, the alleged infringement is before the Court, thus it cannot be destroyed.
ANALYSIS AND DETERMINATION.
19. On consideration of the application herein, the grounds on the face of the Motion and the affidavits filed in support thereof, the replying affidavit by the defendant and the written submissions by Counsel for the parties, the issues that arise for determination are –
i) Whether an order of temporary injunction should issue against the defendant; and
ii) Whether an Anton Piller order should issue in favour of the plaintiff.
Whether an order of temporary injunction should issue against the defendant.
20. An interlocutory injunction is a discretionary remedy that is granted on the basis of evidence and sound legal principles. The conditions for consideration in dealing with an application for interlocutory injunction were laid down by the Court in the case of, Giella v Cassman Brown & Company Limited [1973] EA 358, where the Court expressed itself as hereunder -
"Firstly, an applicant must show a prima facie case with a probability of success. Secondly, an interlocutory injunction will not normally be granted unless the applicant might otherwise suffer irreparable injury, which would not adequately be compensated by an award of damages. Thirdly, if the Court is in doubt, it will decide an application on the balance of convenience."
21. From the above decision, it is clear that in order for a Court to exercise its discretion and issue an order of injunction, an applicant has to first demonstrate that he has a prima facie case with a probability of success. A prima facie case with a probability of success was defined by the Court of Appeal in the case of Mrao Ltd v First American Bank of Kenya Ltd & 2 others [2003] eKLR as hereunder -
“So, what is a prima facie case" I would say that in civil cases it is a case in which on the material presented to the Court a tribunal properly directing itself will conclude that there exists a right which has apparently been infringed by the opposite party as to call for an explanation or rebuttal from the latter. A prima facie case is more than an arguable case. It is not sufficient to raise issues but the evidence must show an infringement of a right, and the probability of success of the Applicant’s case upon trial. That is clearly a standard, which is higher than an arguable case.”
22. The Copyright Act (No 12 of 2001) protects artistic and impression works, including drawings, maps, and plans. Section 22(5) of the said Act provides that the rights protected by copyright accrue to the author automatically on affixation of the work subject to copyright in a material form, and non-registration of any copyright work or absence of formalities, is not a bar to any claim from the author. In this case, the plaintiff’s claim is that the defendant has infringed on its copyright which includes photographs, artistic craftsmanship, pictorial woven tissues, and applied handicrafts and industrial art, which are protected artistic works under Section 2(1)(d) & (f) of the Copyright Act, by the defendant reproducing, adapting, publishing, distributing, and communicating these works to the public for personal financial gain, without the plaintiff’s authorization.
23. Section 22(1) of the Copyright Act states that artistic work is eligible for copyright protection. However, Section 22(3) specifies that in order for literary, musical, or artistic work to be eligible for copyright, sufficient effort must have been expended to give it original character, and it must be written down, recorded, or otherwise materialized. It is worthy noting that in as much as the defendant does not deny that the subject works are similar to those of the plaintiff, he avers that he has not infringed on any protected rights since no copyright has been registered. He claims that the plaintiff sources most of its products from China, Dubai, and other shops, thus it cannot claim to have designed them, as shown on their website.
24. On perusal of the plaintiff’s supplementary affidavit and submissions in support of the instant application, it is noteworthy that the plaintiff does not deny that some of the items it offers for sale are imported, this in my view means that the imported items do not amount to the plaintiff’s artistic works since they were pre-made by someone else or another entity. Section 22(3) provides that in order for artistic works to be eligible for copyright, sufficient effort must have been expended to give it original character. Therefore, the plaintiff bore the burden of demonstrating the original character of the works complained of, for the said works to be eligible for copyright. The plaintiff has produced its catalogue and design book showing floor plans, furniture design, and interior design work done, and claims that the light fixtures and décor items used in the interior design work by the defendant were made and/or produced by it.
25. The defendant on the other hand asserts that the items in question are not novel, as they have been in the market for ages, and are widely available in showrooms, roadside displays, houses, and online on various design websites. On perusal of the plaintiff’s catalogue and design book, it is impossible to establish which items are imported, which ones consist of the plaintiff’s artistic works, and which ones were procured from local artisans. The plaintiff claims that the defendant while employed, accessed proprietary and confidential information, including the company’s value proposition, business development strategy, client list, and contacts and thereafter diverted its clientele thus occasioning it losses. However, no evidence has been adduced in support of this allegation.
26. It is my considered view that it would be premature to make a finding on the issue of alleged infringement of copyright at this interlocutory stage of the case, without hearing the merits of the case. It is only after the hearing of the main suit and after parties have adduced evidence in support of and in opposition of the dispute herein that the Court will be in a position to determine whether the plaintiff owns the copyright to the items and/or works in question and whether there has been any breach and/or infringement by the defendant.
27. In the premise, I find that the plaintiff has not demonstrated that it has a prima facie case with probability of success.
28. In view of the foregoing, I am not persuaded that the plaintiff stands to suffer any loss and/or damage that cannot be compensated by an award in damages. Consequently, the balance of convenience tilts in favour of the defendant.
Whether an Anton Piller order should issue in favour of the plaintiff.
29. The principles guiding issuance of an Anton Piller order were long settled in the case of Anton Piller Kg v Manufacturing Processes Ltd and others [1976] 1 ALL ER where it was held that -
“There are three essential pre-conditions for the making of such order in my judgment. First, there must be an extremely strong prima facie case. Secondly, the damage, mental or actual, must be very serious for the Plaintiff. Thirdly, there must be clear evidence that the Defendants have in their possession incriminating documents or things, and that there is real possibility that they may destroy such material before any application inter parties can be made.”
30. Since the plaintiff has failed to demonstrate that it has a prima facie case to warrant this Court to exercise its discretion in its favour and issue an order of temporary injunction, guided by the three conditions laid down in the case of Anton Piller Kg v Manufacturing Processes Ltd and others (supra), it is needless to say that even its pursuit of an Anton Piller order would also fail. Furthermore, the evidence the plaintiff claims the defendant will destroy including photos from its website and social media pages, the defendant’s profile, and the raw material collected by the police who raided the defendant’s warehouse is already in the plaintiff’s possession. The investigator that the plaintiff engaged also handed over material to the plaintiff, as well as a report of its findings. This Court therefore finds that the plaintiff has not made out a case to warrant being granted an Anton Piller order.
31. In the circumstances, the instant application is devoid of merits. It is hereby dismissed with an order for costs to abide the outcome of the main suit.
It is so ordered.
DATED, SIGNED and DELIVERED at NAIROBI on this 19th day of July, 2024. Ruling delivered through Microsoft Teams Online Platform.
NJOKI MWANGI
JUDGE
In the presence of:
Mr. Lusi for the plaintiff/applicant
Mr. Chengecha for the defendant/respondent
Ms B. Wokabi – Court Assistant.
1. The plaintiff filed a Notice of Motion application date 10th December, 2023 pursuant to the provisions of Sections 1, 1A, 3A & 63 (e) of the Civil Procedure Act, Cap 21 Laws of Kenya, Order 40 Rules 2 & 4 of the Civil Procedure Rules, 2010, Sections 31(1) & (3), 35(4), 35D & 37 of the Copyright Act, and Articles 20, 22(1), 23(1) & (3) & 40(5) of the Constitution of Kenya, 2010, seeking a temporary injunction to restrain the defendant and others from producing, creating, manufacturing, advertising, distributing, or selling any items that infringe on the plaintiff's copyright pending the hearing and determination of this suit. Additionally, the plaintiff seeks an Anton Piller order to allow their representatives to enter the defendant's business premises to inspect, search, collect, and seize any products related to the plaintiff's copyright.
2. The application is supported by an affidavit sworn on 10th December, 2023 by Paulina Raguz Macksoud, a Director of the plaintiff company who averred that the plaintiff is a renowned interior design company in Kenya founded in the year 2011. That the plaintiff specializes in creating and installing high-quality interior works and premier designs, including furniture, accessories, lighting, and décor, and that over the years, the company has built a strong reputation for exceptional design, superior craftsmanship, and enduring product value. She also averred that the plaintiff is committed to providing customers with the best locally made bespoke pieces, crafted by skilled artisans, welders, upholsterers, and tailors. She stated that the plaintiff’s designs are protected as "artistic works" under Section 2(1)(d) & (f) of the Copyright Act.
3. Ms Raguz deposed that the designs include photographs, artistic craftsmanship, pictorial woven tissues, and applied handicrafts and industrial art, all featured in the plaintiff's catalogue, which products are used in designing residences, corporate spaces, hotels, camps, and lodges, and were showcased in various showrooms such as Yaya Centre, The Hub, and the Westgate Mall. She contended that some showrooms were partially closed due to the damage and business reduction caused by the defendant. She deposed that the defendant worked as a trainee designer for the plaintiff from 2017 to October 2022, and that during that time, he implemented instructions from the plaintiff’s lead designers for the creation and production of various products. She further deposed that the defendant also supervised craftsmen, welders, and upholsterers to ensure proper execution of the management's design instructions on various projects.
4. She deposed that the defendant gained extensive knowledge of the plaintiff’s intellectual property including copyrights, industrial designs, utility models, trade secrets, and business processes, as well as access to their clientele. That during his employment, the defendant allegedly registered three business names - Zil Top Enterprises, HIQ Studio, and Kraft IT Creations, to undermine the plaintiff's business.
5. The plaintiff claims that the defendant is diverting its clients and appropriating its copyrighted work by reproducing, adapting, publishing, distributing, and communicating these works to the public without its authorization. That in view of the foregoing, the plaintiff engaged the services of Protection Masters Limited to investigate the defendant, with the outcome that the defendant was found operating through three business entities, and unlawfully appropriating the plaintiff's intellectual property for personal financial gain. The plaintiff claims this constitutes copyright infringement and intellectual property theft. As such, the plaintiff requests this Court to grant the orders being sought so as to prevent further breaches by the defendant, which would cause irreparable harm to the plaintiff that cannot be compensated in damages. Ms. Raguz averred that a raid was conducted in the defendant’s workshop in Ruiru, Kiambu County, on 25th May, 2022, to recover the plaintiff’s stolen raw materials, resulting in the arrest of an employee in possession of materials.
6. Ms Raguz contends that since the raid, the defendant has deleted some infringing products from his website and social media to conceal his actions. She also contends that the defendant still possesses incriminating material that he might destroy or hide before it can be discovered. She argued that an Anton Piller order is necessary to preserve evidence and allow the plaintiff to determine the full extent of the defendant’s actions.
7. The application was opposed vide a replying affidavit sworn on 22nd January, 2024 by Martin Wamai, the defendant herein. He averred that he has not infringed on any protected rights, arguing that no patent, Trademark, or copyright has been registered by the plaintiff. He states that the plaintiff's investigator posed as a potential client and asked for his project profile, which he provided without realizing it would be edited to support the plaintiff's allegations. The defendant asserts that the plaintiff's catalogue is an edited version of his own profile, which the plaintiff is alleging to have compiled and passing as its own. He further states that he possesses the original documents and raw data for the designs and photos of his projects, and that he has never assigned the rights of these works to the plaintiff.
8. The defendant confirmed his previous employment with the plaintiff and noted that he continued to refer clients to them even after leaving. He argued that the request to seize items from his workshop is baseless and malicious since the plaintiff already has the necessary evidence. He claimed the plaintiff sources most products from China, Dubai, and other shops, thus it cannot claim to have designed them, as shown on their website. The defendant asserted that the disputed works were created jointly by him and the plaintiff and that he has the right to display photos of Emaiyan Camp sent to him by the client for his profile. He urged the Court to take Judicial notice of the fact that the items in question are not novel, they have been in the market for ages, and are widely available in showrooms, roadside displays, houses, and online on various design websites.
9. He stated that the displayed items were either designed by him or derived from publicly available designs on the internet, such as Pinterest. He acknowledged registering HIQ Studios and Ziltop Enterprises and argued that no employment clause or law prohibited him from conducting business outside his employment with the plaintiff. The defendant argued that the case herein is being heard in the wrong forum, stating that any infringement claims should be addressed by the Industrial Property Tribunal. He contended that the products in question have been in the market without registered intellectual property protection, allowing any competitor, including himself, to reproduce their own versions without infringement. He also asserted his right to use his designs and prior works to market himself and earn a living, noting that he has not assigned any rights for these works to the plaintiff.
10. In a rejoinder, the plaintiff asserted that Section 26(1)(e) of the Copyright Act grants exclusive rights that prevent the defendant's alleged misconduct. The plaintiff denied altering the defendant's profile or using its content, emphasizing that the proprietary information in its catalogue constitutes original expressions owned by the plaintiff. The plaintiff stated that its catalogue contains proprietary information, which is the reason as to why they sought permission to present it in camera and refrain from public display on their website. Ms. Raguz acknowledged that some items sold by the plaintiff are imported. She alleged that while employed, the defendant established competing businesses and accessed proprietary and confidential information, including the company’s value proposition, business development strategy, client list, and contacts. This, according to the plaintiff, breached the defendant's fiduciary duty and allowed him to unlawfully exploit their trade secrets for personal gain.
11. The instant application was canvassed by way of written submissions. The plaintiff’s submissions were filed on 8th April, 2024 by the law firm of CM Advocates LLP, whereas the defendant’s submissions were filed by the law firm of Wangai Nyuthe & Company Advocates on 27th May, 2024.
12. Mr. Lusi, learned Counsel for the plaintiff relied on the Article 5(2) of the Berne Convention for the Protection of Literary and Artistic Works 1886, to which Kenya is a party since 11th June, 1993 and Section 22(5) of the Copyright Act and submitted that procuring a certificate of registration of copyright is purely voluntary, and does not divest the plaintiff of the lawfully conferred protection. He submitted that subject to the provisions of Section 23(1) of the Copyright Act, the subject upholstery, furniture, interior accessories, lighting fixtures and décor, are in law automatically entitled to copyright protection. Counsel referred to the provisions of Section 31(1)(b) of the Copyright Act and further submitted that since the defendant acknowledged having worked for the plaintiff from 2017 to 2022, and that the items in question were created or expressed artistically during various projects while he was employed at the plaintiff company, the plaintiff has copyright of any work made/created by the defendant in the course of his employment at the plaintiff company.
13. Mr. Lusi cited the provisions of Section 22(4) of the Copyright Act and argued that even if the plaintiff’s designs resembled existing ones, the resulting items are still eligible for copyright protection regardless of the artistic quality of the craftsmanship, handicraft, industrial art, or plaintiff’s collection and collation of pre-existing artistic work. He referred to the provisions of Sections 26(1) & 35 of the Copyright Act and asserted that in view of the evidence adduced by the plaintiff, the defendant is in law infringing on the plaintiff’s copyright.
14. Counsel relied on the case of Douglas v Hello! [2001] QB 967, 1011 (CA), [165], where Keene, LJ observed that breach of confidence is a developing area of the law, the boundaries of which are not immutable, but may change to reflect changes in society, technology and business practice. He also cited extracts from Prof Lionel Bently and Prof Brad Sherman book, Intellectual Property Law (4th Ed), Oxford [2014] at page 1137, and Article 39 of the Trade Related Aspects of Intellectual Property Rights (TRIPS), with Kenya being a signatory to the latter, and stated that breach of confidence is recognized in law as a unique cause of action that prohibits conduct where a party, having received information in a fiduciary capacity discloses or uses such information for personal benefit, so as to promote fair competition and a broader notion of good faith.
15. He further stated that the defendant during his employment accessed the plaintiff’s value proposition, business development strategy, client list, and contacts, and that he had admitted establishing a competing business while still employed, offering identical products, and using the plaintiff's images in his communications and media. Further, that the investigation report shows that the defendant diverted business and payments and targeted the plaintiff’s clients, which actions are deemed unlawful and constitute a breach of the plaintiff’s protection from breach of confidence. Mr. Lusi relied on the case of Jan Bolden Nielsen v Herman Philipus Steyn & 2 Others [2012] eKLR where the Court cited the case of Suleiman v Amboseli Resort Limited [2004] eKLR following Hoffman, J in Film Rover International v Cannon Film Sales Ltd [1986] 3 All ER TR at 780-781 and asserted that the plaintiff has demonstrated that it has a prima facie case.
16. He referred to Kuloba, Richard [1987] Principles of Injunctions, Oxford University Press, Nairobi, and Prof. Moni Wekesa and Prof. Ben Sihanya Intellectual Property Rights in Kenya (2009), Konrad Adenaeur Stiftung and argued that intellectual property being intangible assets, protecting creations and innovations of the mind, cannot be adequately compensated by way of damages. Counsel contended that the balance of convenience lies in favour of the plaintiff. Mr. Lusi relied on the case of Anton Piller KG v Manufacturing Process Limited [1976] Ch 55, cited by the Court in John Boniface Maina v Safaricom Limited [2013] eKLR and submitted that the plaintiff has made out a case for grant of an Anton Piller order.
17. Mr. Chengecha, learned Counsel for the defendant relied on the case of Giella v Cassman Brown & Company Limited [1973] EA 358 and the Court of Appeal decision in Mrao Ltd. v First American Bank of Kenya Limited and 2 others [2003] eKLR and submitted that the instant application does not meet the threshold for issuance of injunctive orders as set out therein. He contended that no evidence of any copyright infringement has been produced before this Court, and that the plaintiff has confirmed that it imports and outsources its items, thus the said items cannot be unique artistic work since they are widely available. Counsel stated that the plaintiff averred that the items in question are sold nationwide by various industry players.
18. He stated that since the items in question are not unique, the plaintiff does not stand to suffer any loss that cannot be adequately compensated in damages. Mr. Chengecha relied on the case of Anton Piller Kg v Manufacturing Processes Ltd & Others [1976] 1 ALL ER and submitted that the plaintiff has not satisfied the conditions for being granted an Anton Piller order, and in addition, the alleged infringement is before the Court, thus it cannot be destroyed.
ANALYSIS AND DETERMINATION.
19. On consideration of the application herein, the grounds on the face of the Motion and the affidavits filed in support thereof, the replying affidavit by the defendant and the written submissions by Counsel for the parties, the issues that arise for determination are –
i) Whether an order of temporary injunction should issue against the defendant; and
ii) Whether an Anton Piller order should issue in favour of the plaintiff.
Whether an order of temporary injunction should issue against the defendant.
20. An interlocutory injunction is a discretionary remedy that is granted on the basis of evidence and sound legal principles. The conditions for consideration in dealing with an application for interlocutory injunction were laid down by the Court in the case of, Giella v Cassman Brown & Company Limited [1973] EA 358, where the Court expressed itself as hereunder -
"Firstly, an applicant must show a prima facie case with a probability of success. Secondly, an interlocutory injunction will not normally be granted unless the applicant might otherwise suffer irreparable injury, which would not adequately be compensated by an award of damages. Thirdly, if the Court is in doubt, it will decide an application on the balance of convenience."
21. From the above decision, it is clear that in order for a Court to exercise its discretion and issue an order of injunction, an applicant has to first demonstrate that he has a prima facie case with a probability of success. A prima facie case with a probability of success was defined by the Court of Appeal in the case of Mrao Ltd v First American Bank of Kenya Ltd & 2 others [2003] eKLR as hereunder -
“So, what is a prima facie case" I would say that in civil cases it is a case in which on the material presented to the Court a tribunal properly directing itself will conclude that there exists a right which has apparently been infringed by the opposite party as to call for an explanation or rebuttal from the latter. A prima facie case is more than an arguable case. It is not sufficient to raise issues but the evidence must show an infringement of a right, and the probability of success of the Applicant’s case upon trial. That is clearly a standard, which is higher than an arguable case.”
22. The Copyright Act (No 12 of 2001) protects artistic and impression works, including drawings, maps, and plans. Section 22(5) of the said Act provides that the rights protected by copyright accrue to the author automatically on affixation of the work subject to copyright in a material form, and non-registration of any copyright work or absence of formalities, is not a bar to any claim from the author. In this case, the plaintiff’s claim is that the defendant has infringed on its copyright which includes photographs, artistic craftsmanship, pictorial woven tissues, and applied handicrafts and industrial art, which are protected artistic works under Section 2(1)(d) & (f) of the Copyright Act, by the defendant reproducing, adapting, publishing, distributing, and communicating these works to the public for personal financial gain, without the plaintiff’s authorization.
23. Section 22(1) of the Copyright Act states that artistic work is eligible for copyright protection. However, Section 22(3) specifies that in order for literary, musical, or artistic work to be eligible for copyright, sufficient effort must have been expended to give it original character, and it must be written down, recorded, or otherwise materialized. It is worthy noting that in as much as the defendant does not deny that the subject works are similar to those of the plaintiff, he avers that he has not infringed on any protected rights since no copyright has been registered. He claims that the plaintiff sources most of its products from China, Dubai, and other shops, thus it cannot claim to have designed them, as shown on their website.
24. On perusal of the plaintiff’s supplementary affidavit and submissions in support of the instant application, it is noteworthy that the plaintiff does not deny that some of the items it offers for sale are imported, this in my view means that the imported items do not amount to the plaintiff’s artistic works since they were pre-made by someone else or another entity. Section 22(3) provides that in order for artistic works to be eligible for copyright, sufficient effort must have been expended to give it original character. Therefore, the plaintiff bore the burden of demonstrating the original character of the works complained of, for the said works to be eligible for copyright. The plaintiff has produced its catalogue and design book showing floor plans, furniture design, and interior design work done, and claims that the light fixtures and décor items used in the interior design work by the defendant were made and/or produced by it.
25. The defendant on the other hand asserts that the items in question are not novel, as they have been in the market for ages, and are widely available in showrooms, roadside displays, houses, and online on various design websites. On perusal of the plaintiff’s catalogue and design book, it is impossible to establish which items are imported, which ones consist of the plaintiff’s artistic works, and which ones were procured from local artisans. The plaintiff claims that the defendant while employed, accessed proprietary and confidential information, including the company’s value proposition, business development strategy, client list, and contacts and thereafter diverted its clientele thus occasioning it losses. However, no evidence has been adduced in support of this allegation.
26. It is my considered view that it would be premature to make a finding on the issue of alleged infringement of copyright at this interlocutory stage of the case, without hearing the merits of the case. It is only after the hearing of the main suit and after parties have adduced evidence in support of and in opposition of the dispute herein that the Court will be in a position to determine whether the plaintiff owns the copyright to the items and/or works in question and whether there has been any breach and/or infringement by the defendant.
27. In the premise, I find that the plaintiff has not demonstrated that it has a prima facie case with probability of success.
28. In view of the foregoing, I am not persuaded that the plaintiff stands to suffer any loss and/or damage that cannot be compensated by an award in damages. Consequently, the balance of convenience tilts in favour of the defendant.
Whether an Anton Piller order should issue in favour of the plaintiff.
29. The principles guiding issuance of an Anton Piller order were long settled in the case of Anton Piller Kg v Manufacturing Processes Ltd and others [1976] 1 ALL ER where it was held that -
“There are three essential pre-conditions for the making of such order in my judgment. First, there must be an extremely strong prima facie case. Secondly, the damage, mental or actual, must be very serious for the Plaintiff. Thirdly, there must be clear evidence that the Defendants have in their possession incriminating documents or things, and that there is real possibility that they may destroy such material before any application inter parties can be made.”
30. Since the plaintiff has failed to demonstrate that it has a prima facie case to warrant this Court to exercise its discretion in its favour and issue an order of temporary injunction, guided by the three conditions laid down in the case of Anton Piller Kg v Manufacturing Processes Ltd and others (supra), it is needless to say that even its pursuit of an Anton Piller order would also fail. Furthermore, the evidence the plaintiff claims the defendant will destroy including photos from its website and social media pages, the defendant’s profile, and the raw material collected by the police who raided the defendant’s warehouse is already in the plaintiff’s possession. The investigator that the plaintiff engaged also handed over material to the plaintiff, as well as a report of its findings. This Court therefore finds that the plaintiff has not made out a case to warrant being granted an Anton Piller order.
31. In the circumstances, the instant application is devoid of merits. It is hereby dismissed with an order for costs to abide the outcome of the main suit.
It is so ordered.
DATED, SIGNED and DELIVERED at NAIROBI on this 19th day of July, 2024. Ruling delivered through Microsoft Teams Online Platform.
NJOKI MWANGI
JUDGE
In the presence of:
Mr. Lusi for the plaintiff/applicant
Mr. Chengecha for the defendant/respondent
Ms B. Wokabi – Court Assistant.