Tag: ip

05 Apr 2024
Copyright Act 2022
Publications GRF Dalley & Partners 0 comment

AN OVERVIEW OF THE CHANGES INTRODUCED BY THE COPYRIGHT ACT 2022

Introduction

Over the years, Nigeria’s copyright regime has been fraught with numerous challenges ranging from enforcement of existing laws to the application of outdated provisions to modern-day situations. Despite the challenges, copyright remains an important part of intellectual property rights and as such the positive aspects that an effective copyright regime will have on the growth of the creative economy can no longer be ignored.

In view of the urgent need to review the existing copyright law, Former President Muhammadu Buhari assented to the Copyright Bill 2022 on March 17, 2023 thus giving rise to the Copyright Act 2022.

A cursory overview of Section 1 of the Act shows that it seeks to address the aforementioned challenges by protecting intellectual property rights and ensuring the following:

  1. That authors are rewarded and recognised for their work;
  2. To guarantee access to creative works by providing appropriate limitations and exceptions;
  3. To aid Nigeria’s compliance with international copyright treaties and conventions; and
  4. To improve the administrative, regulatory and enforcement capacity of the Nigerian Copyright commission.

 

Changes introduced by the Copyright Act 2022

 

  • Rights in pre-existing material or data in a compilation

Section 2(5) of the Act states that copyright in a compilation does not confer any exclusive rights in pre-existing material or data. This was not previously stated in the former Act.

  • Recognition given to wired and wireless means of publicly distributing copyrighted material

The Copyright Act now recognises wired and wireless means of publicly distributing copyrighted material. This brings the Act in line with current realities of digital distribution. An example of this can be found in Section 9(i) where owners of copyright in literary or musical work have the exclusive right to make the work available and accessible to the public via wired or wireless means.

  • Objection to false attribution

The Act introduces an additional moral right for authors. By virtue of Section 14(2) a person has the right to object to false attribution of work.

  • Determination of distribution of remuneration for any broadcast of the sound recording by the Copyright Commission

Section 15 of the Act provides for the right of a performer and a copyright owner to equitable remuneration for broadcasting of sound recordings that had been published for commercial purposes. Distribution of remuneration is expected to be governed by the terms of agreement existing between users of the sound recording on one hand and the performer and the copyright owner on the other hand. However, the Act now permits the Copyright Commission to determine distribution of remuneration in the absence of any agreement to that effect.

  • Right to share in proceeds of sale

Section 17 of the Act now expressly provides for the right of authors of artistic works, manuscripts of literary works or of musical compositions to share in proceeds of sale by public auction or through a dealer after the first transfer by the author. This gives authors of copyrighted works in Nigeria to now benefit from resales.

  • Reduction in duration of copyright in works of government, state authorities and international bodies

Section 19(1)(b) has reduced the duration of copyright in works of government, state authorities and international bodies from seventy (70) years to fifty (50) years from publication or creation.

  • Duration of copyright in audiovisual works, photographs and sound recordings that have not been made public

Section 19(1)(c) and (d) of the Act sets the duration of copyright in audiovisual works, photographs and sound recordings that have not been made public to fifty (50) years after creation.

  • Factors to consider in determining fair dealing

The Act now clearly states factors to consider in determining fair dealing in respect of literary or musical works, artistic works, audiovisual works, sound recordings and broadcasts. Fair dealing covers purposes such as:

  • Private use;
  • Parody, satire, pastiche, or caricature;
  • Non-commercial research and private study;
  • Criticism, review or the reporting of current events.

 

By virtue of Section 20(1), the following factors have to be considered in determining if use of a work amounts to fair dealing:

  • Purpose and character of its usage,
  • Nature of the work,
  • Amount and substantiality of the portion used in relation to the work as a whole, and
  • Effect of the use upon the potential market or value of the work.

 

  • Special exceptions for blind, visually impaired, or otherwise print disabled persons

The Act in Section 26 promotes accessibility of copyrighted works by introducing special exceptions to copyright for blind, visually impaired, or otherwise print-disabled persons. An authorised entity is permitted to make or procure an accessible format copy of a work or subject matter and supply the copy to beneficiary persons by any means, including non-profit lending, or electronic communication by wire or wireless means without first obtaining the permission of the owner of the copyright. It must be noted that such exception is not for commercial purposes and the accessible format is for the exclusive use of the beneficiary.

  • Grant of compulsory licence for public interest or rectification of abuse of dominant market position

Section 35 of the Act now provides for the grant of compulsory licences by the Copyright Commission for public interest or the rectification of abuse of dominant market position. The Commission would take into consideration certain factors including the use of the work which shall be non-exclusive and non-assignable and shall be exclusively for the Nigerian domestic market. A proposed user must have made reasonable effort yet failed to obtain permission from the owner of copyright on reasonable commercial terms and conditions.

The authorisation granted by the Commission can be withdrawn once the circumstances that gave rise to the grant no longer exist. The need for an attempt to be made to secure the permission of the copyright owner may be dispensed with in the event of national emergency or other circumstances of extreme urgency. Dissatisfied parties can apply to the Federal High Court for a review.

  • Disputes arising from exercise of rights under the Act are now arbitrable

By virtue of Section 37(7) any disputes arising from the exercise of rights under the Act are now a subject of arbitration and such disputes may be resolved by any means agreed to by the parties to the dispute.

  • Increase in fines and terms of imprisonment

Throughout the Act, the penalties attached to various forms of infringement have been increased to reflect current fiscal realities. Terms of imprisonment ascribed to copyright infringement have also been amended.

  • Penalisation of circumvention of technological protection measures

Circumvention of technological protection measures protecting access to copyrighted work has now been penalised by Section 50 of the Act. This includes manufacturing, importing, selling, offering for sale any technology, product, service, device, or part for the purpose of circumvention of copyright protection.

The Act defines a technological protection measure as “a technology, device, product or component incorporated into the work which is designed to effectively prevent or inhibit the infringement of any copyright or related right”.

  • Notice for restriction on importation of infringing goods to be given to the Director-General of the Copyright Commission

By virtue of Section 53, copyright owners are now to give notice to the Director-General of the Commission who will then notify the Nigerian Customs Service. Under the old Act, notice was given directly to the Nigerian Customs Service.

  • Provisions relating to online content

One of the notable changes introduced by the Act are its provisions relating to online content as contained in Part VII. The Act now covers notice to take down which gives copyright owners the right to issue notice of infringement to relevant service providers requesting them to take down or disable access to any infringing content or link to the content, hosted on its system or network.

The Act sets out a procedure to be followed by service providers for the suspension of accounts found to be repeat infringers. Misrepresentation of infringement ascribes liability in damages for injuries suffered by the person as a result of the service provider relying on such misrepresentation.

The Commission has the power to block or disable access to any content, link or website hosted on a system or network, which it reasonably believes to infringe copyright.

  • Changes to Performers’ rights

The Act has introduced a number of changes to performers’ rights. Section 63 of the Act now gives performers the exclusive right to control acts of:

  • fixation of unfixed performance;
  • distribution of such fixation or copies to the public by sale or other transfer of ownership; and
  • renting of fixation and making available the fixed performance to the public via wired or wireless means.

Duration of copyright in performance is set at fifty (50) years from the end of the year when the performance was first fixed.[1]

A performance is protected if on the date of the performance, at least one of the performers is a citizen of or is habitually resident in Nigeria, or the performance takes place or is first fixed in Nigeria or in a country that is a party to an international treaty/agreement to which Nigeria is also a party.[2]

Section 65 of the Act now provides for a presumed consent on the part of a performer to rebroadcast their performance, fix and reproduce the performance for broadcasting purposes.

  • Expansion of the powers of the Copyright Commission to include dispute settlement

By virtue of Section 78(1)(c) of the Act, the Copyright Commission now has the power to investigate and redress cases of infringement and settle disputes that have not been specifically reserved for settlement.

  • Amendment to the membership of the Governing Board of the Nigerian Copyright Commission

Section 79 of the Act replaces the representative of the Ministry of Education with a representative of Federal Ministry responsible for Culture.

Tenures of the Chairman and other members of the Board who are not ex-officio members is now expressly provided under Section 80 of the Act as follows:

  • For a term of four (4) years in the first instance and may be re-appointed for a further term of four years and no more; and
  • On such terms and conditions as may be specified in their letters of appointment.

 

  • Dispute Resolution Panel

Section 90 of the Act gives the Commission the power to constitute a Dispute Resolution Panel to resolve any dispute arising from royalty payments, licence terms, any matter in respect of which a determination by the Commission is required under the Act.

  • Power to make regulations

The Act has given the Commission the power to make regulations with the consent of the Minister.[3] Prior to this, it was the Minister who made regulations.[4]

  • Execution against the property of the Commission

Under the old Act, there was a blanket restriction on execution against the property of the Commission in any action or suit against the Commission. However, Section 100 of the Act now requires that at least three (3) months’ notice of intention to execute or attach property must be given to the Commission before execution.

  • Amendments to the Interpretation Section

The Act has also introduced amendments to the interpretation section, namely:

  • The definition of cinematograph is now subsumed by audiovisual work.
  • Broadcasting authority is now broadcasting organization.
  • Collective work has been added to mean “a collection of literary or artistic works, which by reason of the selection and arrangement of their contents, constitute intellectual creations and as such protected without prejudice to the copyright in each of the works forming part of such collection”.
  • The definition of “communication to the public” has been expanded to reflect modern technology by being defined as “making a work or a performance available to the public by wire or wireless means in such a way that members of the public may access the work or performance from a place and at a time individually chosen by them”.
  • The term “copy” now includes digital forms.

The definition of service provider has been included among the terms defined and it refers to “a provider of online services or network access, including operators of such facilities, and any entity offering the transmission, routing, or providing of connections for digital online communications, between or among points specified by a user, of material of the user’s choosing, without modification to the content of the material as sent or received”.

Conclusion

From the foregoing, it can be noted that part of the key reforms introduced by the Copyright Act 2022 seek to address issues brought about by the potentials of technological advancement.

The emergence of various digital platforms has played a significant role in copyright infringement, however, the Copyright Act 2022 exemplifies a commitment towards fostering an enabling environment for creative work in Nigeria. It is hoped that these reforms will be accompanied by much needed efforts in enforcement.

 

Footnote:

[1] Section 70 of the Act.

[2] Section 64 of the Act.

[3] Section 97 of the Act.

[4] Section 45, Copyright Act, Cap C28 Laws of the Federation of Nigeria 2004

02 Dec 2020
Publications GRF Dalley & Partners 0 comment

Notice for Takedown Schemes: Guarding Against Intellectual Property Infringement in Ecommerce

Introduction

With the improvement of technology and increase in cross-border transactions, there is a growing shift towards using ecommerce channels in conducting business activities. This brings along with it benefits such as appealing to a wider customer base without incurring the overhead costs involved in running and expanding brick-and-mortar businesses. Developments in fintech solutions have been instrumental to facilitating the adoption of ecommerce in Nigeria. The cost of integrating payment solutions to platforms has drastically reduced over the years and as such it has become more accessible to the general public who intend to use these solutions to receive payments for products and services sold through the internet. Ecommerce has particularly proved itself as a viable means of continuing sales during the COVID-19 pandemic where movement was limited.

Internet user penetration in Nigeria is estimated to be 46.6% in 2020 and is expected to be 65.3% by 2025.[1] With this, Nigerian ecommerce spending is estimated to be $12 billion as at 2020.[2] However, despite the benefits of ecommerce, it is accompanied by various challenges including intellectual property infringement. In this article, we will be examining intellectual property infringement and how it can be avoided in ecommerce through notice for takedown schemes.

 

Intellectual property infringement under various laws

Simply put, intellectual property infringement occurs when a person uses, produces or sells content, designs, methods, procedures, products, etc. without the permission of the owner. In Nigeria, the main laws governing intellectual property are as follows:

  1. Copyright Act, Cap. C28 Laws of the Federation of Nigeria 2004
  2. Trade Marks Act, Cap. T13 Laws of the Federation of Nigeria 2004
  3. Patents and Designs Act, Cap. P2 Laws of the Federation of Nigeria 2004

Under the Copyright Act, an infringement is said to occur when a person does any of the following without the licence or authorization of the copyright holder:

  1. Does or causes any other person to do an act that is controlled by copyright;
  2. Imports into Nigeria, otherwise than for his private or domestic use, any article in respect of which copyright is infringed;
  3. Exhibits in public any article in respect of which copyright is infringed;
  4. Distributes an article by way of trade, offer for sale, hire or otherwise or for any purpose prejudicial to the owner of the copyright;
  5. Makes or has in his possession, plates, master tapes, machines, equipment or contrivances used for the purpose of making infringed copies of the work;
  6. Permits a place of public entertainment or of business to be used for a performance in the public of the work, where the performance constitutes an infringement of the copyright in the work, unless the person permitting the place to be used is not aware, and had no reasonable ground for suspecting that the performance would be an infringement of the copyright;
  7. Performs or cause to be performed for the purposes of trade or business or as supporting facility to a trade or business or as supporting facility to a trade or business, any work in which copyright subsists.[3]

With regards to patents and designs, rights of a patentee or design owner are infringed if another person makes, imports, sells, or uses the product or applies the process without a licence from the patent owner.[4]

Under the Trade Marks Act, an infringement is said to occur when a person, who is neither the trademark owner nor a person authorised by the trademark owner, uses a mark that is identical with or similar to the trademark such that it is likely to deceive or cause confusion in the course of trade.[5]

Currently, the ways of handling intellectual property infringement in Nigeria range from measures such as cease and desist letters to litigation. However, at this juncture it would be proper to look into the possibility of adopting notice for takedown schemes.

 

Notice for takedown scheme in Nigeria as a means of resolving intellectual property infringement

The present intellectual property regime in Nigeria does not make provision for notice for takedown schemes. At best, it is left to the discretion of ecommerce service providers. However, the draft Copyright Bill 2015 contains provisions governing notice for takedown regarding content that is shared online.

Section 47(1) of the Bill provides thus:

“The owner of copyright in a work in respect of which copyright has been infringed, may issue notice of such infringement to the relevant service provider requesting the service provider to take down or disable access to any infringing content or link to such content, hosted on its systems or networks.”

The Bill defines a service provider as “a provider of online services or network access, or the operator of facilities therefor, and includes an entity offering the transmission, routing, or providing of connections for digital online communications, between or among points specified by a user, of material of the user’s choosing, without modification to the content of the material as sent or received”.[6] This provision would give copyright owners the right to notify service providers, such as e-commerce stores, internet service providers and content providers, of an ongoing intellectual property infringement. The notification is required to fulfill the following criteria:

  1. It must be in writing.
  2. It should be signed, either physically or electronically, by a person authorized to act on behalf of the copyright owner.
  3. The work claimed to have been infringed should be identified.
  4. The infringing material or activity should be identified in such a way as to enable the service provider locate the material.
  5. The contact information of the complaining party should be provided.
  6. The complaining party should make a statement that they believe, in good faith, that the use of the material is not authorized by the copyright owner, his agent or the law.
  7. The complaining party is to make a statement that the information in the notification is accurate and that the complaining party has authority to act on behalf of the copyright owner.[7]

In the same vein, a service provider has certain duties to fulfil upon receiving a notice of infringement. Section 48(1) of the Bill requires the service provider to notify the subscriber responsible for the alleged infringing content of the infringement notice.

The subscriber in question has 10 days to provide information justifying the continued keeping of the alleged infringing content. Although the Bill does not expressly specify criteria that the subscriber must satisfy, it can be deduced that a subscriber should show either of the following:

  1. The infringing material is different from the work alleged to be infringed on; or
  2. The subscriber has a licence to use the work alleged to be infringed on.

If the service provider is satisfied by the information provided the subscriber, they shall inform the complaining party of their decision not to take down the content.[8]

If the subscriber fails to provide justification, Section 48(2) of the Bill requires the service provider to take down or disable access to the infringing content or links to such content hosted on its systems or networks and subsequently notify the copyright owner.

From the foregoing, it can be seen that ecommerce service providers would be expected to accord sellers who utilize their platforms the right to fair hearing before taking any action to resolve the issue.

In a situation where the work alleged to be infringed on is in fact the infringing material, the subscriber can submit a written counter notice to the service provider. The counter notice will be submitted to the copyright owner who would be required to show that the subscriber was not authorized to make the content available.[9]

It must be noted that the notice for takedown scheme as provided in the Copyright Bill 2015 was not intended to be final. Any party who is dissatisfied with the decision of the service provider has the right to appeal the decision to the Nigerian Copyright Commission. Parties could further appeal to the Federal High Court.[10]

 

Application of notice for takedown scheme in patent infringement cases   

Copyright infringement is not synonymous with patent infringement and as such issues may arise in attempting to apply the foregoing provisions of the Copyright Bill, should the Bill receive Presidential assent. In spite of this, the spread of ecommerce necessitates stakeholders to extend the possibility of resolving patent infringement matters through notice for takedown schemes. Incorporating a notice for takedown framework to specifically address patent infringement issues can help to facilitate dispute resolution without going through lengthy court processes.

There arise certain challenges in adopting notice for takedown schemes in cases of patent infringement. While notice for takedown schemes relate to removing information that is stored in a system, resolving patent infringement issues requires the restriction of sales of the patented item. However, in the case of ecommerce it can be argued that a sale taking place on an ecommerce platform relies on the presence of the relevant advertising medium (content) on the ecommerce platform’s system and as such taking down the offending content from the servers would help to curtail the sale of the infringing item.

 

Conclusion

A reliable intellectual property regime is an important aspect of ensuring business success and promoting economic growth and investment. Intellectual property infringement has a negative effect on innovation and research and development efforts. In addition to this, the present justice dispensation in Nigeria is in need of important reforms to enable it deal with cases in a timely, efficient and effective manner.

The Copyright Bill 2015 was approved by the Federal Executive Council in 2017 and is currently awaiting review and passage into law by the National Assembly. Once the Bill is passed, it would become easier to implement the notice for take down scheme due to the presence of existing framework. By extension, this would form a blueprint for the application of a similar scheme to incidences of patent infringements.

 

 

For inquiries and further information, email us at inq@grfdalleyandpartners.com

 

Footnotes:

[1] https://www.statista.com/statistics/484918/internet-user-reach-nigeria/

[2] https://www.thisdaylive.com/index.php/2020/01/09/of-ecommerce-growth-and-digital-economy/

[3] Section 14 Copyright Act 2004

[4] Section 25 Patents and Designs Act 2004

[5] Section 5 Trade Marks Act 2004

[6] Section 47(3) Copyright Bill 2015

[7] Section 47(2) Copyright Bill 2015

[8] Section 48(3) Copyright Bill 2015

[9] Section 48(4) Copyright Bill 2015

[10] Section 81 Copyright Bill 2015

29 May 2020
Publications GRF Dalley & Partners 0 comment

THE NECESSITY OF IMPROVING THE OPERATIONS OF THE TRADEMARK REGISTRY ONLINE PLATFORM

A trademark is considered an intangible asset that has positive effects on the goodwill of a business. Through trademarks, goods and brands are able to distinguish themselves from others and attest to their quality. In spite of the laudable effects of trademarks, the trademark registration process in Nigeria leaves much to be desired.

 

A Case for Digitizing the Trademark Registry in Nigeria

A juxtaposition of the current state of the Trademark Registry with that of the Corporate Affairs Commission (CAC) would greatly facilitate an understanding of the need for the Trademark Registry to improve its online operations.

Prior to the launching of the CAC online system in 2015, the process of registering a Company was done manually. Consequently, going through the initial stages of starting a business was a time-consuming task. According to the World Bank’s Report on Doing Business 2014, a person had to go through an average of 10 procedures over 33 days in order to start a limited liability Company.[1] Certificates of Incorporation were issued directly from the headquarters in Abuja.

Over time, Nigeria has been able to perfect its use of the CAC online system. Searches for available company names can be done online. As at 2019, Nigeria ranked 131 out of 190 economies in the ease of doing business.[2] The number of procedures involved in starting a business have reduced from 10 to 7 and it now takes approximately 7 days for a limited liability Company to be registered. The digitization of the Corporate Affairs Commission has reduced the level of bureaucracy involved in Company registrations and this, among others, has contributed to Nigeria’s improved score to 86.2 in starting a business.

In Nigeria, debarring any delays, it takes approximately 18-24 months to register a trademark or sometimes longer. Unlike the search process at the CAC, the preliminary trademark availability search process is still done manually at the Trademarks, Patent and Designs Registry in Abuja. For Practitioners not based or with an office in Abuja, this would add the inconvenience of travel to effectively handle the process of registration of a trademark. In other jurisdictions such as the United Kingdom, the preliminary trademark availability search can be done by using the online platform made available by the Intellectual Property Office (IPO). Searches can be done by trademark number, owner, and keyword, phrase or image.

Once a trademark application is accepted, it is published in the trademark journal to give interested parties the opportunity to notify the Registry of their objections to the registration of the trademark. Unfortunately, there is no online version of the trademark journal in respect of trademark applications made in Nigeria. Therefore, physical copies of the journal have to be obtained. This does not promote efficiency in the trademark registration process. In the United Kingdom, the Intellectual Property Office (IPO) makes the online version of the trademark journal available. Details of the application such as the word, image, class and owner are provided.

Having a registered trademark is one of the requirements as stipulated by the National Agency for Food and Drug Administration and Control (NAFDAC) that must be satisfied by those intending to venture into the pharmaceutical market. By extension, it would take much longer for a pharmaceutical company to commence operations in Nigeria. Thus, delays experienced as a result of the bureaucracy involved in the trademark registration process can dampen interest in investing in the pharmaceutical market in Nigeria.

 

Conclusion

The important role that trademark registration plays in brand recognition cannot be underestimated. Although Nigerian institutions are slowly embracing the advantages brought by technology, there is still room for improvement. Digitizing the trademark registry can contribute positively to the ease of doing business in Nigeria, especially with the current ongoing COVID-19 experience. On this basis, it is important to address the need for the Trademark Registry to improve the functionality of its online platform.

[1] https://www.doingbusiness.org/content/dam/doingBusiness/media/Subnational-Reports/DB14-Nigeria.pdf

[2] https://www.doingbusiness.org/content/dam/doingBusiness/country/n/nigeria/NGA.pdf

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