TY - JOUR
AB - Copyright and Neighbouring Rights Act (2006), Secs. 4, 5, 8 and 13 ‒ Kakoma v Attorney General Headnotes by the Editorial Office 1. When a private person creates a work under the direction or control of the Government of the Republic of Uganda, the latter shall be considered as the copyright holder by force of law. 2. A song composed by a private person, submitted to the Government in the context of an open competition for the national anthem and selected with amendments for this purpose has to be considered as a work created under the direction or control of the Government. Court of Appeal (Kampala), decision of 15 July 2019 ‒ 50 of 2011 Brief Background The appellant’s predecessor in title, the late Professor George W. Kakoma, and the respondent were the plaintiff and the defendant, respectively in the High Court. Professor Kakoma instituted Civil Suit No. 197 of 2008 in the High Court against the respondent wherein he made the following prayers: ‘i. Declaration that the Plaintiff is the lawful holder of the copyright over the song comprised in the National Anthem of Uganda. ii. A Declaration that the Defendant is liable for the infringement and for inducing the infringement of the said copyright. ii. Loyalties/Compensation over the span of forty years. iv. General damages for infringement of the copyright. v. A permanent injunction restraining the Defendant and its agents from further infringing or inducing the infringement of the said copyright. vi. Interest on (iii) and (iv) above at court rate from the date of judgment until payment in full. vii. Costs of the suit. viii. Any other remedy that this honourable court may deem just and fitting.’ In his judgment, the learned trial Judge substantially disallowed the plaintiff’s prayers except that, pursuant to prayer (viii), he awarded the plaintiff a sum of Shs. 50,000,000/= to be paid when the plaintiff signed over the residue of his interest in the copyright in issue for the exclusive use of the defendant. The learned trial Judge also awarded the taxed costs of the suit to the plaintiff, notwithstanding that he had disallowed the substantial part of the plaintiff’s prayers. Being dissatisfied with the decision and orders of the High Court, the appellant lodged this appeal in this Court on the following grounds: ‘1. The learned Judge erred in law and in fact in holding or finding that the Appellant was commissioned by the Respondent to compose the song comprised in the National Anthem of Uganda. 2. The learned Judge erred in law and in fact in holding that there was a valid contract of assignment of the Appellant’s copyright to the Respondent. 3. The Learned Judge erred in law and in fact in applying principles applicable to the vesting of copyright for commissioned works to the vesting of copyright by assignment thereby occasioning a miscarriage of justice. 4. The Learned Judge erred in law and fact in holding that there was no infringement of the Appellant’s copyright by the Respondent when the Appellant was never remunerated, compensated or paid for it. 5. The Learned Judge erred in law and in fact in holding that the Appellant’s winner’s prize of Shs. 2000 paid to the Appellant for winning the competition leading to the choice of a National Anthem for Uganda constituted consideration for the assignment of the Appellant’s copyright to the respondent. 6. The Learned Judge erred in law and in fact in holding or finding that the sum of Shs. 50 million was a just, fair and reasonable amount to award the Appellant in return for his copyright and in ordering that the Appellant signs off an assignment of his copyright to the Respondent in return therefor (sic) thereby occasioning a miscarriage of justice.’ […] Appellant’s case Mr. Roscoe Ssozi for the appellant argued grounds 1, 2 and 3 separately and grounds 4, 5 and 6 together. On ground 1, counsel submitted that the learned trial Judge's conclusion that the composition by Professor George W. Kakoma had been commissioned by the Government of Uganda was erroneous as there was no contract between him and the Government of Uganda prior to the song being composed. He pointed out that the Government of Uganda had made an open advertisement to the general public to enter a song to be used as a national anthem which would subsequently be adopted at independence and the appellant who had already composed his song entered it into the competition and won. Counsel contended that as the song was composed prior to the said competition, the copyright of the song had already vested in Professor Kakoma by the time the song was entered into the competition and even when it was subsequently adopted as the National Anthem of Uganda. Counsel, however, conceded that there was no evidence that the song was composed prior to the competition but that it was an agreed fact and had not been traversed in the trial Court. On ground 2, counsel faulted the learned trial Judge for finding that there was a valid contract of assignment of Professor Kakoma’s copyright to the respondent yet the alleged assignment did not satisfy the legal requirements under the UK Copyrights Act, 1956. He relied on Sec. 36(3) of the UK Copyrights Act, to state that an assignment of any copyright had to be in writing. Counsel then invited Court to find that the impugned finding by the learned trial Judge was an error of law which ought to be overturned. On ground 3, counsel submitted that the learned trial Judge erred when he made a finding that the musical works in issue were commissioned by the respondent and then subsequently assigned to it as well. In counsel's view commissioning of copyrighted work and assigning it were mutually exclusive because once the work was commissioned, its copyright rested in the commissioner and to purport to subsequently assign it to him/her would be superfluous as he/she was already the owner of the intellectual property. Counsel argued grounds 4, 5 and 6 together submitting that the appellant had never been paid for the copyright in respect of the musical works in issue, and yet the respondent continued to benefit from the copyright, which was an infringement of the appellant’s intellectual property rights. He further contended that it was an agreed fact in the trial Court that Shs. 2000 paid to Professor George William Kakoma in respect of his winning entry into the competition was prize money, and a mere honorarium which was not consideration for the copyright of the musical works in question. Counsel further submitted that it would be a dangerous precedent, if, in respect of copyright as property, the courts came to a determination that once a competition is organized and a winner emerges therefrom, the organizer of the said competition, would then be deemed to own the copyright of the winning works. Further still, counsel contested the amount of Shs. 50,000,000/= (Fifty Million Shillings) which the learned trial Judge awarded to the appellant as the value of his residual interest in the song used as the Uganda National Anthem. In counsel’s view, the national anthem was of way more value than the amount awarded by the learned trial Judge which was humiliating to the appellant’s ingenuity in composing the song used as the Uganda National Anthem. Counsel asked Court to set aside the judgment and orders of the lower Court and to grant the prayers of the appellant in the lower Court. Respondent’s case Ms. Christine Kaahwa, counsel for the respondent, opposed the appeal and supported the findings and conclusions of the learned trial Judge. On ground 1, counsel submitted that the copyright in the musical works adopted as the Uganda National Anthem belong to the Government of Uganda, as it was the Government at the time in 1962 which commissioned Professor Kakoma to compose the song in issue, She relied on Angella Katatumba vs. AntiCorruption Coalition of Uganda High Court Civil Suit Non 307 of 2011 and the Cambridge International Dictionary of English where ‘commissioning’ is defined as ‘to formally choose someone to do a special piece of work.’ She also referred to Sec. 8(2) of the Copyright and Neighbouring Rights Act, 2006 which was to the effect that where a person creates a work under the direction or control of the Government or a prescribed international body, unless agreed otherwise, the copyright in respect of that work vests in the Government or an international body. Counsel contended that in the instant case, regardless of the fact that the request to compose a national anthem was not extended to the appellant alone, he had been commissioned in law, as the entrant of the winning song in the competition. Furthermore, it was counsel’s submission that Shs.2000 paid to Professor Kakoma for his winning entry was consideration regardless of whether it was referred to as a token or prize money. Counsel disagreed with the submission by counsel for the appellant that the song in issue had been created prior to the competition, arguing that there was no evidence to that effect. She then concluded on ground 1 that the learned trial Judge was right to find as he did that the government at the time had commissioned Professor Kakoma and that Shs. 2000 paid to him was consideration for that purpose. On ground 2, counsel did not agree with the submissions for the appellant. She contended that the learned trial Judge had not held that there was a contract of assignment in the circumstances. In counsel’s view, an assignment of a contract could only occur when one party to an existing contract handed over the contractual obligations and benefits to another party; that ideally the assignor would have intended that the assignee steps into his shoes and assumes all his contractual obligations and rights; that in order to do that the other party to the contract had to be properly notified. Counsel submitted that in the present case, Professor Kakoma never concluded the relevant assignment with Government, He referred to the judgment of the learned trial Judge who made a finding that whereas there was no assignment, the appellant and the respondent had dual ownership in the copyright. Counsel re-iterated that the learned trial Judge did not make a finding that there was a contract of assignment as alleged by counsel for the appellant. On ground 3, counsel submitted that the learned trial Judge did not apply the principles as stated in the ground and only drew an analogy using related principles of the law of contract. She supported the findings of the learned trial Judge. On ground 4, counsel supported the finding of the learned trial Judge that Shs. 2000 paid to the appellant was consideration for his composition and it need not be adequate, as long as there is some form of compensation. She further contended that Professor Kakoma retained the moral rights to the authorship of the song adopted as the national anthem but was not entitled to any further economic benefits because the purpose of the composition was not for economic benefit but for national identity, and that he ought to have known from the advert that the government of Uganda owed him no compensation. She then invited this Court to find that in view of the aforementioned, the respondent had committed no infringement of the copyrights in issue. On ground 5, counsel supported the finding of the learned trial Judge on the point and submitted that the intentions of the parties from the advert and surrounding circumstances were clear and they formed a binding agreement. Counsel maintained that the intention of the parties was for Government to commission appellant for a consideration of Shs. 2000, and for appellant to compose the song which would be adopted as the national anthem. In her view, that was all on the matter and that topic had been closed. On ground 6, counsel supported the award of Shs. 50,000,000/= made to the appellant, submitting that it would be wrong for this Court to interfere with the award given to the appellant in the circumstances because it was awarded out of the learned trial Judge’s discretion. Rejoinder Counsel re-iterated his earlier submissions, and implored this Court to exercise its discretion to make an appropriate award to the appellant which is commensurate with the immense value attached to the Uganda National Anthem which was composed by the Late Professor Kakoma. Resolution of Court I have carefully considered the submissions of both counsel, perused the court record and authorities and the law cited and not cited. I am alive to the duty of this Court as a first appellate Court which was aptly summarized in Kifamunte Henry vs Uganda Supreme Court Criminal Appeal No. 10 of 1997 as follows: ‘The first appellate court has a duty to review the evidence of the case and to reconsider the materials before the trial judge. The appellate Court must then make up its own mind not disregarding the judgment appealed from but carefully weighing and considering it.’ Before I proceed to review the evidence in this case, I find it necessary to give a brief background to the present appeal. This case has a long history. It relates to the most celebrated song in this country, the National Anthem which was composed in 1962. While the citizens of Uganda sing their National Anthem with pride both at home and abroad, both at official and private ceremonies, very few know the detailed facts and history surrounding its composition. The facts, as can be gathered from the record are that early in 1962, an open competition for the composition of the National Anthem was advertised, with no conditions attached to the prospective winning entry. Pursuant to the advertisement, Professor Kakoma and 49 others submitted songs in the competition for consideration and, thereafter, a shortlist of the best four songs was forwarded to the Cabinet of the Government of then Prime Minister, Dr. Milton Obote for consideration. The Cabinet constituted a committee on the National Anthem to consider the said shortlist with a view of choosing the best song to be adopted as the National Anthem during the Independence Day celebrations on 9th October, 1962. The said committee considered the songs and during their discussions, the following facts emerged: On 31 July 1962, the committee noted that the four shortlisted songs, which included the composition by Professor Kakoma, were quite unsatisfactory and, after taking into consideration the advice of Prime Minister Obote opted to commission, Mr. Moon, the Police Director of Music to compose a more satisfactory Anthem. On 18th September 1962, the committee observed that the composition by Mr. Moon, was even more unsatisfactory than the song submitted by Professor Kakoma. They then voted to adopt Professor Kakoma’s composition as the National Anthem with some amendments. Professor Kakoma’s composition was played/sang at the Independence Day celebrations on 9 October 1962 and is still played/sang at official and nonofficial ceremonies to date. For winning the relevant open competition, Professor Kakoma was given a prize of Shs. 2000. Apparently, a year or two later, the Government realizing that the composition by Professor Kakoma was copyright material, wrote to him asking him to surrender his copyright to the Government. This is according to the appellant. However this letter was not presented in evidence in the lower court. Professor Kakoma, then, allegedly wrote back to Government demanding a fee of 5000 British pounds before he could sign over the copyright. Again, this letter was not adduced in the lower Court. There is no indication of any response to the said letter from Government on any of the stated issues. Thereafter, due to political unrest, Professor Kakoma went to exile and did not follow up his claims with the successive Governments until 1986 when NRA Government came to power; whereupon raised his claims for compensation, albeit unsuccessfully. On 15th September, 2008, Professor Kakoma opted to pursue court litigation vide High Court Civil Suit No. 197 of 2008 to enforce his rights. As the history relating to the litigation in the High Court has already been discussed earlier in this judgment, I need not labour to discuss it again. I note that on any appeal from a decision of the High Court acting in the exercise of its original jurisdiction, this court may reappraise the evidence and draw inferences of fact. See: Rule 30 (1) of the Judicature (Court of Appeal Rules) Directions Sal 13-10. In my view, the key question for determination of this court in the present appeal is who owns the copyright to the song adopted as the Uganda National Anthem in 1962. It was the case for the appellant that Professor Kakoma as the author of the song in question owned the copyright, and that since the Government in 1962, and all the successive Governments have never paid him any consideration to assign the copyright in the song in question, his successors in title own the said copyright to this day. On the other hand, it was submitted for the respondent that the Government of Uganda in 1962, had, by running an open advertisement on state radio calling for a song to be adopted as the National Anthem, had commissioned Professor Kakoma to compose the song in question. It was further submitted that the Government as the commissioners, owned the copyright in question since they had paid shs. 2000 as consideration for Professor Kakoma’s composition. I observe that the learned trial Judge made a finding that Professor Kakoma entered into the open competition with the knowledge that his composition would be adopted as a National Anthem. He further made a finding that the invitation to enter into the open competition constituted an offer to Professor Kakoma from the Government, which he accepted by submitting his successful entry, and for which Shs. 2000 was paid to him, which amount in the learned trial Judge's view, was sufficient consideration for his composition. ‘What then is the effect of non-compliance with the law as to transfer of copyright ownership?’ However the learned trial Judge made further findings which were in contradiction with the above findings. The said findings appear at page 105 of the record as follows. He then cited the authorities of Warner vs Gestetner Ltd [1988] EIPR D-89 and Ironside vs Attorney General [1988] RPC 197 and continued at page 106 of the record as follows: ‘From the authorities, to be able to imply beneficial ownership, the creator of the work should have been paid a fixed sum rather than a royalty, as the latter is inconsistent with transfer of ownership. The two cases which I have cited above involved a lump sum payment. And so does the instant one. Applying the same principles to the instant case, it is plain to me that upon the defendant receiving the composition and adapting it to its own taste, it obtained an equitable interest in the copyright material. In other words there is a legal owner of the Copyright in our national anthem and an equitable owner. The legal owner is the intended assignor, the plaintiff, and the equitable owner, the intended assignee, the defendant.’ From the above excerpt, it is apparent that in addition to the learned trial Judge’s earlier findings that Professor Kakoma was duly commissioned to compose the National Anthem, he also found that there was dual ownership of the relevant copyright, with Professor Kakoma as the legal owner, with the obligation to assign the copyright to the Government of Uganda, which was the equitable owner. In my view, that was a contradiction by the learned trial Judge in relation to the findings I mentioned earlier. Strangely the learned trial Judge attempted to reconcile his findings at page 107 of the record with an even more contradictory finding as follows: ‘In view of this dual ownership of the Copyright, created as it were by the parties failure to execute a formal assignment in favour of the defendant, the question of infringement of the plaintiff's Copyright in the manner claimed by him does not arise because as learned counsel for the defendant has correctly put it, one cannot infringe on one’s own property.’ As for term ‘copyright’ the Black’s Law Dictionary, 7th Edition at page 337 defines copyright as follows: ‘A proprietary right in an original work of authorship (such as a literary, musical, artistic, photographic, or film work) fixed in any intangible medium of expression, giving the holder the exclusive right to reproduce, adapt, distribute, perform, and display the work.’ I would adopt the above definition in relation to copyrights in Uganda to the effect that copyrights refer to the exclusive rights by authors of certain prescribed works to reproduce or deal with them as they deem fit. In my view the question I have to determine in the present appeal may be framed as follows: who owns the intangible property rights in the National Anthem with the attendant privilege to reproduce it? It was argued for the respondent that Professor Kakoma had been commissioned to compose the song in issue, with the consequence that when he composed it, the copyright thereto was owned by the Government. The appellant's case was the total opposite and was that Professor Kakoma was the author of the song which was adopted as the national anthem and owned the copyright thereto having never been paid by the Government to assign his copyright to them. It was further their case that as Professor Kakoma is now deceased, the copyright to the National Anthem is now owned by his family by virtue of succession. In order to authoritatively determine the aforementioned issue, regard shall be had to the following provisions of the Copyright and Neighbouring Rights Act, 2006: Section 4 of the said Act provides as follows: ‘4. Author entitled to copyright protection. 1. The author of any work specified in section 5 shall have a right of protection of the work, where work is original and is reduced to material form in whatever method irrespective of quality of the work or the purpose for which it is created. 2. The protection of the author's work under subsection (1) shall not be subject to any formality. 3. For the purpose of this section, a work is original if it is the product of the independent efforts of the author.’ Under Sec. 2 of the Act, ‘author’ is defined as follows:  ‘In this Act, unless the context otherwise requires- “author” means the physical person who created or creates work protected under section 5 and includes a person or authority commissioning work or employing a person making work in the course of employment;’ Further, Sec. 5 of the same Act, as far as is relevant provides that:  ‘5. Work eligible for copyright. 1. The following literary, scientific and artistic works are eligible for copyright— … dramatic, dramatic-musical and musical works;’ Further still, Sec. 8 of the Act provides that:  ‘8. Employed authors and works for Government or international bodies. 1. Where a person creates a work— … … 2. Where a person creates work under the direction or control of the Government or a prescribed international body, unless agreed otherwise, the copyright in respect of that work shall vest in the Government or international body. 3. Vesting of copyright referred to in (1) and (2) above shall apply only to work created within the stipulated schedule of work of an employee. 4. The moral right in a work made under this section shall always remain with the actual author of the work.’ Whereas Secs. 4 and 5 of the Copyright and Neighbouring Rights Act, 2006 deal with private copyrighted works, Sec. 8 thereof concerns Government copyrighted work. In my considered view, Government copyrighted work is work, which, although composed by a private person vests in the government by virtue of operation of the law. In respect to Government copyrighted work, where a person creates work under the direction or control of government, the copyright thereto shall vest in the Government of the Republic of Uganda, See: Section 8(2) of the Copyright and Neighbouring Rights Act, 2006. It is, therefore pertinent to determine whether the song in issue was composed by Professor Kakoma under the control and direction of the government of Uganda. I note that the Copyright and Neighbouring Rights Act, 2006 does not define what has been created under the control or direction of government in relation to producing copyrighted work and I have not been able to find case law which specifically deals with the matter in relation to copyrights. I will, therefore, rely on the ordinary meaning of the said words. The Oxford Advanced Learners Dictionary, 6th Edition defines ‘control’ as the act of restricting, limiting or managing something. It also defines ‘direction’ to mean the art of managing or guiding somebody/something. From the said definitions and the evidence on record, it is my finding that Professor Kakoma composed the song in issue while under the control and/or direction of Government. I so find, because the Government initiated the idea of composing a National Anthem and managed the entire process including submitting a shortlist of four songs for Cabinet’s consideration, which Cabinet constituted a committee on the National Anthem to choose the best song and Professor Kakoma’s composition emerged the best. Not only did the Government at the time control the entire process of submitting entries into the relevant competition, it also made amendments to the original work which had been submitted by Professor Kakoma. It also emerged from the deliberations of the Cabinet at the time, that they had the option to totally reject Professor Kakoma’s composition and commission another person to compose the National Anthem. Therefore, in view of the foregoing analysis and, in accordance with Secs. 8(2) of the Copyright and Neighbouring Rights Act, 2006, I am inclined to find that when the song in issue was composed in 1962 and subsequently adopted as the National Anthem at independence, the copyright thereto was vested in the Government of Uganda. I also add, for the record, that the question of commissioning or assignment as argued by the counsel in this matter becomes academic and I need not delve into it here. I further note that Sec. 13 of the Copyright and Neighbouring Rights Act, 2006 regarding the duration of copyright protection provided as follows: ‘13. Duration of copyright protection (1) … (2) … (3) Where the economic rights in a work are owned by a corporation or other body, the term of protection shall be fifty years from the date of the first publication of the work. (4) … (8)’ Accordingly, as Professor Kakoma’s composition was published in 1962, the copyright over it was vested in the government of Uganda at the time, and subsisted for fifty years, that is, until 2012. Thereafter, that copyright ceased to have any legal protection and is deemed to have entered the public domain. I have noted that the Copyright and Neighbouring Rights Act, 2006 does not define public domain or which works are deemed to have entered the Public domain. However the Black’s Law Dictionary 8th edition at page 3880 defines public domain as follows: ‘The universe of inventions and creative works that are not protected by intellectual-property rights and are therefore available for anyone to use without charge. When copyright, trademark, patent, or trade-secret rights are lost or expire, the intellectual property they had protected becomes part of the public domain and can be appropriated by anyone without liability for infringement.’ The learned author, David I. Bainbridge in his book titled Intellectual Property, 7th Edition observed as follows: ‘Public domain: refers to all material which is available to the public at large (or a portion of it) and which may be freely used and exploited without infringing anyone's intellectual property rights. Material may be in the public domain because: (a) it is commonplace or lacks novelty, (b) it has been put there deliberately by the “owner”, and (c) the intellectual property rights concerning the material have expired or lapsed.’ In light of the above authorities, it can be stated that when the duration of the protection of copyright in respect of any work expires or lapses, that work is deemed to be in the public domain and is available to the public at large. In my view, the same would apply to work copyrighted by the Government. In the result, it is my finding that the song which was composed by Professor Kakoma and subsequently adopted as the National Anthem ceased to have copyright protection in 2012 and is now in the public domain. The above findings would substantially dispose of this appeal. In conclusion, I propose to make the following declarations and orders; The composition of the song that was eventually adopted as the National Anthem by Professor Kakoma in 1962 was done under the direction and/or control of the Government at the time. Its copyright was accordingly vested in the Government of Uganda. Any payments made to Professor Kakoma, including Shs. 2000 in relation to the composition of the song in issue, was a reward to the composer of the song. The award of Shs. 50,000,000 which was granted to the appellant in Civil Suit No. 197 of 2008 had no legal basis, and, is hereby set aside. The copyright which was vested in the government of Uganda enjoyed legal protection for fifty years which expired in 2012. Thereafter the musical composition entered into the public domain. Accordingly, the composition no longer enjoys copyright protection and can be used freely by the public. I would dismiss this appeal with no order as to costs as it relates to a matter whose resolution is of public importance. © Published by OUP and CH Beck on behalf of GRUR e.V. All rights reserved. For permissions, please email: journals.permissions@oup.com and GrurInt@ip.mpg.de This article is published and distributed under the terms of the Oxford University Press, Standard Journals Publication Model (https://academic.oup.com/journals/pages/open_access/funder_policies/chorus/standard_publication_model)
TI - Government as the Copyright Holder of the National Anthem
JF - "GRUR International: GRUR Journal of European and International IP Law (Formerly: Gewerblicher Rechtsschutz und Urheberrecht, Internationaler Teil)"
DO - 10.1093/grurint/ikaa102
DA - 2020-09-01
UR - https://www.deepdyve.com/lp/oxford-university-press/government-as-the-copyright-holder-of-the-national-anthem-gwnj003ntp
SP - 964
EP - 968
VL - 69
IS - 9
DP - DeepDyve
ER -