Choice of Law:        What law shall apply to the transaction. It the law to apply is foreign, then it is voidable because they want you to use Kenya Law.  if the forum for resolving the dispute is a foreign forum then the contract is voidable.

It is in this context that Osunbor argues that it is important that we regulate and strengthen the regulatory systems.
Copyright Act 2001 Section 33 – provides … for licensing, assignment and ToT for copyright works.  It provides thus:
33. (1) Subject to this section, copyright shall be transmissible by assignment, by licence, testamentary, disposition, or by operation of law as movable property.
(2) An assignment or testamentary disposition of copyright may be limited so as to apply only to some of the acts which the owner of the copyright has the exclusive right to control, or to a part only of the period of the copyright, or to a specified country or other geographical area.
(3) No assignment of copyright and no exclusive licence to do an act the doing of which is controlled by copyright shall have effect unless it is in writing signed by or on behalf of the assignor, or by or on behalf of the licensor, as the case may be and the written assignment of copyright shall be accompanied by a letter of verification from the Board in the event of an assignment of copyright works from outside Kenya.
 (4) A non-exclusive licence to do an act the doing of which is controlled by copyright may be written or oral, or may be inferred from conduct, and may be revoked at any time, but a licence granted by contract shall not be revoked, either by the person who granted the licence or his successor in title, except as the contract may provide, or by a further contract.
 (5) An assignment, licence or testamentary disposition may be effectively granted or made in respect of a future work, or an existing work in which copyright does not yet subsist, and the prospective copyright in any such work shall be transmissible by operation of law as movable property.
 (6) A testamentary disposition of the material on which a work is first written or otherwise recorded shall, in the absence of contrary indication, be taken to include the disposition of any copyright or prospective copyright in the work which is vested in the deceased.
 (7) Where an agreement for assignment of copyright does not specify the period of assignment, the assignment shall terminate after three years.
 (8) In the case of agreements regarding future works which are not specified in detail, either party may, on giving not less than one month's notice, terminate the agreement not earlier than three years after it was signed or such shorter period as may be agreed.
 (9) A licence granted in respect of any copyright by the person who, in relation to the matters to which the licence relates, is the owner of the copyright, shall be binding upon every successor in title to his interest in the copyright, except a purchaser in good faith and without notice, actual or constructive, of the licence, or a person deriving title from such purchaser and any reference in this Act to the doing of anything in relation to any copyright, with or without the licence of the owner of the copyright, shall be construed accordingly.
 (10) Where the doing of anything is authorised by the grantee of a licence or a person deriving title from the grantee, and it is within the terms, including any implied terms of the licence for him to authorise it, it shall for the purpose of this Act be deemed to be done with the licence of the grantor and of every person, if any, upon whom the licence is binding.

This is essentially a market based approach, however under Section 48 of the Act a compulsory license may be avoided in at least two contexts
1.            Where the copyright owner or holder does not produce sufficient materials to supply the relevant market; or
2.            Where the copyright holder refused to grant a licence or grants a licence on inordinate or inequitable terms.
After 1995 there have been two major reports the issue of law reforms captured by the Industrial Property and even trademark law has been reformed to assist licensing.  There have been institutional reforms and policy reforms.  You can licence the business without the mark or the Mark without the business – this only means that if for example you are running Nandos Restaurant, if one wanted to carryout other business but not Nandos business with the consent of the Nandos Business owner, they have licensed the premises and not the mark, but if they say fine you can go open a Nandos premises in another premises, they have licensed the Mark but not the business.
Institutional policy reform – many countries have reformed their institutions and policy to enhance licensing and other forms of transfers especially on market oriented principles.

Section 48 and Section 64
A licence is the permission that which would otherwise be unlawful if the licence was not granted.  A license may take 3 forms

1.            A sole licence – this is whereby the licensor licenses only one licensee however the licensor may compete with the licencee;
2.            Exclusive Licence – this is where the licensor licenses the licensee exclusively and even the licensor cannot compete with the licensee.
3.            Non-exclusive Licence – this is where the Licensor licenses one or more licencees and the licensor can also compete.
In most assignment transaction the assignee replaces the assignors for most intents and purposes.  It is recommended that the contract should be the assignor should sign the assignment, the assignor’s is the most important.

Anything under the sun made by man is patentable.  This doctrine helps stimulate investments in bio-technology in the 80s-90s.  there has been a lot of investment in Genetics and informatics.  (Genomics – genetic engineering and informatics.

In 1994 – TRIPS adopted the standard that all inventions are prima facie patentable and that no invention should be excluded by state parties without sufficient justification. 

INDUSTRIAL DESIGNS:   Section 84 of IPA – an industrial design means any composition of lines  or colours or any three dimensional form, whether or not associated with lines or colours.

2.            The protection under this Act shall not extend to anything in an industrial design which serves solely to obtain a technical result.

IDs are compositions of lines or colours or any 3 dimensional form.  They are protectable on the basis of special appearance or aesthetics and not on the basis of their technical effect or technical result.  Most perfume bottles have elegant shapes.  Aesthetics other than utility or functionality.  When does utility override aestheticity – when one wants patents, they ask if it is useful and if it is new i.e. viagra.  Patents are all about utility it is in the extreme utility end.  Trademark is in the middle and is for both utility and aesthetics and Industrial Designs is more to do with aesthetics.  It depends on what one wants, some may have both utility and aesthetic, Jean Paul Gautier Woman form perfume bottle is a good example for me.

Technovations related to industrial designs, they relate to arrangements of things. Section 94 of IPA

Character Merchandising:           this occurs when the owner of the rights some popular character grants licence to others …

Character Merchandising is the process of licensing and utilising representations of popular characters in goods or services.  Most of these characters are derived from fictitious characters made famous through T.V. films or books for example like Harry Porter, Mickey Mouse etc some of the characters are real life for example Diana Princess of Wales in Dolls, Plates etc.   Character merchandising constitutes between fiction and faction. When you can trace fictitious material or character to the real one you call it factual between fictitious and factual it is a thin line, the more fictitious a novel is the more protected in copyright (thick copyright as in protecting poetry) as it is work of the imagination.

Right of Publicity:  seeks to protect the image, voice and likeness of famous people especially celebrities.  These should not be copied or imitated without their permission.  Paul Goldstein  talks of Johnnie Carson in the way he used to enter the stage and say  Heeeere comes Johnnie!  and Vorna White who had her own style of spinning the wheel of fortune. Right of publicity does not extend to protect the individual from satirical commentary.  Satirising is not property but is in the area of freedom of expression. 

Discuss forms of IP that may be used to protect a Coke bottle and its contents
Many scholars have argued that in a perfect market where transactions are efficient intellectual property (IP) may not be justified.  They have thus argued that (I)P should be created only where there is market failure.  The best arguments have been made by Stanford Law Professor John Barton. He argues that trade presupposes freedom.  On the other hand property or IP presupposes restriction or control.  Indeed property includes the right to use abuse and the right to exercise exclusive control.   John Barton’s arguments underscore the tensions within TRIPs.  He is more convincing than activists and others who have argued that trade has nothing to do with IP.  Many of our communities have pots,  whenever they made posts they would put their marks, that was a sign of trademark.  In the area of music many people were identifiable with the music that they had sung or written which is an issue of copyright.  It is not created by TRIPs but trademarks have there.


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