Madrama: Judge in Seya’s MTN caller tune, Café Javas fights

Saturday May 15 2021
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Justice Christopher Izama Madrama. The Court of Appeal/ Constitutional Court judge, has made rulings often cited at law school. PHOTO | FILE

By Derrick Kiyonga

In developed countries, intellectual property is taken so seriously that in 1999, the United States Court of Appeal, 11 circuit, ruled that the estate of civil rights activist Martin Luther King Jr, who was assassinated in 1968, was vested with the copyrights of his famous speech, ‘I have a dream’.  

This came after the estate had a protracted legal fight with CBS – an American commercial broadcast television and radio network  
Could such ruling be replicated in Uganda where intellectual property rights are still obscure to many lawyers and policymakers?     
Ugandans have a tilt towards humour, and even in the hardest of times will have something to trigger laughter. And this inclination is something big-time corporate companies have taken advantage of.  

Former Kampala city mayor, Nasser Ntege Sebaggala, who has since passed on, had always been a subject of scorn for his pathetic mastery of English, Uganda’s official language.
In 2011, having been rejected by Parliament’s appointments committee to become a minister in President Museveni’s post-election Cabinet, Sebaggala gave rib-cracking press interviews peppered with fumbling grammar.  

But Sebaggala woes were MTN’s gain.  SMS media, which Sebaggala attached as a third party to the suit, captured Sebaggala’s clumsy English and turned them into caller tune, sold them to MTN that in turn sold them to tickle its customers.
 
After two years, in 2012, Sebaggala, who was reputed as an astute businessman, detected an opportunity to make money out of his clumsy grammar. So the dragged MTN together with SMS media limited to the Commercial Division of the High Court, claiming the two companies, inter-alia, had infringed on his copyrights and in the process unjustly enriched themselves. As damages, Sebaggala sued for Shs8 billion.   

One year before MTN could use Sebaggala’s caller tune, an Afro-hair sporting lawyer from Katende, Ssempebwa & Co Advocates, one of oldest and leading commercial law firms in Uganda, had been appointed judge of the High Court.

Perhaps to tap into his commercial law expertise, Justice Madrama was posted to the High Court’s Commercial Division by Justice James Ogoola, the then principal judge, who has since hung up his wig.

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The commercial law disputes that Justice Madrama would go on to adjudicate involve contract, torts, banking, intellectual property or industry focus -  for example, technology, media and telecom.
“It’s like I set out to handle commercial cases,” Justice Madrama said in a recent interview. I just found myself deployed there by Justice Ogoola, who had his own reasons, and for some reason, I never left that court until I was promoted.”
Mr Sebaggala had claimed that the use of his speeches as caller tune was an infringement on Section 4(1) of the Copyright and Neighbouring Rights Act, 2006. The case found its way to Justice Madrama’s desk.
 
Under Section 5 of the same law, Mr Sebaggala said he had a right of protection of the work where the work is original and is reduced into a material form in whatever method, irrespective of the quality of the work or the purpose for which it is created.

Section 5(1)(a) of the same law lists various works eligible for copyright, which include literary works, addresses, sermons and other works of a similar nature. MTN’s legal team, in its defence, admitted that the caller tunes contained, Sebaggala’s voice but they dismissed the idea that he had copyright in the caller tune, the subject matter of the suit.

MTN’s lawyers submitted that Section 4(1) of the Copyright and Neighboring Rights Act, 2006, grants protection to the author of works specified in Section 5 where such work is original and is reduced into material form. The list of works protected is provided for under Section 5 and demonstrate that they include dramatic,  musical works; audiovisual works and sound recording, including cinematographic works and any other works of a similar nature. They include works of drawing, painting, photography, typography, mosaic, architecture, sculpture, engraving, lithography and tapestry.

The telecom’s lawyers submitted that the law couldn’t be applied in Sebaggala’s case because an interview or speech from which MTN had extracted the caller tune don’t qualify as works that are eligible for copyright under the provisions of Section 5 of the Copyright and Neighboring Rights Act.
“The legislature in its wisdom did not include speeches and interviews as works eligible for copyright,” Kampala Associated Advocates (KAA), the lawyers for MTN, argued.

In this landmark judgment, which has now become a reference in copyright cases, Justice Madrama told Ssebaggala that his case couldn’t succeed because he wasn’t the author of the voices that had been turned into caller tunes.
 
The word “author”, according to Justice Madrama, is defined as the 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.
“In the restricted meaning, therefore, it is the third-party [SMS Media], who is the author of the recording of the Plaintiff’s [Sebaggala] voice in the sense that it carried out the fixation of the Plaintiff’s voice in a material form and was able to reproduce it and sell it to the defendant [MTN],” Justice Madrama ruled.
 
“Before doing that, it [SMS Media] compiled the plaintiffs answers to different people and to different questions and merged the answers together with the audible background sounds of reactions from members of the public who were present. On the other hand, plaintiff [Sebaggala] never arranged the recording and never consented to the use of his voice in the manner in which it was utilised by the third party and the defendant as ringtones for sale to the subscribers of the defendant. In the premises, he could not have been the author of the works to which he never consented or willingly participated.”

Java House case

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Justice Madrama settled a trademark fight between Nairobi Java House, a coffee chain shop, and Mandela Auto Spares, which owns Café Javas restaurant chain. PHOTOS | COURTESY


Just as Justice Madrama was sorting out Sebaggala’s copyright case, a trademark fight between Nairobi Java House, a coffee shop chain, and Mandela Auto Spares, which owns Café Javas restaurant chain, was brewing. The case again ended at Justice Madrama desk.   

The case arose in mid-2013 when Java House filed an application at the Registrar of Trademarks to register a trademark in Uganda. But Mandela Auto Spares objected to the application, citing similarities in names  – “Java” and “ Javas”.

Later, the Registrar of Trademarks ruled in favour of Mandela Auto Spares, saying the entrance of Java House into the Ugandan market would lead to confusion in the marketplace. But Java House was having none of it and they appealed to the Commercial Court, insisting that trademarks must not be used by one entity to stifle genuine trade competition.

A key point of disagreement here was whether there could be a trademark in use with the word “Java”, which Mandela Auto Spares had registered in Uganda. But Justice Madrama ruled that the word “Java” can’t be patented because it’s used worldwide for different purposes.  
“Firstly, he [registrar of trademarks] rightly established that the word “Java” meant a geographical place in Indonesia,” Justice Madrama said.

“Was it, therefore, a registrable word in Part A without the need of proving distinctiveness?” Justice Madrama asked.  
“Secondly, he [registrar] erred not to find that the word ‘Java” is certainly associated with coffee and restaurants. This is exactly what the attached evidence shows. In the evidence, the words “Cafe” and “Java” are ordinarily used in association in the business of coffee and coffee drinks. Specifically, the word “Java” is colloquial for “programming language” or “Coffee”.
He added: “Java is the Island of Indonesia separated from Borneo by the Java Sea.

Secondly, it is a trademark for the programming language used to develop applications that can operate on different platforms according to the American Heritage Dictionary of the English language, Fifth edition© 2011 by Houghton Mifflin Harcourt Publishing Company.

Several other definitions I have searched from the internet give the three variations namely, it is a geographical place in Indonesia (an island), it refers to coffee or computer programming language. The Registrar erred in law not to apply section 26(1)(b) to find that the word “Java”, which he held played a standout role was common to the provision of services of the description on class 43 of the Trademarks Act, 2010.”

Having spent about eight years at the Commercial Court, it could be argued that Justice Madrama had nothing more to prove in 2018, when he was promoted to the Court of Appeal, which doubles as the Constitutional Court.

“By that time I was appointed to the Court of Appeal, I had written about 700 judgements,” Justice Madrama explains.
“I ensure that at least every week I delivered a judgment and two rulings. So you find that many law students know many of the judgements I have given out.”
Justice Madrama was joined at the court by Justices Stephen Musota; Ezekiel Muhanguzi and Percy Tuhaise- the two have since been elevated to the Supreme Court.

Both the Court of Appeal and the Constitutional Court work in panels and this is where the challenge starts since there is a great chance of a judge being swallowed up in a group.
“You have to be really good to shine once you are at the Court of Appeal,” constitutional law expert Peter Walubiri says.
“Because to shine, you have to influence other justices going with the work that you do,” he adds.
   
At the High Court, it’s easy for a judge to shine since he or she handles cases individually, but at the Court of Appeal or Constitutional Court, a judge is working with two other judges for the Court of Appeal or four judges for the case of the Constitutional Court.
“When it’s your turn to write a lead judgement, you have to really convince others on the panel that what you have written is the right thing,” Justice Madrama says.

When Justice Madrama joined the Court of Appeal, the court had dominant characters in Alfonse Owiny-Dollo, then Deputy Chief Justice, the mercurial Justice Kenneth Kakuru, who has fashioned himself as a maverick, and Justice Geoffrey Kiryabwire, who like Justice Madrama, has commercial law as his expertise.

But there were question marks whether Justice Madrama would be able to stand out of the crowd and stamp his authority in the Court of Appeal, considering that many promising judges have joined the court and left without penning any significant judgment that could be cited at law school.
For Justice Madrama, the anticipation was that the Court of Appeal would tap into his commercial law expertise. Indeed, this was exhibited recently when he wrote the lead judgment in the multi-billion appeal case between Diamond Trust Bank Uganda, Diamond Trust Bank Kenya and businessman Hamis Kiggundu.

Although High Court Judge Henry Peter Adonyo had ordered the banks to pay Mr Kiggundu Shs34b and Shs84b, Justice Madrama was joined by Justices Richard Buteera and Geoffrey Kiryabwire in setting aside Justice Adonyo’s judgment and ordering a retrial.

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Businessman Hamis Kiggundu (centre) consults with his lawyers during the hearing of his case at the Court of Appeal in Kampala last week. PHOTO | ABUBAKER LUBOWA

“In conclusion, the learned trial judge erred in law to strike out the written statement of defence and I   would accordingly allow grounds 9 and 11 of the appeal set aside the order striking out the written statement of defence, Justice Madrama ruled.

“I find that because the defendants (DTB) were not heard, the rest of the orders issued by the learned trial judge cannot stand and there is no need to consider grounds 1, 2, 3, 4, 5, 6, 7, 8, 10 and 12 of the appeal.”

That said, Justice Madrama’s impact has been felt more at the Constitutional Court than at the Court of Appeal.   
Lawyer Krispus Ayena Odongo, a year before Justice Madrama could be appointed to the Constitutional Court, had filed a constitutional petition challenging the custom in which he alleged the Judiciary was being short-changed by other arms of government in terms of finances.

When the petition was eventually heard in 2019, the panel consisting of senior Justices Owiny-Dollo, Kakuru, Fredrick Martin Egonda-Ntende, Cheborion Barishaki and coming last on the list was Justice Madrama, the most junior.
When it came to writing the judgment, it was Justice Madrama who took the lead and other justices unanimously agreed with him when he ruled that the Ministry of Finance, in the sternest sense of the word, doesn’t have a say in the Judiciary’s budget.
“A declaration doth issue that the Judiciary is only obliged to send its financial estimates of revenue and expenditure to the President for laying before Parliament without any review or amendment by the President, though it may be accompanied by comments of the President as part of the proposed estimates of government annually for each succeeding fiscal year,” Justice Madrama ruled.

“A declaration issues the remuneration, salaries, allowances and current expenditures of the Judiciary are charged by the Constitution on the Consolidated Fund and don’t form part of the estimates to be included in the annual appropriation Bills.”
“It cannot purport to have maintained its databank of registered voters and for that reason, it was erroneous for the EC to retire its databank as this contravened its mandate to maintain the voters register under Article 61(1) of the Constitution,” he ruled.

Justice Madrama’s next step in his judicial career isn’t clear. Could he be promoted to the Supreme Court, the highest in the country, or will he remain at the Court of Appeal to do what he has been doing?
“The ambition is to go to the Supreme Court,” Justice Madrama, 59, says. “But I haven’t applied because I think I have spent very little time here [Court of Appeal], and I think there is a lot of work to do here and I want to be part of it. You first have to establish yourself here before going to the Supreme Court,”  he argues.

Sebaggala case ruling

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Recently, Justice Madrama was at In this landmark judgment, which has now become a reference in copyright cases, Justice Madrama told Ssebaggala that his case couldn’t succeed because he wasn’t the author of the voices that had been turned into a caller tune.   
The word ‘author’, according to Justice Madrama, is defined as the 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.

Mao vs electoral commission

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Norbert Mao

Recently, Justice Madrama was at it again when he moved to settle the constitutional question – which had been raised 6 years ago – whether the Electoral Commission (EC) can retire voters register as they did before the 2016 general elections.

The petition was filed by Democratic Party president general Norbert Mao (pictured), whose bid to stand for Gulu Municipality’s parliamentary seat was upended by the EC, which it accused him of not being part of the national register since he hadn’t participated in the National Identity Card project.

Mr Mao responded by filing a petition saying the idea that the EC can retire the register contravenes key tenets of the Constitution, more so Article 61(e) of the Constitution, which stipulates one of the functions of the EC is to “compile, maintain, revise and update the voter’s register.”  

Justice Madrama, once again, didn’t mince his words. “Without much ado, it’s plain that the EC failed in its duty for whatever reason, to maintain its databank in which the first petitioner [Mao] was clearly a registered voter.” Justice Madrama ruled.
“It cannot purport to have maintained its databank of registered voters and for that reason, it was erroneous for the EC to retire its databank as this contravened its mandate to maintain the voters register under Article 61(1) of the Constitution,” he ruled.

editorial@ug.nationmedia.com

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