Intellectual Property in Kenya: Challenges in character and celebrity merchandising

1. Intellectual Property (IP) Law has gained popularity recently due to the growth of Kenya’s digital economy, illustrated by increasing investments in intangible assets, such as IP rights, which have exceeded their traditional capital in leading global
2. This article aims to assess the relevance of IP Law in Kenya’s market by exploring the debate around Disney’s trademarks and the Intellectual Property challenges faced in character and celebrity merchandising.
3. The World Industrial Property Organization (WIPO) defines Intellectual Property as ‘creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce.’ Intellectual Property is protected in Law by use of: Patents, Copyright, Trademarks, Industrial designs, Geographical Indications and Traditional Knowledge.
4. Internationally, Intellectual Property is protected by various organizations such as WIPO, the African Regional Intellectual Property Organization (ARIPO) and locally, by Government institutions such as Kenya Industrial Property Institute (KIPI), Kenya Copyright Board (KECOBO), Kenya Plant Inspectorate Services (KEPHIS) and the Anti-Counterfeit Agency (ACA)
5. Under Article 11 (2) (c)of the Constitution of Kenya; the State shall promote the intellectual property rights of the people of Kenya. The same provision is reiterated in Articles 40 and 69 of the Constitution.

Disney’s Trademarks & Kenya’s Traditional Knowledge

6. Trademark is defined as ‘any sign that individualizes the goods of a given enterprise and distinguishes them from the goods of its competitors.’ In Kenya, once a Trademark is registered it serves as direct evidence of exclusive ownership and helps to keep off potential infringers attempting to ride on the good will of your mark.
7. Generally, infringement occurs where there is: use of a sign; without the consent of the proprietor, in the course of trade (and not privately) in relation to goods/ services and use that is liable to affect the functions of the trademark. Upon news of Disney’s decision to trademark the words ‘Hakuna Matata’ and ‘Simba’, most Kenyans assumed this meant Disney had exclusive ownership over the words.
8. Public outcry over Disney’s Trademarks was expressed through various online petitions to revoke Disney’s Trademarks, such as the one featured on change.org with nearly 200,000 signatures, and through striking news headlines such as ‘Disneyland robs Kenya of famous Hakuna Matata phrase.’ Many Kenyans, with great support from the international community, have argued that Disney’s trademark should be cancelled to protect Kenya and the East African community as a whole, from cultural appropriation and exploitation of its culture.
9. Zimbabwean activist, Shelton Mpala, adequately summarized opposers’ views by comparing Disney’s trademarks to ‘colonialism and robbery, the appropriation of something you have no right over.’
10. The terms ‘Hakuna Matata’ and ‘Simba’ are terms native to the Swahili language, and are commonly and freely used in Kenyans’ daily lives.
11. Freytas-Tamura argues that Disney’s trademark has not stopped the pirating of its intellectual property evidenced by the various markets across Africa selling unauthorized T-shirts with scenes and characters from the ‘Lion King’ prints. However, the notion claiming Kenyans will no longer be able to export products bearing the two trademarks, used in identical or similar class of goods to the US market is disputable as noted in a 2015 US District Court of Virginia ruling in Belmora LLC v. Bayer Consumer Care AG, Civil Action No. 1:14-cv-000847-GBL-JFA (ED Va., February 6, 2015) which held:

‘the owner of a foreign mark, even a famous one, that is not registered in the United States and that has not been used in the United States cannot assert priority over a mark that is used and registered in the United States.’‘

12. ‘Hakuna Matata’ apparel has been one of Kenya’s greatest exports since before the release of the first Lion King film in 1994. However, due to the mere fact that the terms have not been trademarked, exporters seeking to export such apparel to the US may experience difficulties in doing so.
13. As previously mentioned, ‘Hakuna Matata’ and ‘Simba’ are Swahili terms, native to East Africa. The Swahili language could be categorized as Traditional Cultural Expression (TCEs), enabling protection by existing systems such as copyright and related rights, appellations of origin and international trademarks. Serving as a source of revenue for Kenya and other East African countries home to the Swahili language as other International companies seeking to use the language would have to obtain the relevant permissions.
14. Similar to the Disney controversy, Kim Kardashian West was recently involved in a cultural misappropriation controversy after releasing a shapewear line named ‘Kimono’ and applying for eight trademarks on the name.
15. Kimono is a traditional Japanese garment and the national dress of Japan. Aside from being met with general unhappiness by fans and members of the public, the Japanese Mayor, Daisaku Kadokawa of Kyoto, posted an open letter on Facebook requesting her to consider a new name. In the letter, Mayor Kadowaka explains:

“Kimono is a traditional ethnic dress fostered in our rich nature and history with our predecessors’ tireless endeavours and studies… We are currently undertaking initiatives nationally to make “Kimono Culture”, symbol of our culture and spirits, registered to UNESCO’s Intangible Cultural Heritage list.”

16. Kardashian-West abided by the request and rebranded her entire line to a new name. Kimono, like ‘Hakuna Matata’ and ‘Simba’ are all forms of Traditional Cultural Expressions, perhaps if East African leaders had taken the initiative to secure the protection of their culture, cultural misappropriation would be less prevalent on this side of the world.

Character & Celebrity Merchandising Challenges

17. Merchandising using the names and images of celebrities has increased drastically over the years. Merchandising usually involves licensing the celebrity’s name, together with the copyright works (such as books or photographs), for use in relation to those particular goods or services. The advisable protection to provide a celebrity would be to trademark the celebrity’s name.
18. In Kenya, the recent triumphs by record breaking athlete Eliud Kosgei proved to be a lucrative merchandising opportunity for various companies and businesses. This was showcased by a local radio station which changed its name to ‘Kipchoge radio’ and added ‘that they would award Kipchoge a new BMW if the station got to 1 million followers on Instagram by Thursday, October 17, 2019’ in honour of the athlete’s triumph at the London Marathon.
19. The local radio station was served with a Demand letter by Kipchoge’s legal representatives, threatening to take legal action unless the radio station tendered an apology and removed his name from its platforms within two hours of being served.
20. James Mellor in his book, “Kerly’s Law of Trade Marks and Trade Names,“ suggests the use of registered designs, copyright, registered trademarks and the law of passing off to prevent the sale of unauthorized products. WIPO uses the international trademark registration system (also known as the ‘Madrid’ system), as a method to expand global trademark portfolios through one centralized system, enabling trademark holders to file a single application for registration in up to 85 countries, and maintaining and renewing those marks through a single procedure.
21. An illustration of this can be seen in the case of Usain Bolt, who successfully obtained a trademark over his ‘Lightning Bolt’ pose when fixed to his apparel and was granted a variety of other trademarks that similarly protected his name. Much in the same way Nike was able to trademark the iconic Michael Jordan ‘Jump man’ logo to promote the Air Jordan brand of basketball sneakers and other sportswear, reportedly generating a whopping $3.1 billion in revenue for Nike during its 2017 fiscal year.
22. Without bestowing absolute rights over those poses and words, trademarks prevent unauthorized commercial use of products without the celebrity’s endorsement. Even without a registered trademark, celebrity athletes have “image (or personality) rights” to prevent unauthorized use of their name, likeness or other personal attributes. However, registering their trademarks entitles them to an action for infringement, which may result in being awarded damages and specific performance.
23. Eliud’s challenge raises issues such as the commercialization of IP including the trademarks-brands-future branded items, the hashtags used as slogans, copyright in current and future songs, the registered patent and designs, Eliud’s image rights among others.
24. Overall, the challenges discussed in this article raise issues varying from the commercialization of IP, the various forms of IPs up for commercialization and the need to establish a rigid IP Legal framework so as to avoid any further injustices. With the emergence of IP rights through apps such as ‘YouTube’ or ‘instagram’, the Kenyans of all ages are being exposed to IP through the likes of copyright and trademark. With enough support from the Kenyan Government and its legal community, IP is well on its way to becoming one of Kenya’s most common practice areas.

If you have any query regarding the same, please do not hesitate to contact Janeirene Maina or  Saida Thuo at janeirene@wamaeallen.com or saida@wamaeallen.com. Note that this alert is meant for general information only and should not be relied upon without seeking specific subject matter legal advice.

About the author

Janeirene Maina

Principal Associate at Wamae & Allen

Janeirene specializes in real estate and securitization and banking and finance. She is a promising transactional advocate who has experience in real estate and securities law, transactional law and advisory and has handled complex transactions and advisories.

Saida Thuo

Advocate Trainee, 2020

• Intellectual Property in Kenya: Challenges in character and celebrity merchandising