THE REPUBLIC OF UGANDA,

IN THE HIGH COURT OF UGANDA AT KAMPALA

(COMMERCIAL DIVISION)

CIVIL SUIT NO 206 OF 2010

CLASSIC ART WORKS LTD}....................................................................PLAINTIFF

VERSUS

1. MR. VINCENT LUKENGE}

2. CHILDREN OF GRACE}............................................................DEFENDANTS

BEFORE HON. MR. JUSTICE CHRISTOPHER MADRAMA IZAMA

JUDGMENT

The Plaintiff filed this action against the Defendants jointly and severally for general damages
for infringement of copyright in the literary works of the Plaintiff, an injunction restraining the
Defendant's whether by themselves, jointly or otherwise, from reproducing or authorising the
reproduction of the Plaintiffs literary works entitled "Facts and Myths about HIV/Aids, A
Practical Guide for Prevention, Health and Life vide copyright number ISBN 9970 – 416 – 40 –
X. In the alternative and without prejudice the Plaintiff seeks an account of profits made by the
Defendants by the alleged infringement and payment of the amounts found due on the taking of
such an account, an order for delivery to the Plaintiff of all copies of the said works in the
Defendants possession and any other relief that the court may deem fit to grant and costs of the
suit.

The facts disclosed in the plaint are that the Plaintiff is the author of a literary work entitled
"Facts and Myths about HIV/Aids, a Practical Guide to Prevention, Health and Life” and the
owner of copyright thereof. The Plaintiff alleges that the Defendants were found in possession of
the Plaintiff’s literary works and had reproduced and altered it in a substantial form without the
licence of the Plaintiff. Secondly the Plaintiff alleges that the Defendants had in their possession
a large number of copies of the book which were wrongfully printed or caused to be printed by
the Defendants without the licence of the Plaintiff and the Plaintiff demanded their works from
the Defendant by letter of 21st September 2009 and the Defendants wrongly detained and
distributed the books/works. The Plaintiff further avers that it only granted a licence to Global
Health Preventive Strategies Inc of the US to publish only 20,000 copies of the works and not to
Global Strategies for HIV Prevention. Consequently the Plaintiff claims that as a result of the
alleged acts, it suffered and continues to suffer tremendous loss due to a gradual decrease in the
sale of the works.

Decision of Hon. Mr. Justice Christopher Madrama

In the written statement of defence, the Defendants jointly denied the claim in the plaint and
admit that they only distributed approximately 1000 copies of the edition of the booklet, "Facts
and Myths about HIV/AIDS" supplied and donated to them by Global Strategies for HIV
Prevention who were duly licensed to publish it. They distributed the booklets for free to
sponsored orphans and other children in schools purely for public education and sensitisation
under express instructions and request of the licensee who donated and supplied them with the
books. In those circumstances the Defendants averred that they lawfully distributed all the copies
of the booklets long before the institution of the suit and no infringement was or is being done on
their part at all of the Plaintiffs copyright.

In a joint scheduling memorandum endorsed by both Counsels of the parties the following are
admitted facts:

1. Mutaryebwa Francis is the owner and creator of copyright in literary works titled "Facts
and Myths about HIV/AIDS, A Practical Guide to Prevention, Health and Life."
2. A licence from the said copyright owner was granted to Global Health Preventive
Strategies, to publish, print and distribute 20,000 copies of the works through a licence
agreement signed by Arthur J Amman on behalf of the licensee.
3. The second Defendant possessed approximately 10,000 copies of the book donated by
Arthur J Amman.

The basic facts asserted by the Defendant and contested by the Plaintiff were that the books were
distributed free of charge to sponsored orphans and other children in schools purely for public
education and sensitisation. On the other hand the fact asserted by the Plaintiff but contested by
the Defendant is that the copies complained about were found in possession of the Defendants.
Secondly that the Defendants have infringed copyright in works entitled "Facts and Myths about
HIV/AIDS; A Practical Guide to Prevention, Health and Life. Thirdly the licence was granted to
Global Health Preventive Strategies Inc of USA.

The following issues were agreed for trial and resolution of the dispute namely:

1. Whether the Plaintiff had a copyright over the suit book?

2. Whether the Defendants infringed the Plaintiff’s copyright?
3. Whether the Plaintiff is entitled to the reliefs sought?

After both the Plaintiff and the Defendant adduced evidence, Counsels opted to address the court
in written submissions.

On issue number 1 the Plaintiff submitted that evidence had been adduced which was
unchallenged to show that the Plaintiff had a copyright over the suit property. Secondly the
Plaintiff is a limited liability company in which PW1 is a shareholder and director. PW1 testified
that he is the author and illustrator of the book in question exhibited as exhibit PE 1. The book
was published by the Plaintiff Company. Commercial rights in respect of the copyright were

Decision of Hon. Mr. Justice Christopher Madrama

assigned to the Plaintiff Company by PW1 Mr Francis Mutaryebwa. The Plaintiff was supposed
to pay royalties to the author/PW1 and do the entire publishing and distribution of the book.

Under the said assignment the Plaintiff Company entered into a licensing agreement with Global
Health Preventive Strategies Inc on 5 February 2002 in which it granted a non-exclusive, non-
transferable licence to publish the works up to and limited to only 20,000 copies thereof.

The Plaintiff is for all intents and purposes the owner of the copyright in the works and is entitled
to exercise rights under section 14 of the Copyright and Neighbouring Rights Act 2006. Under
the provision the copyright owner may assign his or her economic rights in the copyright to
another person or assign to another person the economic rights in a copyright.

The Plaintiff's Counsel submitted that the works the subject matter of the suit has a copyright
under section 5 of the Copyright and Neighbouring Rights Act and falls under section 5 (1) (a)
which caters for articles, books, pamphlets and other works of a similar nature. Furthermore the
Plaintiff is an author as defined by section 2 of the Copyright and Neighbouring Rights Act. In
light of the above the Plaintiff’s Counsel submitted that for purposes of this suit the Plaintiff is
the owner of copyright complained about and has locus standi to bring the action against the
Defendants.

In reply the Defendants Counsel submitted that the Plaintiff does not have a copyright. The
ground for this submission is that the Plaintiff claims to be the author of the book in question and
therefore the owner of the copyright under paragraph 4 (a) of the plaint. PW1 claimed to be the
author and illustrator and this is also indicated in the cover of the book in question. PW1 claims
that the Plaintiff obtained a mere licence for commercial rights. On the other hand in the
submissions of the Plaintiff’s Counsel it is claimed that the Plaintiff had an assignment of
copyright. On that basis the Defendants Counsel submitted that the plaint discloses no cause of
action against the Defendants because a party is bound by its pleadings and is not at liberty to
depart from them.

Secondly PW1 testified that the book was his. PW2 testified that the book belonged to his father
namely PW1. Under section 4 of the Copyright and Neighbouring Rights Act, 2006, only the
author of works enjoys protection if the work is original and has been reduced in a material form.
The Plaintiff is not the author of the book in question. Counsel relied on the case of Macaura
versus Northern Assurance Company Ltd [1925] AC 619 for the proposition that a
corporation is a separate entity from its owners and even if a shareholder holds all the shares, the
shareholder is not the corporation neither can he or any creditors of the company have any
proprietary interest, legal or equitable in the assets of the corporation.

Thirdly the Plaintiff never adduced any evidence of the licence from the author of the book. No
evidence was led to prove existence of the licence. PW1 testified that the licence was given to
the Plaintiff for economic rights. Under section 9 and 14 (1) (b) of the Copyright and
Neighbouring Rights Act, economic rights are only for usage and do not include the right to

Decision of Hon. Mr. Justice Christopher Madrama

bring an action for infringement of copyright. Under section 10 (1) of the Copyright and
Neighbouring Rights Act, the right to seek relief in connection with any distortion, mutilation,
alteration or modification of the work is a moral right that cannot be granted by licence. Last but
not least the Plaintiff's Counsel submitted that the agreement was not a licence but an assignment
but did not produce any written deed of assignment as required by section 14 (3) of the
Copyright and Neighbouring Rights Act. Under section 35 of the Act, any contract to exploit the
rights created under the Act must be reduced in writing. Section 35 is mandatory and no such
contract was exhibited in evidence.

In conclusion the Defendant's Counsel maintained that the Plaintiff has no locus standi because it
is not the author of the works in issue and therefore did not have the right to bring an action as it
had no transfer/assignment of the licence of the author’s rights. Secondly licence of economic
rights cannot create a right to sue nor can the moral rights which include a right to bring an
action for infringement be given by such unwritten licence if any. The Plaintiff has no locus
standi or cause of action by which reason the Defendants Counsel prayed that the court be
pleased to dismiss the suit with costs.

In rejoinder the Plaintiff's Counsel submitted that all the three ingredients that are necessary to
disclose a cause of action are present in the Plaintiff’s case. The three elements of a cause of
action are as laid out in the case of Auto Garage versus Motokov [1971] EA at page 514.
Counsel reiterated submissions that the Plaintiff enjoyed commercial rights over the copyright
complained about which commercial rights had been vested in PW1. It did not matter whether
the assignment was oral or in writing. The commercial right assignment is clearly evident from
exhibit PE 3 which is a licensing agreement between the Plaintiff Company and Global Health
Preventive Strategies Inc.

Secondly there is an infringement of the right enjoyed by the Plaintiff. The Defendant's witnesses
admitted that they were not only in possession of the works complained of but also admitted to
distributing it to various students in school.

Thirdly PW1 tendered in documents such as local purchase orders, photos and bank statements
to demonstrate the state of sales during the period under question to demonstrate that the Plaintiff
suffered damages out of infringement of its rights.

On the question of not possessing a written deed of assignment, section 14 (4) of the Copyright
and Neighbouring Rights Act 2006, the assignment does not have to be in writing. It can be
inferred from circumstances and in this case it is inferred from exhibit PE 3. Furthermore
procedural rules of pleading cannot be used to defeat a cause of action. Counsel relied on the
case of Steel Wares Ltd versus CW Martyr & Co [1956] 23 EACA 175 at page 177 where it
was held that "procedural rules are intended to serve as handmaidens of justice, not to defeat it."
In the case of Allen Nansange v. Nanyonga [1977] HCB 319 Justice Sekandi held that the rules
of procedure are a guide to the orderly disposal of suits and the means of achieving justice

Decision of Hon. Mr. Justice Christopher Madrama

between the parties. They should never be used to deny justice to a party entitled to a remedy.
The Plaintiff's Counsel submitted that in that respect the preliminary point of the Defendants
Counsel on the first issue should be disregarded.

Resolution of points of law

The submissions of the Defendant’s Counsel deals with a point of law which if sustained would
have the effect of disposing of the suit. The question to be resolved in the submissions is whether
the Plaintiff has locus standi to bring this action or in another perspective whether the Plaintiff
has a cause of action against the Defendants. Resolution of the first issue primarily revolves
around a perusal of the plaint and the provisions of the Copyright and Neighbouring Rights Act,
2006 though it requires an evaluation of the evidence on the question of who is the copyright
owner and whether there was assignment of those rights as well. I will start with the point of law
which requires a perusal of the plaint and a reading of the provisions of the Copyright and
Neighbouring Rights Act, 2006.

On the first issue the Defendants Counsel relied on paragraph 4 (a) of the plaint to challenge the
assertion of the Plaintiff that it is the owner of the book in question and therefore the owner of
the copyright. Paragraph 4 (a) of the plaint avers as follows:

"(a) The Plaintiff is the author of a literacy work entitled "Facts and Myths about
HIV/AIDS, A Practical Guide to Prevention, Health and Life" and owner of copyright
therein."

In paragraph 5 of the plaint the Plaintiff avers that it only granted a licence to Global Health
Preventive Strategies Inc of Street Half Moon Bay CA 94019 USA to publish and print 20,000
copies and not to Global Strategies for HIV Prevention. The licence agreement was attached
"reflecting the copyright notice on the copyright page C and D". The licence was also admitted
as PE 3.

Lastly paragraph 4 of the plaint which gives the Plaintiffs claim against the Defendants jointly
and severally is for infringement of copyright in the literary works of the Plaintiff, an injunction
restraining the Defendants whether by themselves, either jointly or otherwise, howsoever from
reproducing or authorising the reproduction of the Plaintiffs literary works "Facts and Myths
about HIV/AIDS, a Practical Guide to Prevention, Health and Life." The copyright is indicated
as number ISBN 9970 – 416 – 40 – X.

On the question of ownership it is an agreed fact in the joint scheduling memorandum that Mr.
Francis Mutaryebwa who testified as PW1 is the owner and creator of copyright in the literary
works. Notwithstanding the agreement, the word "owner" is not defined under section 2 of the
Copyright and Neighbouring Rights Act. The word "author" is however defined by section 2.
"Author":

Decision of Hon. Mr. Justice Christopher Madrama

 "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;"

Section 4 of the Copyright and Neighbouring Rights Act provides that: "The author of any work
specified in section 5 shall have a right of protection of the work, where the 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." Subsection 2 of section 4 of the Copyright and Neighbouring Rights Act
provides that for purposes of the section a work is original if it is the product of the independent
efforts of the author. The admitted fact puts the question beyond doubt. Mr Francis Mutaryebwa,
PW1 is the creator and originator of the works and therefore the "author" of the works alleged in
the plaint to have been infringed. The question is therefore whether the Plaintiff, a company in
which PW1 is a director, is the owner of the literary works. Paragraph 4 (a) of the plaint is
disproved on the averment that the Plaintiff is the author of the works. It is clearly averred in
paragraph 1 of the plaint that the Plaintiff is a body corporate incorporated in Uganda under the
Companies Act.

I have further considered paragraphs 5 of the plaint which avers that the Plaintiff granted a
licence to Global Health Preventive Strategies Inc of the United States of America to publish
20,000 copies and not to Global Strategies for HIV Prevention. The Plaintiff attaches annexure
"C" and "D" to paragraph 5 of the plaint indicating that it is the licence agreement and a copy of
the book reflecting the copyright notice on the copyright page. Annexure "C" is a licence
agreement between Classic Art Works Ltd and Global Health Preventive Strategies Inc. It is also
exhibit PE 3. The licence agreement is signed by PW1 on 5 February 2002. It provides that the
licensor is the assignee of a Copyright from PW1 in respect of authored works. Secondly the
assignee has authority to licence the use of the works to others.

The agreement annexure “C” to the plaint stipulates that the “Assignee” or the Plaintiff granted
to Global Health Preventive Strategies Inc in paragraph 2 thereof a non-exclusive, non-
transferable licence to publish an edition of the works "Facts and Myths about HIV/AIDS, A
Practical Guide to Prevention, Health and Life" anywhere in the world. Secondly the rights
granted are limited to the publication of only 20,000 copies of the works. The agreement
indicates that the copyright owner is PW1. The agreement stipulates that the Plaintiff is an
assignee of the copyright owner. This by itself is at variance with the pleading to the extent that
the plaint does not mention as a necessary fact that the Plaintiff is an assignee of the copyright in
question. On the other hand the question would be whether the right of authorship of the works
can be assigned to another person. This is a question that can be resolved without proving
questions of fact.

It is a question of fact proven through admission that the Plaintiff is not the original author of the
works complained about. The Plaintiff is an assignee of the author of the works. The question is
whether the classification of the Plaintiff as the "author of a literary work" is fatal to the suit. On

Decision of Hon. Mr. Justice Christopher Madrama

the face of it, the assignee was granted the right as disclosed in annexure "C" or exhibit PE 3 to
licence the distribution and publication of the work anywhere in the world. The assignment
referred to in paragraph 1 of the citations in annexure "C" has however not been produced in
evidence. The Defendants Counsel submitted that it is a requirement under the law for the
assignment to be in writing. As a matter of proof, the Plaintiff’s Counsel submitted to the
contrary that such assignment need not be in writing and can be inferred from the circumstances
of the case according to section 14 (4) of the Copyright and Neighbouring Rights Act 2006. The
specific provision relied upon by the Plaintiff provides as follows:

"A licence to do an act falling within a copyright may be oral, written or inferred from
conduct or circumstances."

I have carefully considered the submissions. The wording of section 14 (4) of the Copyright and
Neighbouring Rights Act 2006 does not support the submission of the Plaintiff's Counsel. This is
because it provides for licensing an act falling within a copyright. It does not provide for
assignment of the copyright or transfer of the copyright. It provides for a licence to do an act
falling within a copyright. The right to sue as the owner or author of works will be specifically
addressed from the evidence. The preliminary question is whether a right to sue can be granted
orally? That question can be partially answered by considering the rules of this court under Order
3 of the Civil Procedure Rules which deals with recognised agents. Order 3 rule 2 (a) and (b) of
the Civil Procedure Rules defines "recognised agents" by whom appearances or acts in court may
be done. In (a) it provides for persons holding powers of attorney authorising them to make such
appearances and applications and do such acts on behalf of the parties and in (b) it provides for:
"persons carrying on trade or business for and in the names of parties not resident within the
local limits of the jurisdiction of the court within which limits the appearance, application or act
is made or done, in matters connected with such trade or business only, where no other agent is
expressly authorised to make and do such appearances, applications and acts." As far as (a) is
concerned there is no evidence or allegation of the Plaintiff holding a power of attorney neither
has any been attached. Secondly as far as (b) is concerned, the action has to be commenced on
behalf of a party who is not resident within the local limits of the jurisdiction of the High Court
where the suit has been filed. The author of the works however is a resident of Uganda within the
local limits of the jurisdiction of the High Court. Order 3 rule 2 deals with the right to bring a
representative action.

The Plaintiff’s action however has been formulated as an original action with the Plaintiff having
the right to bring the action and not as a representative action. For purposes of representative
suits, it is always a requirement under Order 7 rule 4 of the Civil Procedure Rules that the plaint
shall disclose the character in which the suit has been brought. Order 7 rule 4 of the Civil
Procedure Rules provides as follows:

Decision of Hon. Mr. Justice Christopher Madrama

 "Where the Plaintiff sues in the representative character, the plaint shall show not only
that he or she has an actual existing interest in the subject matter but that he or she has
taken the steps, if any, necessary to enable him or her to Institute a suit concerning it."

Such steps include obtaining a power of attorney or authority to sue on behalf of the parties. No
such authority has been pleaded or attached to the plaint and the conclusion is that the Plaintiff
brings this action in its own right and not as a representative of the author. Having concluded that
the suit is not a representative suit, the remaining questions are whether the Plaintiff has locus
standi or a right to bring this action and secondly whether it discloses any cause of action against
the Defendants jointly or severally. In determining these questions, the court will not only have
regard to the pleadings but also to the law and the evidence adduced. The question of cause of
action is a point of law and not necessarily a matter to be determined from the pleadings only.

Assignment of licence or transfer of a copyright is provided for by section 14 of the Copyright

and Neighbouring Rights Act. The head note of the Copyright and Neighbouring Rights Act
under section 14 thereof gives a hint that licenses or transfer of copyright are alternatives. The
head note reads as follows: "Assignment of licence or transfer of the copyright”. Section 14
gives four categories of things which a copyright owner may do under section 14 (1) thereof. The
first scenario is that the copyright owner may assign his or her economic rights in a copyright to
another person. The second thing that a copyright owner may do is to licence another person to
use the economic rights in a copyright. Thirdly the copyright owner may transfer to another
person or bequeath the economic rights in a copyright in whole or in part. Lastly the owner may
transfer to any Braille production unit in Uganda the economic rights in the Braille translation.

Submissions were made on the question of whether moral rights could be transferred and I will
deal with that question together with the submission of whether any assignment or transfer has to
be in writing. Under section 14 (2) of the Copyright and Neighbouring Rights Act, transfers of
moral rights are expressly excluded and the subsection provides as follows:

"The assignment, licence or transfer of the economic rights in whole or in part under
subsection (1) shall not include or imply the assignment, licence or transfer of the moral
right."

Secondly subsection (3) provides that an assignment or transfer of economic rights under
subsection (1) shall be in writing in the following words:

"An assignment or transfer of the economic right under subsection (1) shall be in writing
and signed by owner of the right or by the owner’s agent and by the person to whom the
rights are being assigned or transferred."

Starting with economic rights, section 2 of the Copyright and Neighbouring Rights Act defines
economic rights to mean rights specified under section 9. Section 9 provides as far as is relevant
to the issue at hand that:

Decision of Hon. Mr. Justice Christopher Madrama

 "The owner of a protected work shall have, in relation to that work, the exclusive right to
do or authorise persons to do the following:

(a) to publish, produce or reproduce the work;

(b) to distribute or make available to the public the original or copies of the work
through sale or other means of transfer of ownership;"…"

The right to publish, produce or reproduce the work or to distribute or make available to the
public the original or copies of the work through sale or other means of transfer of ownership is
an economic right. The licence agreement annexure "C" attached to the plaint assigns the rights
to publish and distribute the book anywhere in the world. Paragraph 3 of the agreement clearly
provides that the global health edition shall carry a copyright notice indicating that PW1 is the
author and illustrator of the works. It also indicates that the book was prepared in 2001 and is
published formally by Classic Art Works Ltd (the Plaintiff). The global health edition is to be
published by Global Health Preventive Strategies Inc under a licence from Classic Art Works
Ltd. Furthermore support for the printing and distribution of the booklet was provided by the
"Global Strategies for HIV Prevention". Though there is no written document of assignment, it is
apparent that the right which the Plaintiff has is a right to publish and distribute the works which
rights it acquired from PW1. Such a right is an economic right.

An assignment, licence or transfer of economic rights in whole or in part shall be in writing

under section 14 (3) of the Copyright and Neighbouring Rights Act. Annexure "C" or exhibit PE
3 in the citations in paragraph 1 clearly indicates that the Plaintiff is the assignee of the copyright
from PW1. It purports to have acquired a copyright. On the other hand the rest of the agreement
deals with the assignment of a right of publication of a particular work which is described therein
to yet another entity. I agree with the Defendants Counsel that there is no evidence of a written
assignment or transfer of copyright. There are two things to consider under section 14 (1) of the
Copyright and Neighbouring Rights Act. Either the owner of the works transferred or assigned
certain rights in a copy right. Secondly it has either to be an assignment of economic rights;
licensing another person to use economic rights; transferring to another person the economic
rights in copyright in whole or in part or transferring to any Braille production unit in Uganda the
economic rights in the Braille translation. The assignment or transfer of economic rights in
whole or in part does not imply the assignment, licence or transfer of the moral right to the
works. Lastly the assignment of economic rights or the transfer of economic rights has to be in
writing. It is only a licence which may be oral or inferred from conduct or the circumstances.

The Plaintiff's Counsel submitted on the question of whether the transfer or assignment had to be
in writing. He submitted in answer thereof that it is provided that the assignment may be oral or
inferred from the conduct or the circumstances. Under section 14 (4) of the Copyright and
Neighbouring Rights Act, it is only a license to do an act falling within a copyright which may
be oral, written or inferred from conduct or circumstances. In other words the submissions imply

Decision of Hon. Mr. Justice Christopher Madrama

that the Plaintiff was granted a licence to do an act within a copyright. I do not take this to be a
concession in light of other submissions that the Plaintiff is a licensee of the copyright owner. I
will limit the resolution of the issue to the question of whether any assignment or transfer of
economic rights has to be in writing.

Annexure "C" to the plaint which we have reviewed above is the only written evidence that the
copyright owner had assigned the Plaintiff a right to licence other persons to publish and
distribute the works. A reading of section 14 (1) of the Copyright and Neighbouring Rights Act
leads to the conclusion that any assignment of economic rights in a copyright to another person,
any licenses of another person to use economic rights in a copyright, shall be in writing.
Secondly the Defendants Counsel contended that the Plaintiff purported to exercise moral rights
which rights cannot be assigned or transferred. Section 2 of the Copyright and Neighbouring
Rights Act, 2006 defines "moral right" to mean the right to claim authorship or performance as is
provided in sections 10 and 23. Section 10 of the Copyright and Neighbouring Rights Act
defines the moral rights of an author. It provides as follows:

“10. Moral rights of author

(1) The author of any work protected by copyright shall have a moral right—

(a) to claim authorship of that work, except where the work is included
incidentally or accidentally in reporting current events by means of media or other
means;

(b) to have the author’s name or pseudonym mentioned or acknowledged each

time the work is used or whenever any of the acts under section 9 is done in
relation to that work, except where it is not practicable to do so; and

(c) to object to, and seek relief in connection with any distortion, mutilation,
alteration or modification of the work.

(2) The author of a work has a right to withdraw the work from circulation if it no longer
reflects the author’s convictions or intellectual concepts; and if the author does so, shall
indemnify any authorised user of that work who might, in any material way, be affected
by the withdrawal.

(3) The moral right under subsection (1) is not assignable to any person, except for
purposes of its enforcement.”

The rights in controversy in the suit are the rights of an author or publisher and not the rights of a
performer. The moral rights of a performer and laid out under section 23 of the Copyright and
Neighbouring Rights Act and we do not need to consider it here. Under section 10, moral rights
of an author include the right to claim authorship of the work, the right to have the author's name
or pseudonym mentioned or acknowledged each time the work is used or whenever any of the
acts mentioned under section 9 is done in relation to that work except where it is not practicable

Decision of Hon. Mr. Justice Christopher Madrama

to do so. Thirdly a moral right includes the right to object to, and seek relief in connection with
any distortion, mutilation, alteration or modification of the work. Lastly the moral rights
mentioned above are not assignable to any other person except for purposes of its enforcement.
From the above statements of the law, several conclusions may be made.

The first conclusion concerns the cause of action of infringement by way of modification averred
in paragraph 4 (b) of the plaint. That cause of action can only be pursued by the owner of the
copyright unless otherwise assigned for purposes of enforcement of the moral right. In other
words it is only possible where the assignee or transferee acts on the behalf of the owner for
enforcement of the right. In the absence of any evidence of authority to enforce the authors moral
rights, the right to object to, and seek relief in connection with any distortion, mutilation,
alteration or modification of the work only rests with the author of the works and the Plaintiff
has no cause of action against the Defendant with regard to the alleged alteration in the works.

With regard to the distribution of the works, the rights involved are economic rights of the author
or publisher which may be assigned under section 14 of the Copyright and Neighbouring Rights
Act. I agree with the Defendant's Counsel that assignment of economic rights has to be in writing
and that no evidence has been adduced by any of the Plaintiff’s witnesses of such an assignment
to the Plaintiff. The evidence of exhibit PE 3 is of an assignment by the Plaintiff to another
person not before the court. In the same breath I disagree with the Plaintiff's Counsel that
assignment of economic rights in a copyright to another person or the licensing of another person
to use economic rights in a copyright can be made orally, or inferred from conduct or
circumstances. Section 14 (4) of the Copyright and Neighbouring Rights Act conclusively
restricts any assignment or transfer to a licence to do an act falling within the copyright. The
Plaintiff does not claim to be an assignee of a licence to do an act falling within a copyright.

The Plaintiff neither pleaded nor claimed that that it has a licence from the copyright owner or
author of the works for the distribution of the works. Specifically paragraph 4 (a) of the plaint
avers that the Plaintiff is the author of a literary work which averment is not true and has been
disproved by the agreed facts that the author of the works is Mr Francis Mutaryebwa. This is also
evident from annexure "C" to the plaint. In annexure "C" to the plaint the moral rights of the
author PW1 and specifically acknowledged. Secondly paragraph 4 of the Plaintiff's plaint claims
general damages for infringement of copyright in literary works of the Plaintiff. It does not claim
damages for infringement of a publishers rights or the right of distribution. In any case such
rights are economic rights and there is no evidence of a written assignment of the rights from the
author. Such a written assignment or transfer in terms of section 14 of the Copyright and
Neighbouring Rights Act would also fulfil the requirements of Order 7 rule 4 of the Civil
Procedure Rules by assigning the right to bring an action to enforce the moral rights of the
Plaintiff under section 10 of the Copyright and Neighbouring Rights Act as a representative. The
enforcement of moral rights would therefore be brought in a representative capacity. In that
regard the plaint does not show that the Plaintiff sues in a representative character as far as moral
rights are concerned. Furthermore the plaint clearly avers that the Plaintiff is the author of a

Decision of Hon. Mr. Justice Christopher Madrama

literary work. However if the right to authorship or moral rights had been purportedly transferred
to the Plaintiff, it would be in violation of section 10 (3) of the Copyright and Neighbouring
Rights Act. In any case the plaint discloses that the Plaintiff sues in its own right and not as an
assignee for purposes of enforcement of moral rights as envisaged by section 10 (3) of the
Copyright and Neighbouring Rights Act.

Last but not least all the evidence adduced which remains unchallenged is that the Defendants
had copies of the publication of the works. The right of the Plaintiff under the licence is in
relation to any cause of action affecting its right to publish or to ensure that its published works
are not affected adversely. However the works in possession of the second Defendant were
donated to the Defendants and published by someone else. The parties who published or donated
the works have not been made Defendants. No evidence has been led of any publication by any
of the Defendants. The Defendants admitted having the works in their possession. The
unchallenged evidence is that the works were donated by Global Strategies for HIV Prevention
through its founder Arthur J Amman. It was intended for the sensitisation of children victims of
HIV/AIDS. The evidence of Michael A McCoy the CF/director and co-founder of the "Children
of Grace (Uganda) an NGO) that the second Defendant never printed, reproduced or distributed
for sale or plagiarised or done anything to the original work or otherwise in a way that infringes
the Plaintiff or anybody's right has never been rebutted. Secondly the first Defendant is a mere
director of the second Defendant and always acted as such. The evidence of the first Defendant
Mr Vincent Lukenge is that it never published or altered the works as alleged by the Plaintiff.
The second Defendant is a charitable organisation and receives donations from well-wishers. The
books were donated by Arthur J Amman of Global Strategies for HIV Prevention from America.

In the premises the points of law challenging the right of the Plaintiff to sue succeeds. Before
concluding the matter it is proper to infer from the evidence that the action of the Plaintiff was
spurred by the fact that the Defendants were found in possession of many copies of the works.
The Defendant had admitted that they had 10,000 copies of the works as a donation by Global
Strategies for HIV Prevention. Even if the suit is not resolved on a point of law, the evidence
supports the contention that the Plaintiff has no cause of action against the Defendants.

The Plaintiff avers in paragraph 5 of the plaint that it only granted a licence to Global Health
Preventive Strategies Inc of the United States of America to publish and print 20,000 copies and
not to Global Strategies for HIV Prevention. However Global Strategies for HIV Prevention are
not parties to the action. Paragraph 5 implies that the Plaintiff was aware that Global Strategies
for HIV Prevention was somehow involved either in the publication or printing or distribution of
the works. The Plaintiff attached annexure "C" to the plaint and subsequently exhibited as exhibit
PE 3 as evidence that it granted a licence to Global Health Preventive Strategies Inc. In such a
case, the Plaintiffs cause of action in so far they are responsible for granting a licence to publish
the works would be against Global Strategies for HIV Prevention which is not a party. In any
case the Plaintiff does not aver that the Defendants are sued in any capacity as the representatives
of Global Strategies for HIV Prevention. Global Strategies for HIV Prevention would in the very

Decision of Hon. Mr. Justice Christopher Madrama

least have been a necessary party. Last but not least the books were donated to the second
Defendant which is an NGO involved in charitable work. The second Defendant likewise
distributed the books free of charge for a charitable purpose. The second Defendant is involved
in sponsoring vulnerable children. They received the books by post from a donor. Particularly a
founder of the donor organisation Dr Amman donated the books. DW 2 who is also the first
Defendant specifically testified that the books were not for sale. The second Defendant to whom
the books had been donated had no choice in the matter. The books were simply donated for
charitable purposes to which they were applied. As to whether the books were published under a
licence from the Plaintiff is a matter that can be properly considered in a suit between the
Plaintiff and the donors. Had there been such a suit, the issue would be determined as to whether
the donors had violated any of the Plaintiff’s rights. The question of whether the donor had the
right of distribution would also be resolved. Such issues cannot be resolved as between the
Plaintiff and the Defendants in this suit. In the absence of clear evidence of violation of the
publishers rights by either Global Strategies for HIV Prevention whose juridical capacity has not
been disclosed in evidence (whether it is a Corporation or not) or Global Health Preventive
Strategies Inc, with which the Plaintiff had a licence agreement, injunctions cannot be granted
against the Defendants. In any case the averments in paragraph 5 that a licence was granted only
to "Global Health Preventive Strategies Inc" and not to "Global Strategies for HIV Prevention"
are matters to be addressed with those two parties and not the Defendants.

In the premises, the plaint and the evidence does not disclose any cause of action against the
Defendants and the suit of the Defendant is accordingly dismissed with costs.

Judgment delivered this 11th day of April 2014

Christopher Madrama Izama

Judge

Judgment delivered in the presence of:

Charles Okuni: Court Clerk

Moses Kuguminkiriza for the plaintiff

Plaintiffs MD Mr Mutaryebwa in court

Neither defendants nor counsel in court

Decision of Hon. Mr. Justice Christopher Madrama

Christopher Madrama Izama

Judge

11th April 2014

Decision of Hon. Mr. Justice Christopher Madrama