Copyright infringement, particularly within the copyright domain covering literary and artistic works, is a critical legal issue in Tanzania despite established intellectual property protections and enforcement mechanisms. In this article, we will briefly explore the infringement of intellectual property under the copyright domain, which covers literary and artistic works, by focusing on the landmark case between Tanzania-China Friendship Textile Company Ltd v. Nida Textile Mills (T) Ltd (Civil Case 106 of 2020) [2022] TZHC 13134 (28 September 2022). In particular, from this case, infringement of copyright is considered to arise where a party, who is not the owner of the content, exploits the content of another without the content owner's permission. It entails improperly copying or creating work based on content created by someone else. This analysis delves into specific instances of infringement, exploring how the legal system responds and the effectiveness of these measures in safeguarding creators' rights. Through this case study, we aim to uncover the gaps between legislation and enforcement, providing insights into the complexities of copyright protection in a rapidly evolving digital landscape.

Background

The gist of the case is that Tanzania-China Friendship Textile Company Ltd (the Plaintiff) raised a substantial claim of copyright infringement against Nida Textile Mills (T) Ltd (the Defendant), alleging that the Defendant had stolen its artistic works, specifically design numbers and patterns used for printed fabrics commonly known as "khanga" and "vitenge". The designs of fabrics flooded the market by the Defendant were purportedly identical or substantially similar to those owned by the Plaintiff.

The Defendant argued that the artistic works rightfully belonged to it, maintaining that some of them were either locally crafted by skilled artists or acquired through legitimate means, including the acquisition of Sungura Textile Mills in 2003. Evidence supporting this assertion was unfortunately lost during a devastating flood that swept through its factory and office premises in 2011.

Rightful owner of the contested artistic work

In proving ownership of the artistic work that is the subject of the infringement claim, the Plaintiff contended that it was the proprietor of the contested work and further presented several copyright clearance certificates issued by the Copyright Society of Tanzania (COSOTA) to convey its exclusive ownership of the works in question. The Plaintiff further argued that its ownership extended to the copyright of its artistic works which included the exclusive right to use the trade name "URAFIKI" or "RAFIKI" which was included in one of the Defendant's productions.

The Defendant countered this claim by asserting that the rights in question were not infringed. Basing its argument on the timing of registration of the Plaintiff's works, the Defendant argued that the Plaintiff's rights were registered after the Defendant had already produced and distributed the fabrics in question. The Defendant relied on sections 5(1)(2) and 15(1) of the Copyright and Neighbouring Rights Act, Cap. 218 RE 2002 (the Copyright Act) and rule 6 of the Copyright and Neighbouring (Registration of Members and their Works) Regulations, 2005, asserting that protection of literary or artistic work commences upon registration of the copyright. According to the Defendant, the Plaintiff's rights were registered subsequent to the Defendant's production, and therefore infringement could not have occurred.

In deciding the question of ownership of artistic works, the court held that the Plaintiff had proved ownership of the artistic works as its work was registered and had established that the works originally belonged to it. The court relied on the case of RSA Ltd v. Hanspaul Automech Ltd & Another, HC-Comm. Case No. 160 of 2014 (unreported), where it was held that:

"For a work to be protected by copyright, under section 5 of the Copyright and Neighbouring Rights Act [Cap. 218 RE 2002], the plaintiff has to prove that the work is original and belongs to him. That means, it has to be original in the real sense and the plaintiff has to be the creator of the real sense."

It is noteworthy that the Defendant did not prove the creation of the artistic works. The question that begs an answer is whether the court's decision would have been different if the Defendant had proved that it was the original creator of the contested work.

In its finding, the court affirmed that copyright protects original works of authorship the moment they are fixed in a tangible form of expression. However, the decision placed more emphasis on the Plaintiff's registration with COSOTA being sufficient to prove ownership. This position by the court begs for clarity in view of the Berne Convention for the Protection of Literary and Artistic Works (1886) (Berne Convention), an international treaty to which Tanzania is a signatory, which establishes that copyright work is protected as soon as it is manifested in a tangible form of expression. In terms of the Berne Convention, registration is not required for copyright protection to exist and thus mandates that member countries must provide certain levels of copyright protection for works created by the citizens of other member states. This position is reflected at the national level through section 5(1) of the Copyright Act, which states that authors of original literary and artistic works are entitled to copyright protection simply by virtue of creating the work. This means that copyright protection accrues to the author of the original work from the moment of creation.

As such, even though registration plays a crucial role in the protection and enforcement of copyright, it is not a prerequisite for copyright protection. Rather, registration serves as formal evidence of ownership during disputes and ensures that creators can earn income from their efforts.

Determination of copyright infringement

The Plaintiff contended that the Defendant chartered into its artistic work's territory and made the most of it to the Plaintiff's detriment, while the Defendant argued that the Plaintiff's khanga bore different colours and had a different trademark from the Defendant's own artistic work. The Defendant further contended that, since the Plaintiff did not produce hand-made drawings or computerised drawings, none existed and the same were not among the works registered with COSOTA.

In determining whether there was infringement, the court echoed Lord Reid in Ladbroke (Football) Ltd v. William Hill (Football) Ltd [1964] 1 WLR 273 who stated that "infringement 'substantially' depends more on the quality than the quantity of what has been taken", and that it is when the copyrighted work is reproduced, distributed, performed, publicly displayed or made into derivative work without the permission of the copyright owner that an infringement may be alleged. This means that the claimant in an action for infringement must establish that the defendant has copied the plaintiff's form of expression and not his ideas.

The court further referred to the case of Designers Guild v. Russel Williams [2000] WLR 2416 where it was held that:

"The first step in an action for infringement of artistic copyright is to identify those features of the defendant's design which the plaintiff alleges have been copied from the copyright work. The court undertakes a visual comparison of the two designs, noting the similarities and the differences. The purpose of the examination is not to see whether the overall appearance of the two designs is similar, but to judge whether the particular similarities relied on are sufficiently close, numerous or extensive to be more likely to be the result of copying than of coincidence. It is at this stage that similarities may be disregarded because they are commonplace, unoriginal or consist of general ideas."

Based on the above it was the court's view that the rights under dispute officially became the Plaintiff's intellectual property or artistic work the moment they were registered with COSOTA. It is certain that the overall appearance of the Defendant's designs is similar to that which was registered by the Plaintiff and is a result of copying, not a coincidence. Therefore, any imitation or substantial use in the products manufactured by the Defendant was an act of violation or infringement of the Plaintiff's rights. This determination by the court again raises questions on whether the right to copyright protection arises when the artistic or literal works are created or when such works are registered. The position of the court that the rights under dispute became the Plaintiff's intellectual property the moment they were registered with COSOTA contradicts the provisions of section 5(1) of the Copyright Act.

Other considerations that the court applied to determine the culpability of infringement of the Plaintiff's copyrights were that the Defendant never contested that the Plaintiff's artistic works were duly registered or that they were utilised in some of the Defendant's garments. Additionally, the Defendant used the word "RAFIKI" in one of its productions, a name synonymous with the Plaintiff's factory and products, which was registered as one of the literary works. Furthermore, none of the drawings the Defendant used were registered with COSOTA to justify the Defendant's use in its products.

Status of marks created by an employee

In this case, the court had the opportunity to determine the argument raised by the Defendant that the allegedly infringed mark was created by an employee of the Plaintiff and therefore the Plaintiff could not have a claim on it. The court was of the view that, even where the author or creator of the artistic or literary work is an employee, the employer is still considered to be the owner of the rights. This was mentioned to be what is commonly known in the US and UK as "works for hire". Thus, in Community for Creative Non-Violence v. Reed 490 US 730 (1989), the US Supreme Court made the following scintillating remarks:

"If a work is made for hire, an employer is considered the author even if an employee actually created the work. It must be ascertained whether a work was prepared by (a) an employee or (b) an independent contractor. If an employee created the work in the course of his or her employment, it will generally be considered a work made for hire."

This position has been legislatively acknowledged in our legal regime through the provisions of section 15(3) of the Copyright Act that stipulates as follows:

"In the case of a work created by an author for any person or body corporate in the course of fulfilment of his or her duties under a contract of service or employment, the rights of the work referred to in section 9 shall, in the absence of contractual provisions to the contrary, be deemed to be assigned to the employer of the author to such extent as may be necessary to its customary activities at the time of the conclusion of the relevant contract of service or employment."

That said, it is important to emphasise that in determining ownership of copyrights, any rights related to work created by an employee and registered by the employer typically belong to the employer, unless there are contractual provisions indicating otherwise.

Considerations when claiming damages

When claiming specific damages for infringement, it is essential to present specific evidence of the losses incurred. In this case, the Plaintiff did not adduce evidence of losses incurred, neither was it clear when the infringement took place or whether the Defendant's production levels remained consistent during the relevant period. Although evidence pointed to a decline in the Plaintiff's sales, this was deemed insufficient to calculate damages. Nevertheless, the court awarded general damages, holding the Defendant accountable for violating copyright law and causing harm to the Plaintiff.

Conclusion

This case serves as an important reminder on the intricate interplay between creativity and protection of artistic and literal works, and highlights the importance of protecting and safeguarding copyrights. Much as in copyright, you are entitled to protection of your work by the fact that you registered such work and this plays a crucial role in attesting official ownership of your copyrights. Additionally, it highlights the importance of presenting evidence to support claims when seeking specific damages, the underlying principle being that specific damages must be both specifically pleaded and proven.