Court Slaps MK Publishers with UGX 100M Damages for Infringing Author's Children's Folktales, Affirms that Copyright Protection in Uganda Is Automatic Once an Original Work Is Fixed in Material Form.

Waboga David
Oct 2
8 min read

Introduction

Copyright is a legal right granted to the creator of an original work to control its use and exploitation. It gives the author exclusive rights over reproduction, adaptation, distribution, performance, and communication of their work, while also protecting their moral rights such as authorship and integrity. In Uganda, copyright protection is governed by the Copyright and Neighbouring Rights Act, Cap. 222.

The law on copyright in Uganda is quite straightforward. Once an original work is reduced into material form, it automatically enjoys protection without the need for registration or any other formalities. The law further requires that any license or assignment of copyright must be in writing and signed by the rights holder; reliance on oral arrangements or implied consent is insufficient. This ensures that authors retain control over their works and are duly recognized and compensated for their creativity.

In the recent decision of the High Court of Uganda in Annette Najjemba v MK Publishers Ltd (Civil Suit No. 508 of 2016), the Court reaffirmed these principles. The dispute arose when the Defendant adapted and sold the Plaintiff’s children’s stories without her written consent, while attributing authorship to itself. The Court was called upon to determine whether such conduct amounted to copyright infringement and whether the Plaintiff’s economic and moral rights had been violated.

Facts

In 2010, the plaintiff, Annette Najjemba, an author, created an original literary work titled Our Folktales, comprising six short children's stories: The Gooseberry Triplets, Mukoijo the Glutton, The Cruel Step Mother, Muvubi and his Fish Friends, Kaleku and the Enormous Beast, and The Snake and the Beautiful Girl. The manuscript was reduced to material form and remained unpublished.

In 2012, the plaintiff submitted an abridged version of the manuscript to the defendant, MK Publishers Limited, for potential publication and marketing. The defendant requested tweaks to the stories, which the plaintiff provided via email on May 4, 2012. The plaintiff was informed she would be contacted if a market was secured.

In 2013, the plaintiff discovered that, without her license, consent, or authorization, the defendant had adapted four of her stories (Mukoijo the Glutton, The Cruel Step Mother, Muvubi and his Fish Friends, and Kaleku and the Enormous Beast) to suit Rwandan cultural preferences (e.g., renaming characters: Mukoijo to Mugabe, Muvubi to Umuro, Kaleku to Kagaba).

These adapted stories were reproduced as audio stories on compact discs (CDs) titled MK Audio Stories Primary Five and MK Audio Stories Primary Six, attributed solely to the defendant, and sold to the Government of the Republic of Rwanda under a contract dated December 15, 2012. The CDs were distributed to Rwandan government schools for Primary Five and Six curricula.

The plaintiff instituted suit in 2016, alleging infringement of her economic and moral rights, seeking royalties, damages, and other remedies. The Attorney General of Rwanda was initially joined but the claim against them was withdrawn in February 2024, leaving only the defendant.

The defendant denied infringement, claiming the plaintiff impliedly consented to editing and reproduction by submitting her work, and that she was entitled to 10% royalties under company policy, which were available for collection.

Issues

Whether the defendant infringed on the plaintiff's copyright?
What remedies are available to the parties?

Legal Representation

Plaintiff was represented by Edwin Tabaro and Norbert Nyakuni of M/s KTA Advocates.
Defendant was initially represented by Karugaba Levis of M/s Beaver Advocates and M/s Nalukoola Advocates & Solicitors; later by Zakaria Suuna from the defendant's Legal Department.

Submissions

Plaintiff's Submissions

The plaintiff's counsel relied on Sections 3, 4, 8, 9, and 45 of the Copyright and Neighbouring Rights Act, Cap. 222, arguing that the plaintiff's work qualified as an original literary work eligible for protection.

The plaintiff authored the stories through independent effort, skill, and labor, as confirmed by the defendant’s witness. The work was unpublished and thus original under Stella Atal v. Ann Abels Kiruta (HCCS No. 967 of 2004).

The defendant reproduced, adapted, distributed, and sold substantial parts of four stories without license or consent, violating exclusive rights under Section 8. Moral rights were infringed by false attribution to the defendant (Section 9). Evidence included emails (PEX 3–4), CD jackets (PEX 6), and transcriptions (PEX 1, 5, 9).

Sought 30% royalties on profits from CD sales at 26% interest, delivery up/destruction of infringing copies, inquiry into damages/account of profits, permanent injunction, general damages (UGX 100,000,000), aggravated/exemplary damages, and costs.

Defendant's Submissions

The defendant's counsel invoked Section 13(4) of the Act, positing that the plaintiff's submission of the manuscript implied consent (oral or inferred license) for editing, adaptation (e.g., Rwandan names for market fit), and reproduction into audio format. They claimed that the plaintiff was informed of the sale to Rwanda and entitled to 10% royalties (DEX 2), making the suit unnecessary.

No formal contract existed, but a "gentleman's agreement" governed the arrangement.

No infringement occurred, as actions aligned with publishing standards and the plaintiff's knowledge.

Court's Findings

Issue 1: Whether the Defendant Infringed on the Plaintiff's Copyright?

The court observed that the facts were largely undisputed; the plaintiff authored the literary work Our Folktales, a manuscript comprising five short children's stories (The Gooseberry Triplets, Muvubi and his Fish Friends, Mukoijo the Glutton, Kaleku and the Enormous Beast, and The Cruel Step Mother), as evidenced by PEX 1 and corroborated by the defendant's witness (DW1) during cross-examination.

The court established that these stories constituted original works under Section 3(3) of the Act, originating from the plaintiff's independent intellectual effort, skill, labor, and knowledge, and had not been previously published, a point confirmed by DW1.

The court clarified that automatic protection subsists upon fixation in material form, without any registration formalities, as explicitly provided under Section 3(2). It noted the plaintiff's submission of an abridged manuscript to the defendant on May 4, 2012 (PEX 4), following the defendant's request (PEX 3), and her expectation of notification upon securing a market.

However, the court found that in 2013, the plaintiff discovered the defendant's unauthorized actions; altering four stories to align with Rwandan cultural norms (e.g., renaming Mukoijo the Glutton to Mugabe the Glutton, Muvubi and his Fish Friends to Umuro and his Fish Friends, and Kaleku and the Enormous Beast to Kagaba and the Enormous Beast, while leaving The Cruel Step Mother unchanged), reproducing them as audio stories on compact discs (PEX 5, PEX 6), and selling them to the Government of the Republic of Rwanda via a contract dated December 15, 2012 (DEX 1; PEX 9).

Drawing on the two-pronged test for infringement from Zeenode Limited v. The Attorney General & 2 Others (HCMA No. 347 of 2021), the court first reaffirmed the plaintiff's ownership of a valid copyright in the manuscript under Sections 3(1) and 4(1).

On the second prong, copying of the protected work, it observed substantial taking through unauthorized reproduction, adaptation, and commercial distribution, as prohibited by Section 45(1)(a)–(b).

The court noted DW1's admissions during cross-examination that the stories were edited by Rwandan authors without the plaintiff's permission, converted to audio format, and sold without payment or acknowledgment. It established that no valid license existed, while Section 13(4) permits oral or inferred licenses from conduct, DW1 conceded no explicit permission was sought, and the defendant's "gentleman's agreement" claim lacked evidentiary support under the writing requirement for assignments or transfers in Section 13(3).

The court further clarified that these acts violated the plaintiff's exclusive economic rights under Section 8, including reproduction, distribution via sale, and public exhibition for commercial gain.

Regarding moral rights, the court found a clear infringement under Section 9(1)(a)–(b), as the CD jackets (PEX 6) falsely attributed authorship solely to the defendant, omitting the plaintiff's name or pseudonym, a fact DW1 admitted was erroneous during cross-examination.

The court observed that such misattribution prejudiced the plaintiff's honor and reputation, transforming her original work into a derivative product marketed as the defendant's own.

In conclusion, the court held that the defendant infringed both the economic and moral rights in the four specified stories (Muvubi and his Fish Friends, Mukoijo the Glutton, Kaleku and the Enormous Beast, and The Cruel Step Mother), resolving Issue 1 in the affirmative.

Issue 2: What Remedies Are Available to the Parties?

The court noted the plaintiff's claims for royalties, delivery up, damages inquiry, injunction, aggravated/exemplary/general damages, interest, and costs, but tailored remedies to the evidence and statutory framework under Section 44 of the Act.

On delivery up or destruction of infringing copies (Section 44(2)), the court observed that this equitable remedy was unavailable, as the compact discs had been fully transferred to the Government of Rwanda with complete property rights (DEX 1; PEX 9, a July 8, 2016, letter from Rwanda's Ministry of Justice).

It clarified, citing Prof. David Bakibinga and Dr. Kakungulu Muyambala's Intellectual Property Law in East Africa (LawAfrica, 2016, p. 71), that in such cases, the infringer must instead account for profits derived from the sale.

For the account of profits, the court rejected the defendant's 10% royalty computation (DEX 2) under its company policy, finding it unsubstantiated absent a formal agreement. It established that, given the infringement's scope, including moral rights violations and the 2012 sale accrual, the plaintiff was entitled to 30% royalties on profits from VCD-MK Audio Stories Primary Five and Primary Six, plus 24% commercial interest per annum from December 2012 (the cause of action) until payment in full.

The court granted a permanent injunction under Section 44(1), restraining the defendant, its agents, and employees from further reproduction, distribution, or dealings in Our Folktales, noting the ongoing risk of repetition despite the Rwanda sale.

Turning to general damages under Section 44(4), the court awarded UGX 70,000,000, quantifying the loss as the hypothetical remuneration the plaintiff would have received had the defendant sought a proper license (Bwavu Mpologoma Growers’ Co-operative Union Limited v. Gasston and Barbour & Others [1959] EA 307; Obsessions Company Ltd v. Warid Telecom HCCS No. 373 of 2010; Garfield Spence v. Airtel Uganda Limited & Others HCSS No. 545 of 2015). It added 6% statutory interest per annum from the judgment date under Section 26(2) of the Civil Procedure Act.

For exemplary damages, the court found the defendant's prolonged unjust enrichment, from 2013 discovery to 2025 judgment, warranted punishment and deterrence, awarding UGX 30,000,000 (Luzinda Marion Babirye v. Ssekamatte (Alias Mulwana Samuel) & Others Civil Suit No. 366 of 2017; Obongo Orude & Another v. Municipal Council of Kisumu [1971] EA 91). It clarified that such awards must not enrich the plaintiff excessively or exceed criminal sanctions equivalents, and imposed 6% interest from judgment.

However, the court denied aggravated damages, observing that while the defendant's conduct was callous, it did not rise to "impunity" involving oppression, arbitrary action, or statutory imposition (Costa Construction Services Ltd v. Globe Trotters Limited HCCS No. 790 of 2015).

Finally, on costs, the court awarded them to the plaintiff under Section 27(2) of the Civil Procedure Act, as the successful party whose conduct did not precipitate the suit (Uganda Development Bank v. Muganga Construction Co. Ltd [1981] HCB 35), emphasizing that costs follow the event absent good reason otherwise.

Holding

The Court held that MK Publishers Limited infringed both the copyright and moral rights of the Plaintiff.
Plaintiff was entitled to an account of profits (royalties), general damages, aggravated damages, interest, and costs of the suit.
The prayer for delivery up/destruction of infringing materials was denied since property rights had already been transferred to Rwanda.

Key Takeaways

Copyright protection in Uganda is automatic once an original work is reduced into material form; no formalities are required.
Written authorization is mandatory for assignment or transfer of economic rights (Section 13(3) of the Copyright and Neighbouring Rights Act). Oral or implied licenses cannot substitute written assignments for core economic rights.
Moral rights are distinct from economic rights – even if royalties were payable, failure to acknowledge the author constitutes infringement.
Substantial alteration of works without consent amounts to infringement, even where the intent is market adaptation.
Delivery of orders may be denied where infringing copies are already sold, but the infringer will be compelled to account for profits.
This decision reaffirms the Court’s willingness to award aggravated and exemplary damages where infringement is deliberate and commercially exploitative.