Intellectual
property (“IP”) education has never been more important than of recent.
The creative economy industries, according to United Nations (“UN”)
estimates,[1]
generate annual revenues of over $2 trillion, global exports of over $250
billion, and account for nearly 30 million jobs worldwide. It is further
estimated that the industries will represent around 10% of global GDP in years
to come.[2] The
Governor of the Central Bank of Nigeria (“CBN”), Godwin Emefiele, also,
stated that the creative industry generated a revenue of about $4.5 billion in
the country while speaking at the ARISE Fashion Show 2021 held in Dubai. The
financial, economic and other incentives provided by IP, therefore, make it
imperative for creators, innovators, and entrepreneurs to know what to protect,
as well as when, and how to protect them.
IP, according to
the World Intellectual Property Organisation (“WIPO”), refers to
creations of the mind, such as inventions; literary and artistic works;
designs; and symbols, names and images used in commerce. Your IP is a set of intangible
assets that provide incentives for you and your organisation to develop and
pursue commercial opportunities related to it.[3]
The law protects
your IP rights. There are 5 major areas of IP law that impact entrepreneurs,
innovators, and creators. They include copyrights, trademarks, trade secrets,
patents and industrial designs. This article will educate you on these IP rights.
“But why is
IP so important? And why is it becoming even more important?” Scott Wightman, the former British High Commissioner to Singapore,
observed.[4] “Well
whereas, in the not too distant past, the majority of business investment was in
people or physical things like premises and machinery, today it’s in intangible
goods, in ideas and in creativity.”
Introduction
to Copyrights, Trademarks, Patents, and Industrial Designs.
Copyrights
protect the creation of your original ideas that are reduced into writing,
music, recording, video, photograph or art.[5] Derivative
works[6]
from the original sources, such as adaptations of your novel, translations of
your book to other languages, and other alterations of your original works are
also protected. Copyrights further protect rights neighbouring to those copyrights,
such as the protection of performers, producers of phonograms, and broadcasting
organisations.[7]
Patents protect
inventions, whether products or processes that provide, in general, a new way
of doing something or offers a new technical solution to a problem.[8] Industrial
designs, on the other hand, consist of two-dimensional features, such as
patterns, lines, or colour, or three-dimensional features, such as the shape of
an article; and they are intended by their creators to be used as models or
patterns to be multiplied by industrial processes and are not intended solely
to obtain a technical result.[9]
Trademarks,
essentially, are protected by law for their role in your business branding rather than for
their creativity. Trademarks are any sign, or any combination of signs, capable
of distinguishing the goods or services of one undertaking from those of other
undertakings.[10]
Trademarks include names, words, logos, designs, shapes, slogans, symbols,
letters, combinations of colours, etc. They function as “source identifiers” of
goods and services, thereby protecting you as a consumer from counterfeits; while
also preventing unfair competition in the relevant marketplace.
Eligibility
and Protection
In 2007,
European Patent Office (“EPO”) rejected Amazon's application to patent its
“one-click” payment option that allowed customers to purchase goods with a
single click. Not all innovations, and in fact, not all IP rights are eligible
for protection.
For your
original idea to be eligible for copyright protection: (1) you must have
expended sufficient effort on making the idea to give it an original character;
(2) and the idea must be fixed in any definite medium of expression now known
or later to be developed, from which it can be perceived, reproduced or
otherwise communicated either directly or with the aid of any machine or
device.[11]
Copyright
protection, therefore, extends only to expressions and not just ideas. Procedures,
methods of operation or mathematical concepts as such are excluded from
copyright protection.[12] Your
computer programs,[13]
whether in source or object code, are eligible for copyright protection. Your tweets,
blog posts, YouTube and TikTok videos, Instagram Reels, among other digital content will be eligible for copyright protection.
Copyright
protection is automatic upon the expression of your original ideas through a tangible medium. You
do not need formal registration. You must note, however, that in some countries
like the United States, while registration is not a condition for copyright
protection, registration is a condition precedent for you to institute an
action in court for your copyright infringement.[14]
Registration
with the relevant authorities is a prerequisite for protecting other IP
rights. If you intend to protect your trademark, patent and industrial design
in Nigeria, for instance, you have to file for their registrations at the Trademarks,
Patents and Designs Registry under the Federal Ministry of Industry, Trade and
Investment. From the date of filing, generally, you enjoy the priority right over
persons who may file an application for the same IP right later.
Not all
trademarks are registrable and therefore protected. Registrable trademarks are
required to be inherently distinctive[15]
on registration or have the capability to distinguish in use.[16] Your
trademark will be considered distinctive if it consists of at least: (a) your
name, your company or firm name, represented in a special manner; (b) your
signature or that of some predecessor in your business; (c) invented word(s);
non-descriptive words; or (d) any other distinctive marks.[17]
Deceptive or
scandalous designs are not registrable.[18]
Trademarks identical and resembling those belonging to different proprietors and already registered are not registrable.[19]
Names of chemical substances are also prohibited from registration.[20]
The EPO in its
ruling against Amazon patent application, and after analysing the features of
the invention, held that “they lack inventive step”. Patentable
inventions must: (a) be new, resulting from inventive activity and capable of
industrial application; or (b) constitute an improvement upon a patented
invention and also new, resulting from inventive activity and capable of
industrial application.[21]
Your invention
concerning a particular art or field of knowledge which has been made available
to the public anywhere and at any time (by means of a written or oral
description, by use or in any other way) before the date of the filing of your
patent application in respect of the invention or the foreign priority date
validly claimed, is non-patentable.[22] Your
invention, however, cannot be deemed to be made available to the public merely
by reason of the fact that, within the period of six months preceding the
filing of your patent application, you or your successor in title has exhibited
it in an official or officially recognised international exhibition.[23]
Other certain inventions
are excluded from patentability. Patents cannot be validly obtained in respect
of plant or animal varieties, or essentially biological processes for the
production of plants or animals (other than microbiological processes and other
products).[24]
Inventions, the publication or exploitation of which would be contrary to
public order or morality, are also excluded from patentability.[25]
Your industrial
design is registrable if: (a) it is new and; (b) it is not contrary to public
order or morality.[26] Designs
are not new or original if they do not significantly differ from known designs
or combinations of known design features.[27]
An industrial design of a drinking cup in the shape of male genitals may be
prohibited from registration for being contrary to public order or morality.
Introduction
to Trade Secret
The Coca-Cola
Company is a famous case study for IP protection through trade secrets. The company
has carefully guarded its recipe and formula for over 100 years, by choosing to
protect the recipe and formula through trade secret instead of patent.[28]
Trade secrets
protection is, technically speaking, created by contractual agreements, unlike the
other IP rights which are created by legislation. Your trade secrets are IP
rights on confidential information which you may sell or licence.[29]
To qualify as a trade secret, in general, the information must: (a) be
commercially valuable because it is secret; (b) be known only to a limited
group of persons; and (c) be subject to reasonable steps taken by the rightful
holder of the information to keep it secret, including the use of
confidentiality agreements for business partners and employees.[30]
Any confidential
business information which provides your business with a competitive advantage and
is unknown to others may be protected as a trade secret.[31] Such
information includes technical information such as information containing
designs and drawings of computer programs, manufacturing processes, and pharmaceutical test data; and commercial information, such as advertising
strategies, distribution methods and lists of clients and suppliers.[32]
A combination of elements, each of which by itself is in the public domain, but where the combination, which is kept secret, provides a competitive advantage, may be protected as a trade secret.[33] Formulas and recipes, financial information, source codes, software algorithms, among others, may also be protected as trade secrets.[34] Google search algorithm, developed in 1997 and regularly updated over the years, is one of the best-kept trade secrets in the world.
Territorial
System and Globalisation
Gucci sued Guess
at the New York Federal High Court, United States, in 2009, for counterfeiting,
unfair competition and trademark infringement of the Gucci logo. In 2012, Gucci won
the case. Following the judgment, Gucci proceeded to file lawsuits against
Guess on the same grounds, in Italy, France, Australia, China, and with the
European Union Intellectual Property office. While Australia and China ruled in
favour of Gucci, the European Union general court and judgments in Milan and Paris
ruled in favour of Guess.[35]
The above case shows
the territorial nature of IP rights. To protect your IP right in a country, you
may have to file for registration in that jurisdiction. The scope of protection
conferred by your IP rights is granted by national laws which may differ
significantly from one country to another. In Nigeria, for instance, your works
involving an infringement of copyright in some other works are eligible for
copyright protection.[36] The
position is different in the United States where copyright does not extend to
any part of your work in which pre-existing material has been used unlawfully.[37]
In Nigeria,
also, patents are granted at the risk of the patentee without guarantee of
their validity, unlike what is obtained in some other jurisdictions where a
patent application is thoroughly examined before a patent is granted.[38] The
implication of this Nigerian provision is that your patent is open to challenge in court
where you have the onus to prove the validity of your invention.[39]
The world is, however,
moving towards an international IP system. The World Trade Organisation (“WTO”)
Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”),
which is the most comprehensive multilateral agreement on IP, sets out the minimum
standards of protection to be provided by each Member.[40] The
TRIPS Agreement also incorporates, by reference, the compliance with the
provisions of the main conventions of WIPO, the Berne Convention for the
Protection of Literary and Artistic Works (“Berne Convention”) and the
Paris Convention for the Protection of Industrial Property (“Paris
Convention”), in their most recent versions.[41]
There are also
international systems that allow you to register, manage, and protect your IP
rights globally. The International Bureau of WIPO administers the below international agreements in respect of applications for international registration of your trademarks, patents, and
industrial designs.
The Madrid
System for the International Registration of Marks allows you to apply for your
trademark protection in up to 128 countries with a single application filing
and one set of fees payment. The Madrid System, accordingly, is a convenient
and cost-effective solution for you to register and manage your trademark worldwide.[42]
The Patent
Cooperation Treaty assists you to seek patent protection internationally for
your inventions.[43]
It makes provision for a single filing of an international patent application
which can become a multitude of national applications.[44]
The Treaty covers your application, not the actual patent, in the sense that,
each designated country would have to examine your application to grant you a patent.
The Hague
Agreement Concerning the International Registration of Industrial Designs
allows you to register your industrial design by filing a single application
and thereby protect your design in multiple countries with minimum formalities.[45]
The WIPO,
however, does not offer a copyright registration system or a searchable copyright
database. Copyright protection is obtained automatically without the need for
registration or other formalities, in the majority of countries, and according
to the Berne Convention.
Limitations
At the centre of
IP law is striking a balance between rewarding creators and innovators with the
fruit of their labours; and public access to such ingenuities in creating a stronger
brighter world. The law, accordingly, places some limitations on IP rights
conferred on creators and innovators. These limitations include duration, fair
use and compulsory licence.
One of the major
reasons Coca-Cola would have opted for trade secret protection over patent is
because patent right granted by the government to an inventor is limited by
duration. The duration of patent life is 20 years from the date of filing,
after which your invention will become available to the public.[46] Trade
secret, on the other hand, can be protected for an unlimited period of time,
unless it is discovered (through reverse engineering, for instance) or legally
acquired by others and disclosed to the public.[47]
Disclosure is
also one of the conditions for patent registration. You are required in your
patent application to disclose the invention in a manner sufficiently clear and
complete for the invention to be carried out by a person skilled in the art.[48] The
fact is that Coca-Cola does not have a patent on its recipe to ensure that its
secret formula remains undisclosed.[49]
In Nigeria, copyright
in your work will expire 70 years after the end of the year of your demise.[50]
As such, a musician will enjoy copyright protection in his songs, even 70 years
after his death.
Trademark
protection is hinged on actual usage, unlike other IP rights. An author retains
copyright in his book even if it remains unpublished. You either use your
trademark or risk losing it.[51] Registration
of trademark in Nigeria is for an initial period of 7 years, after which it
becomes renewable indefinitely.
Registration of
your industrial design is effective in Nigeria for the first 5 years from the
date of your application for registration.[52] Your
design is afterwards renewable for two consecutive periods of 5 years.[53]
Fair use or fair
dealing is perhaps the most significant limitation to copyright. Copyright law
allows the use of your work, without your permission, for purposes of research,
private use, criticism or review or the reporting of current events, subject to the condition that, if the use is public, it shall be accompanied by an
acknowledgement of the title of the work and its authorship except where the
work is incidentally included in a broadcast.[54]
Fair use, as an
exception and a defence to copyright infringement, is broad in its application.[55]
This limitation, however, is required to be confined to certain special cases
which do not conflict with the normal (commercial) exploitation of your work
and do not unreasonably prejudice your legitimate interest.[56] The
value of the portion taken relative to your entire work is one factor the court
will consider in determining fair dealing as a defence.
A compulsory licence is another limitation to your IP rights. The relevant authority in a
state or the court has the power to grant compulsory licences of your
copyrighted work or invention, subject to conditions aimed at protecting your
legitimate interests.[57] The
grant of compulsory licences seeks to avoid the creation of monopoly at the
expense of the public, especially where it becomes difficult or impossible to
obtain licences from a copyright owner or an inventor.
Further, as an owner
of a copyrighted work, you may wish to give the public permission to use your work
freely or under certain conditions. You can achieve this aim through the grant
of Creative Common licences, indicated by the “(CC)” logo.[58]
The grant allows the public to use your work without fear of infringement.
Moral rights in
your copyrighted works, however, are perpetual, inalienable and
imprescriptible.[59]
Moral rights conferred on you the right to be recognised as the author of your
work. You can also object and seek relief in connection with any distortion or
other modification in relation to your work, where such action would be
prejudicial to your honour or reputation.
Infringements
and Remedies
IP law vests in
you, the exclusive right to control the use of your IP works by third parties.
This exclusive right includes the right to authorise the use, reproduction,
publication, distribution, performance, broadcasting, adaptation, translation, importation,
selling, among other commercial usages. Your IP rights are intangible assets,
having attributes of personal property which you can sell or licence. You can
therefore seek remedies in court (both in civil and criminal proceedings) to
protect your IP rights before or upon infringement.
Available
remedies to your IP rights infringement include damages, injunction, account
for profits, right of conversion, and delivery up. US district judge Shira
Scheindlin awarded Gucci $4.7 million in damages against Guess in the
trademark infringement case. The court also granted an injunction restricting
Guess from using the trademark which was similar to the Gucci logo.
Action against passing
off your goods as the goods of another person is also available in common
law, as a remedy for the infringement of your unregistered trademark.[60]
There are also
some available defences to your action for IP rights violations. These defences
include fair dealing, as explained above, acquiescence as a defence against trademark
violation,[61]
among others.
An effective way
of seeking redress for your IP right infringement is through an out-of-court
settlement. You can simply send a cease-and-desist letter to a person or entity
infringing on your rights, especially where the infringement is less egregious.
Where the infringing activity is significant and harming your business, you may
be required to take more drastic steps. One way is by entering contracts with
the person or entity to resolve your IP disputes. This may include agreeing on a profit split from the proceeds of the infringement.
Nokia settled
its patent infringement dispute against Apple through a combination of patent
licensing agreements and business collaboration contracts.[62] Commenting
on the development, the then Chief Legal Officer at Nokia, responsible for the
company’s patent licencing business, Maria Varsellona, said, “It moves our
relationship with Apple from being adversaries in court to business partners
working for the benefit of our customers.”[63]
We now live in
what has been described as the “creator economy”, driven by the Gen Z
generation and the tech-savvy innovators of the Millennials.[64]
IP education is therefore important for creators, innovators, and entrepreneurs of these generations to know how to protect and exploit their creations of the mind. Effective (national and international) IP
systems, also, are key to the economic growth of a nation and worldwide.
In the words of
Scott Wightman, “If we fail to maximise the contribution of IP and the knowledge
economy to economic success and growth, then ultimately this slows the social
and economic progress of our countries. At the most basic level, it means fewer
sustainable jobs for our people.”
Download a PDF copy.
[1] United Nations Educational, Scientific and Cultural Organization [“UNESCO”].
“Re|shaping cultural policies: advancing creativity for development, 2005
Convention global report, 2018” Available at: https://en.unesco.org/creativity/sites/creativity/files/global_report_fact_sheet_en.pdf
[2] Ibid.
[3] See the United States Patent and Trademark Office (“USPTO”) latest
edition of its report, titled “Intellectual property and the U.S. economy:
Third edition” Available at: https://www.uspto.gov/sites/default/files/documents/uspto-ip-us-economy-third-edition.pdf
[4] While presenting his keynote remarks at the opening of the
USPTO-UKIPO Breaking Barriers: Intellectual Property and the Value for Society
event. https://www.gov.uk/government/news/speech-intellectual-property-key-to-business-success
Accessed on 04/10/2022
[5] See Copyright Act, Cap. C28, Laws of the Federation of Nigeria,
2004 [“Copyright Act”], s. 1 (1).
[6] Berne Convention for the Protection of Literary and Artistic Works,
September 9, 1886, as revised at Stockholm on July 14, 1967 828 U.N.T.S. 221,
Article
[7] See TRIPS: Agreement on Trade-Related Aspects of Intellectual
Property Rights, Apr. 15, 1994, Marrakesh Agreement Establishing the World
Trade Organization, Annex 1C, 1869 U.N.T.S. 299, 33 I.L.M. 1197 (1994) [“TRIPS
Agreement”], Article 14.
[8] World Intellectual Property Organisation [“WIPO”]. “Patent” https://www.wipo.int/patents/en/
Accessed on 20/09/2022
[9] See Patents and Designs Act, Cap. P2, Laws of the Federation of
Nigeria, 2004 [“Patents and Designs Act”], s. 12.
[10] See TRIPS Agreement, Article 15.
[11] See Copyright Act, s. 1 (2)
[12] See TRIPS Agreement, Article 9;
[13] Ibid., Article 10 (1)
[14] See Copyright Law of the United States and Related Laws Contained
in Tıtle 17 of the United States Code, ss. 408 and 411. You can also see PAUL
ALLEN OCHE V. NIGERIAN BREWERIES PLC & 3 ORS. UNREPORTED SUIT NO:
FHC/ABJ/CS/145/2019, RULING DELIVERED ON 25TH JUNE 2020; where the Federal High
Court of Nigeria held that registration is a requirement before you can institute
an action in court for copyright infringement. However, this decision has been
criticised as an error in law and against judicial precedent. The matter is currently
on appeal.
[15] See Trade Marks Act, Cap. T13, Laws of the Federation of Nigeria,
2004 [Trade Marks Act], s. 9.
[16] Ibid., s. 10.
[17] Ibid., s. 9.
[18] Ibid., s. 11.
[19] Ibid., s. 13.
[20] Ibid., s. 12.
[21] See Patents and Designs Act, s. 1 (1)
[22] Ibid., s. 1 (3)
[23] Ibid.
[24] Ibid., s. 1 (4) (a).
[25] Ibid., s. 1 (4) (b).
[26] Ibid., s. 13 (1).
[27] Ibid., s. 13 (5); TRIPS Agreement; Article 25 (1).
[28] Tierryicah Mitchell (2011). “Shh!! It’s a Secret!: Coca-Cola’s
Recipe Revealed?” Wake Forest Journal of Business and Intellectual Property
Law. Available at: https://jbipl.pubpub.org/pub/biddjf6k
Accessed on 26/09/2022
[29] WIPO. Frequently Asked Questions: Trade Secrets. Available at: https://www.wipo.int/tradesecrets/en/tradesecrets_faqs.html
Accessed on 26/09/2022
[30] Ibid.
[31] Ibid.
[32] WIPO. Trade Secrets. Available at: https://www.wipo.int/tradesecrets/en/
Accessed on: 26/09/2022
[33] Ibid.
[34] Ibid.
[35] https://magazine.michelefranzesemoda.com/gucci-and-guess-end-nine-year-trademark-dispute/
Accessed on 26/09/2022
[36] See Copyright Act, s. 1 (4)
[37] See Copyright Law of the United States and Related Laws Contained
in Tıtle 17 of the United States Code, s. 103 (a).
[38] See Patents and Designs Act, s. 4 (4).
[39] Onyeka Uche Ofili (2014). “Intellectual Property Rights Protection
and Economic Growth: The Case of Nigeria.” European scientific Journal.
European Scientific Institute.
[40] WIPO. “Overview: the
TRIPS Agreement." https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm
Accessed on 20/09/2022
[41] Ibid.
[42] WIPO. “Madrid – The
International Trademark System.” https://www.wipo.int/madrid/en/ Accessed on 04/10/2022.
[43] WIPO. “PCT – The
International Patent System.” https://www.wipo.int/pct/en/ Accessed on 04/10/2022.
[44] Kehinde Fatoba. “Intellectual Property Rights – An Overview of
Nigerian Legal Framework” Available at: https://ssrn.com/abstract=3501898
[45] WIPO. “Summary of the
Hague Agreement Concerning the International Registration of Industrial Designs
(1925)” https://www.wipo.int/treaties/en/registration/hague/summary_hague.html Accessed on 04/10/2022.
[46] See Patents and Designs Act, s. 7; TRIPS Agreement, Article 33.
[47] WIPO. Frequently Asked Questions: Trade Secrets. Available at: https://www.wipo.int/tradesecrets/en/tradesecrets_faqs.html
Accessed on 26/09/2022
[48] TRIPS Agreement, art. 29.
[49] Tierryicah Mitchell (2011). “Shh!! It’s a Secret!: Coca-Cola’s
Recipe Revealed?” Wake Forest Journal of Business and Intellectual Property
Law. Available at: https://jbipl.pubpub.org/pub/biddjf6k
Accessed on 26/09/2022.
[50] See Copyright Act, First Schedule.
[51] See Trade Marks Act, s. 31; TRIPS Agreement, art. 19.
[52] See Patents and Designs Act, s. 20 (1) (a)
[53] Ibid., s. 20 (1) (b)
[54] See Copyright Act, Second Schedule.
[55] See Dr. Henning Grosse Ruse-Khan. “Fair Use, Fair Dealing and Other
Open-Ended Exceptions. The Application of the 3-Step Test.” Available at: https://www.wipo.int/edocs/mdocs/copyright/en/wipo_cr_cai_09/wipo_cr_cai_09_topic2_1.ppt
[56] TRIPS Agreement, art. 13.
[57] See TRIPS Agreement, art. 31.
[58]See Creative Commons. “About CC Licences.” https://creativecommons.org/about/cclicenses/
Accessed on 03/10/2022.
[59] See Copyright Act, s. 12.
[60] Trade Marks Act, s. 3.
[61] See Diamond-Works GMBS v. Bateria Slany Narodni Podnic (1972) All
N.L.R. 143.
[62] Danny Palmer. “Apple and Nokia Settle Patent Licencing Lawsuit.” https://www.zdnet.com/article/apple-and-nokia-settle-patent-licensing-lawsuit/
Accessed on 27/09/2022.
[63] Ibid.
[64] Millennial has been defined as anyone born between 1981 and 1996,
and the Gen Z generation as those born from 1997 onward.
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