KFC savours victory as JACAP fails to convince court in copyright infringement

The Jamaica Association of Composers, Authors and Publishers Limited (JACAP) has lost its legal battle to recover millions of dollars from Restaurants of Jamaica, trading as KFC, for “alleged copyright infringement”.

The case also examined government’s purported inability to put in place the proper regulatory regime for registration under the Copyright Act.

The claim was for an injunction, licensing fees for the period 2017 to 2022, restitution for unjust enrichment, and damages for the alleged infringement or a percentage of the profits earned for the period claimed.

The defendant applied for summary judgment and its attorneys-at-law, Philmore Scott and Camille Scott, instructed by Philmore Scott & Associates, staunchly argued that the court should enter summary judgment against JACAP because it had no real prospect of success, especially since it was unable to show that it was a duly registered licensing body under the Copyright Act. The attorneys emphasised that, without legislative protection, the claimant’s actions were illegal. The defendant said it had never entered into any licensing agreement with JACAP. The attorneys argued that the claimant failed to prove the copyrighted musical work that the defendant was alleged to have infringed.

Attorney Philmore Scott, in commenting on the ruling, said the government should move with alacrity to put the relevant regulatory regime in place, as the ruling has significant implications for the sector. Although the Senate passed an amendment to the act on November 3, which gives retrospective extension to 2015, the regulations need to be put in place to achieve total compliance with the act.

Attorney-at-law Tashana Grant, instructed by Samuda & Johnson, represented the claimant and opposed the application for summary judgment. The claimant, in its amended particulars of claim, purported to identify the copyrighted works infringed by referring to an audit purportedly conducted at one of the KFC’s branches for 24 hours on October 6, 2017. The hearing began on November 2 and the claimant was relying on the bill to amend the Copyright Act, which was passed in the Senate on November 3. The legislation, on receiving the governor general’s assent and being published in the Jamaica Gazette, will invalidate and indemnify the claimant’s previous conduct, as the amendment to the act would be retroactive.

Justice Dale Staple, in granting the summary judgment last week Friday, said “So, on the face of it, the claimant is asserting one 24-hour breach in one year at one restaurant and wants to get six years’ worth of money”.

The judge found that the claimant’s amended particulars of claim were devoid of any pleaded facts of the breaches they asserted.

In referring to the Copyright Act, the judge said JACAP had purported to be a licensing body within Section 87 of the act. The judge said JACAP and others had been operating as licensing bodies for quite some time, but there was never any formal framework for them to be registered and monitored.

“This is because, prior to 2015, the Copyright Act recognised such a concept as a licensing body (which is effectively what the claimant is) and copyright licensing, but there was no proper framework for how these licensing bodies were to be recognised and certified.”

The judge said what happened after the 2015 amendment to the act “can be considered, with the greatest of respect, to be quite a bureaucratic thicket which would make Sir Humphrey Appleby exceedingly proud”.

There was an initial extension order gazetted by the minister at some time in 2018, and then two subsequent orders, one in 2019 and the other in 2020. The latest order, dated June 5, 2020, purported to extend the period for registration to May 2, 2021, the judge said.

“However, as it turns out, the last two extensions granted by the minister may have been null and void. Section 154 of the act only allowed for one extension, either for six months or for whatever period as prescribed by the minister by Order). Consequently, at the expiration of the Order (sometime in 2019), the claimant and others, unless they had been certified and registered under Section 87A, would have been operating illegally and would be subject to criminal prosecution if they purported to grant licences or operated their licensing schemes. Indeed, the true position was that, when the initial six months expired, the extension came to an end as the minister’s 2018 Order could not have retroactive effect.

The judge said the 2023 legislation has been passed in both Houses of Parliament, but the governor general has not yet given his assent, and the assent has not yet been gazetted, which would give it legal effect. When the assent is published in the Gazette, the amendments created therein will be deemed to have come into operation from July 30, 2015 , the judge said, pointing out that it was now three weeks since the bill was passed in the Senate.

It was the judge’s finding that the claimant had never had any authority to grant licences for the period that is the subject of the claim, as it never received a certificate under Section 87A of the Copyright Act, and so was never a licensing body, within the meaning of the act, capable of granting licences under any licensing scheme. The judge said whatever action the claimant took would have been a breach under Section 87A (as the law currently stands), and therefore was illegal and not actionable in a civil suit.

“Therefore, their entire claim, since founded upon an illegality, is unsustainable and the defendant is entitled to summary judgment,” the judge ruled.

Legal costs were awarded to the defendant.

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