Quiet Garden Publishing Limited v Lutaya (Civil Suit 912 of 2021) [2024] UGCommC 118 (25 March 2024)

## THE REPUBLIC OF UGANDA

## IN THE HIGH COURT OF UGANDA AT KAMPALA

#### (CoMMERCTAL DTVTSTON)

# CIVIL SUIT NO. O9L2 OF 2O2L

# QUIET GARDEN PUBLISHING LTD (Suing through its Attorney NASSER. W. I(AKUMBA)::::::::::::::::::::::::::::::::::::::::::::: PLAINTIFF

## VERSUS

## GOSPEL LUTAAYA

(T/A CITY PEARL BOOKSHOP): : : : : : : : : : : : : : : : : : : : : : : : : : : : : : : : DEFENDANT Before the Hon. Lady Justice Patricia Kahigi Asiimwe

# Judgment

Introduction

- The Plaintiff is a private limited liability company suing through its attorney Nasser W. Kakumba. The Plaintiff carries on the business of publishing, distributing, marketing, and generally dealing in books. The Defendant is a male adult Ugandan trader who runs a bookshop known as City Pearl Bookshop. I - The Plaintiff brought the suit seeking compensation of UGX. I0O,OOO,OOO for the copyright infringement of the book "Grief Child", general damages for inconvenience, punitive damages for breach, a permanent injunction restraining the Defendant from further infringement, an account in respect of such infringement, plus costs of the suit. 2

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# The Plaintiff"s case

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- 3 The Plaintiff stated that it has exclusive rights to publish, market and distribute the literary work in the book titled "Grief Child" authored by a Ghanaian author, Lawrence Darmani. "Grief Child" is a literature book approved by the National Curriculum Development Centre (NCDC) and the Ministry of Education. - That on l"t August 2019, the Plaintiff was granted exclusive rights to publish, market and distribute the book "Grief Child" by the author of the book and the original publisher, Step Publishers Limited. 4 - The Plaintiff alleges that sometime between 2079 to February 2O2l , the Plaintiff discovered that the Defendant was engaged in producing counterfeit copies, making duplicate copies, marketing and distributing the book "Grief Child" by Lawrence Darmani. 5 - That around February 2019, it lodged a complaint of copyright infringement at Central Police Station Kampala. A search was carried out at the Defendant's bookshop by police officers, where 20 green cover copies, 32 purple copies of the book "Grief Child" and 3O copies of the book "Heather Soothers" were seized. 6 - The Plaintiff stated that it had made different versions of the book that is a purple one with a hologram, a green one with an embossed title, and the logo of Step Publishers and quiet garden publishing. The Defendant had mimicked the hologram which is a security feature used to distinguish the original books from pirated books.

- 8. The Plaintiff claimed that it targeted a market of over 80,000 who study literature annually since it is a literature book. The Plaintiff estimated sales per book to be between UGX. 15,000 and UGX. 20,000. - 9. The sales were frustrated and stagnated by the actions of the Defendant, who was selling fake copies for as low as UGX. 10,000. - The Plaintiff's publishing, marketing, and book distribution 10. business is renowned and over the years, the Plaintiff has received different tender awards, including those from the National Curriculum Ministry of Education and the Development Centre. - The Plaintiff stated that it did not enjoy the business benefits $11.$ from the award of the National Curriculum Development Centre to publish, market and distribute the book "Grief Child" because of the unlawful reproduction, marketing and distribution of fake copies by the Defendant, who employed several agents across the country to aggressively market counterfeit copies. - That the Defendant has no license or approval to reproduce, 12. distribute or market the book "Grief Child". The defendant has continuously infringed the copyright of the book "Grief Child" by Lawrence Darmani by illegally producing, distributing, and marketing the book.

The Defendant's case

13. The Defendant in the written statement of defence stated that he is just a bookseller and does not engage in the business or craft of producing, reproducing, printing, publishing and

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marketing any book/literary works. He denied the allegation that he reproduced or altered any book/ literary works belonging to the Plaintiff.

He also stated that he has never been found in possession of $14.$ any literary works/books of the Plaintiff.

# Representation

The Plaintiff was represented by M/s Bikadho Associated 15. Advocates and the Defendant was represented by $M/s$ DIT Advocates. Both parties filed written submissions.

# Issues

- 16. The issues for resolution are as follows: - Whether the Defendant infringed the $\mathbf{I}_{\mathbf{L}}$ Plaintiff's copyright - $\mathbf{H}$ . Whether there are any remedies available to the Plaintiff

# Evidence

The Plaintiff presented three witnesses, PW1-Asiimwe Benson, 17. a Detective Sergeant from Uganda Police attached to Kabale Police Station. PW2-Benson Okello, a Police Officer from Uganda Police, PW3 –Nasser Kakumba. The Defendant was the only witness for his case.

# The Plaintiff's submissions

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The Plaintiff's Counsel submitted that it is trite law that the 18. owner of the exclusive copyright license has the right to control the reproduction, printing and distribution of his books. Therefore, any person who wished to produce copies or distribute the book "Grief Child" should have done so with express permission and authority from the Plaintiff company. Counsel relied on the case of Lamwaka versus Ms Mukono Bookshop Printing and Publishing Co. Ltd Civil Suit No. 326 of 2014 where court held that copyright shall be deemed to be infringed by any person who distributes either for purposes of trade or such an extent as to affect prejudicially the owner of the copyright and that the owner of copyright has economic rights over the protected works.

The Plaintiff relied on the evidence of PW1, a police officer 19. attached to the Kabale Police Station who testified that he investigated a case of copyright infringement of "Grief Child" books in Kabale, conducted a search in a bookshop and recovered 11 copies of fake books. The Plaintiff also relied on the testimony of PW2 and PW3 who testified that after reporting to the Police Station, a search was made at the shop of the Defendant where 20 green copies of the said book and 32 purple copies were recovered and were identified as fake copies.

### The Defendant's submission

- 20. Counsel for the Defendant submitted that the test of copyright infringement as it was laid down in the case of Zeenode Limited *Versus the Attorney General, Makerere University and Okuonzi* John Miscellaneous Application No. 0347 of 2021 requires the court to compare the works of the opposite parties. He submitted that the court has to compare the original work against the infringing materials to ascertain the similarity. He submitted that in the instant case, the Plaintiff alleged that 82 copies of the infringing material that were allegedly recovered were never exhibited in this court for comparison. - 21. Counsel further submitted that documents must be proved by primary evidence except in the cases mentioned in Section 64 of the Evidence Act. He stated that the said matter does not fall within the established exceptions in section 64. The Defendant's Counsel also relied on Section 101(1) and (2) of the Evidence

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Act to the effect that whoever a-lleges a fact must prove it. Counsel concluded that the Plaintiff had not proved its case.

# Resolution

lssue I Whether the Defendant infinged on the Plaintiff s copgright

- 22. According to Halsbury's Laws of England 4fr Edition Vol. 9(2) Page 1O para 3, copyright is defined as the exclusive right to do, and to authorize others to do certain acts in relation to literary, dramatic and musical works into artistic works and in relation to sound recordings, films, broadcasts, cable programs and published editions of works. - 23. Section 5 (1) of the Copgight & Neighbouring Rights Act 2006 lists the works eligible for copyright. Under section 5 (1) (a) these include books. - 24. Section 46 of the Copyight and Neighboring Rights Act provides that infringement of copyright occurs where, without a valid transfer, licence, assignment or other authorization, a person deals with any work or performance contra-q/ to the permitted free use by reproducing, duplicating, distributing in Uganda by way of sale, exhibiting to the public for commercial purposes by way of broadcast, public performance or otherwise. - 25. According to Section 46 of the Copyight and Neighboing Rights Act, each of those acts such as printing, reproducing, distributing constitutes copyright infringement. Proof of one independent acts is sufficient for a case of copyright infringement.

A-

- 26. In the United Kingdom case of **Sawkins versus Hyperion** Records Ltd [2005] 3 ALLER 636, the Court set the ingredients that need to be looked at in a copyright action, that is: - a) Whether the work is one in which copyright subsists under the law; - b) Who is the author and owner of the relevant copyright; and - c) Whether the work has been substantially copied without the consent of the owner. - While resolving this matter to ascertain if there was copyright 27. infringement, this court will consider the three parameters listed above.

*Whether the work is one in which copyright subsists under the law*

- 28. Section 4 of the *Copyright and Neighboring Rights Act*, provides for the protection of original works created by a physical person or institution that are reduced to material form. Such works include books. (See section 5 (1) (a) Copyright and Neighboring *Rights Act.)* - 29. In the instant case, the Plaintiff has proved that the literary works published in a book titled "Grief Child" by Lawrence Darmani qualify as a book eligible for copyright protection as an original story by Lawrence Darmani and reduced into material form. The material form is a printed book. - 30. PW 3 testified that the book in issue was authored by a Ghanaian Lawrence Darmani and its publisher is Step Publishers. The book was submitted in evidence as $PE$ 4. This evidence was not controverted.

$\mathcal{A}$ - 31. Under Section 81 of the Copyright and Neighboring Rights Act, a copyright owner who is not a citizen or resident of Uganda shall be protected under this Act if the work was first published in a country which is a member of World Intellectual Property Africa Organisation(WIPO), Region Intellectual Property The United Organisation (ARIPO). Nations Educational Scientific and Cultural Organisation (UNESCO), or The World Trade Organisation. - I have reviewed the 2 original copies of "Grief Child" marked PE4 32. and PE5 and noted that "Grief Child" was first published in 1991 by Lion Publishing Oxford, UK. The United Kingdom is a member of the WIPO as well as the WTO. Therefore, the author's works are protected under the Copyright and Neighboring Rights Act, 2006. - Since the book "Grief Child" is protected under Ugandan's 33. Copyright law, the author and other assignees can enjoy the rights that are conferred to them by the Copyright and Neighboring Rights Act, 2006.

*Who is the author and owner of the relevant copyright?*

- 34. The Plaintiff informed this court that it is not the author of the book "Grief Child"; however, it was given exclusive rights to publish, market, sell, reproduce and distribute the novels. - Under section 35 of the Copyright and Neighboring Rights Act, 35. "Any contract relating to the exploitation of the author's rights or the performer's rights shall be in writing and signed or marked by the parties to the contract." - 36. Under section 36 (1) of the Copyright and Neighboring Rights Act, an author, may transfer in a publishing contract, the right


to publish his or her work in a material form and distribute that work to the public. The Plaintiff adduced in evidence (PE 6) a contract where the author and the publisher of the book transferred to the Plaintiff the rights to publish, market, sell, reproduce, sublicense, and distribute the book in Uganda and East Africa. Under clause 1.1 of the agreement, the Plaintiff was given the right to invoke legal action in Uganda to protect and prevent the infringement of its rights. The author also assigned the rights, title, and interest in the book in East Africa to the Plaintiff. The term of the contract runs from 2019 to 2025.

37. The court finds that the publication agreement and copyright license dated 1<sup>st</sup> August 2019 meets the requirements of Sections 35 and 36 of the Copyright and Neighboring Rights Act. Therefore the Plaintiff has been given rights by the author and publisher to publish and distribute the book Grief Child in Uganda.

*Whether the work has been substantially copied without the consent* of the owner

- 38. Prof. Bakibinga D and Dr. Kakungulu M, in **Property Law in East Africa**, 2016, Law Africa, page 47, state that to ascertain infringement of copyright the issues to address are whether there has been a copying and whether the copying constitutes a substantial taking of the Plaintiff's work. - 39. Under the substantiality test, for one to prove infringement, the Plaintiff has to prove that either the whole or a substantial part of the works in issue was copied by the Defendant. (see Copyright Law - Principles, Practice & Procedure, $2^{nd}$ Edition by Bankole Sodipo at page 172

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40. In the English case of **Francis Day and Hunter, Limited and** Twentieth Century Fox Corporation Limited & others [1963] Ch.587 at p.623, cited in *Copyright Law – Principles*, *Practice* & *Procedure,* $2^{nd}$ *Edition by Bankole Sodipo* it was held as follows:

> ... It is well established that to constitute infringement of copyright in any literary, dramatic or musical work, there must be present two elements. Firstly, there must be sufficient objective similarity between the infringing work and the copyright work or a substantial part thereof, for the *former to be properly described, not necessarily as identical with but as a reproduction or adaptation of the latter.* Secondly, the copyright work must be the source from which the infringing work is derived.

- *Section 45(5) of Uganda's Copyright and Neighboring Rights Act,* 41. recognizes that substantial copying test. It provides that "Infringement is not actionable unless the infringement involves the whole piece of work or a substantial part of the work." - 42. In Uganda the substantial similarity test was explained in the case of Zeenobe Limited versus The Attorney General and 2 Others, Miscellaneous Application No.0347 of 2021, Mubiru J, held that "The general test for copyright infringement is whether the accused work is so similar to the applicant's work that an ordinary reasonable person would conclude that the respondent unlawfully appropriated the applicant's protectable expression by taking out of it, material substance and value." The learned judge further explained that two works would be regarded as substantially similar if the ordinary observer unless he or she set out to detect the disparities, would be disposed to overlook them and regard their aesthetic appeal as the same.

- From the pleadings, the Plaintiff raises two incidents of 43. copyright infringement. The first incident is the Catholic bookshop incident where it is alleged that "Grief Child" books were recovered. The $2<sup>nd</sup>$ one is the City Pearl Bookshop search, where it was alleged that 20 green copies of the said book and 32 purple copies of the book "Grief Child" were found. The Plaintiff further alleges that copies were also retrieved. - I note that on the alleged infringement at the Catholic bookshop 44. in Kabale, the Plaintiff availed two eyewitnesses, PW1- Asiimwe Benson, a Detective Sergeant from Uganda Police and PW3-Nasser Kakuma. Both witnesses testified about a search being conducted and books being retrieved on 11<sup>th</sup> March 2011. They informed the court that the person they found at the book shop, Sister Scovia, informed them that the Defendant was the one who supplied her with the books. PW 1 testified that 11 copies of "Grief Child" books were retrieved. - PW1 and PW2 both testified that they examined the original 45. books and the ones recovered, and found that the original copies of the "Grief Child" novel had an embossed title that could be seen and felt when touched with a clear print inside, unlike the duplicates whose print was faint and the title was not embossed. PW1 tendered in a police report marked PE8 where it was stated that 11 copies of the book Grief Child were retrieved. - 46. PW 2-Benson Okello testified that Nasser. W. Kakumba PW3 asked him to investigate City Pearl Bookshop for copyright infringement. He testified that he visited the Defendant's shop behind Cairo Bank; he identified it from the signpost placed on the shop building. He testified that he made an order for a book under the name Rev. Isoke, and he was issued with an invoice. He informed PW3 that he had been issued an invoice, and they

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decided to open up a case for copyright infringement with the Police. He testified that on 1<sup>st</sup> February 2021, when he went to pick up the books as per the invoice order, the police were on standby. The Police officers accompanied him to City Pearl Bookshop, and a search was conducted.

- PW 2-Benson Okello testified that fake copies of the book "Grief 47. Child" were recovered from the Defendant's shop. He testified that he examined the original copies of the "Grief Child" novel and the seized copies; he explained that the original copies had an embossed title, which could be seen and felt when touched with a clear print inside unlike the duplicates whose print was faint and the title was not embossed. - PW3 Nasser Kakumba testified that he works with Quiet 48. Gardens Publishing. He stated that Quiet Gardens Publishing was given exclusive rights in August 2019 to publish, market and distribute the literary work in the book "Grief Child" authored by a Ghanaian author, Lawrence Darmani. - PW 3 stated that when he found out that the Defendant was 49. marketing and distributing "Grief Child" books, he lodged a compliant of copyright infringement at Kampala Central Police Station. He testified that on $2^{nd}$ February 2021, a police search was conducted at the City Pearl Bookshop, where 20 green cover copies, 32 purple copies of the book "Greif Child" and 30 copies of "Heart Soothers" were recovered. He explained that Heart Soothers is another book that he distributes, but the Defendant still had pirated copies of that book. He testified that he had suffered financial loss resulting from the Defendant's infringement. - I note that the Plaintiff presented three witnesses to the court 50. to prove that the Defendant had copied a substantial part of its

work. The witnesses told the court that they had looked at the original books and compared them with the recovered books and reached a conclusion that the books were fake. However, none of the infringing books were adduced in court as evidence.

- 51. Under Section 60 of the Evidence Act, the contents of documents may be proved either by primary or by secondary evidence. Under section 61 Primary evidence means the document itself produced for the inspection of the court. Section 62 of the same Act provides for what constitutes secondary evidence. Section $64(1)$ provides for situations where secondary evidence shall be admissible. Under section $62(e)$ oral accounts of the contents of a document given by some person who has himself or herself seen it is admissible evidence. - 52. According to Sodipo B in his book Copyright Law -**Principles, Practice & Procedure**, 2<sup>nd</sup> Edition at page 173, in order to meet the similarity test, the original work must be compared with the alleged infringed work. - While the above provision provides for situations where oral 53. evidence such as the evidence of PW 1 and PW 2 may be admissible. In cases of infringement, court must compare the original work with the infringed work. - 54. In the of $\mathbf{N}\mathbf{M}\mathbf{J}$ Entertainment versus **RLG** case Communication and others 2017 DLHC 3673 cited in Intellectual Property Law in Ghana by Dr. Chris Adomaka-Kwakye et al at page $65$ , it was held that the claimant in copyright cases must provide evidence to show that there are striking similarities between the two works to help the court determine whether the Plaintiff's works was created earlier in time

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- 55. Under section 101 $(1)$ of the Evidence Act whoever desires any court to give any judgment as to any legal right or liability dependent on the existence of facts which he asserts, must prove that those facts exist. - In this case the Plaintiff fell short of proving that there was an 56. infringement of the copyright by failing to produce the infringing book in evidence. - Court cannot apply the similarity test without comparing the 57. original work with the infringed work. In such cases, the court has to point out the similarities between the two works in order to come up with a decision. Unfortunately, in this case court has not been given the evidence required to carry out the similarity test. Consequently, I find that there is insufficient evidence on record to prove copyright infringement by the Defendant. - Since issue number 1 is answered in the negative, I find that 58. the Plaintiff does not have the right to the remedies sought. The suit is therefore dismissed with costs to the Defendant.

## Dated this 25<sup>th</sup> day of March 2024.

Patricia Kahigi Asiimwe Judge Delivered on ECCMIS