New High Court Decision Serves as Great Opportunity to Earn Back Artists’/Creatives’ Trust in Intellectual Property (IP) Enforcement and Protection
A review of Onyeka Onwenu (MFR) Vs. Iroking Limited, Federal High Court, Lagos delivered 16th January 2020.
One of Nigeria’s biggest exports in the creative industry is music, with Afrobeat stars like Davido, Wizkid and Burnaboy getting due recognition on the international stage. It is no surprise that some of the world’s largest music firms are extending their tentacles into Nigerian music industry by setting up joint ventures with Nigerian talents. On the other hand, the Nigerian film industry (Nollywood) is regarded as the second largest in the world and was identified by the Federal Government as one of the priority sectors in its Economic Recovery and Growth Plan (ERGP), with an estimated $1 billion in export revenue by 2020. Lagos is quickly rising as a fashion hub and has been compared with such fashion centres as London, Paris, Milan, and New York.
Nigerian musician, designers and other creatives in the entertainment and fashion industry have experienced great global success and visibility in recent times. One may be inclined to say that this visibility and success, would imply that creatives obtain maximum commercial benefits from their works. However, infringement of intellectual property is rampart in Nigeria. Piracy of musical and artistic work is the most famous. Piracy is when someone copies a work or exploits it without having permission from the owner. This specifically means the unauthorised use, copying, distribution or reproduction of protected materials covered by IP rights.
Broadly speaking, the relevant forms of intellectual property protection in the creative industry are copyrights, patent and designs. Copyrights ensures that where sufficient effort has been expended on making a work to give it an original character, it becomes the sole property of the creator. The effect of this is that the creator has an exclusive right over the work and it becomes unlawful for any other person to reproduce, publish, translate, perform in public, make, rent, lease, hire, broadcast, adapt or tamper with the work without the creator’s licence or assignment. Under Nigerian Copyright Act, CAP C28, Laws of the Federation of Nigeria, 2004, original literary, musical and artistic works, cinematography films, sound recordings and broadcast are eligible for copyright.
Registered design gives protection to the shape of the product e.g. lines, colours or any three-dimensional form. The idea is to prevent others from reproducing the external design of the product for industrial use. The owner of a registered design can prevent others from illicitly profiting from the design by reproducing, selling or utilizing it for commercial purposes without the consent of the creator. Patents, on the other hand, protects novel inventions. The grant of a patent for an invention is the grant to the patentee for a limited period of a monopoly right in respect of that invention i.e. the right to exclude others from using that invention. Patent and design rights are granted in Nigeria under the Patents and Designs Act.
In spite of the legislative provisions geared at strengthening IP rights and protection in Nigeria, challenges remain. Infringement of intellectual property takes the form of piracy, counterfeiting and unauthorized use, performance, publication or adaption of an eligible work. These activities violate the proprietary rights of creators to reap the benefits of their creations and thus, thwart the growth of invention, innovation and originality in the creative industry.
Copyright violation is one of the major challenges to intellectual property rights and enforcement in Nigeria. This cankerworm manifests more virulently in the following industries: book publishing (book piracy), information and communications technology – ICT – (internet & software piracy) and in film and entertainment (musical & cinematography disc piracy). The National Bureau of Statistics (“NBS”) estimated that Nollywood currently contributes about 1.42% to Nigeria’s GDP and is said to be the country’s second largest job-creating sector after agriculture, providing employment to over 1 million persons.
According to the African Export-Import Bank (Afreximbank), Nollywood generates between $500 million and $1 billion on a yearly basis in revenue and is considered a vital non-oil area that is crucial to Nigeria’s economic diversification. However, a World Bank report estimates that “for every legitimate copy (of a Nigerian film) sold, nine others are pirated”. As at 2014, an estimated figure of N82 billion was reported to have been lost by Nollywood alone to piracy.
As challenging as intellectual property protection and enforcement is in Nigeria, the courts have shown the inclination not to shy away from holding infringers liable. On January 16, 2020 the Federal High Court per Justice C. J. Aneke delivered its judgment in Onyeka Onwenu v. Iroking Limited. The Plaintiff instituted the suit claiming, among other things, N200,000,000.00 (Two Hundred Million Naira) for infringing of her intellectual property. It was the submission of the Plaintiffs that there was a Digital Rights Acquisition Agreement (DRAA) between the Plaintiff and the Defendant, entered into on March 1, 2013 which subsisted for a period of 24 months. The Defendant, however, continued to exercise a non-exclusive right over the songs of the Plaintiffs after the expiration of the DRAA by uploading them on several digital platforms like Spotify, Google Play, and Apple music.
In its defence, the Defendant stated that it only uploaded the Plaintiff’s content on its platform – iTunes – and that although the Plaintiff’s content remained on the Defendant’s digital platform after the Expiration of the DRAA, it did not upload, stream, or carry out any distribution or sale of the Plaintiff’s songs until they were taken down in March 2016.
The principal issue before the Court was to determine whether or not the intellectual property rights of the Plaintiff had been infringed. The Court held that there was no intention by the parties to extend the DRAA beyond February 2015 when it expired by effluxion of time and as such, the continued exercise of the rights over the Plaintiff’s contents until March 2016 when same was pulled from the Defendant’s iTunes platform was an infringement of the Plaintiff’s intellectual property rights. Accordingly, the Court awarded the sum of N500,000.00 as damages against the Defendant for breach of the Plaintiff’s copyrights.
Section 5(1) of the Copyrights Act confers on the creator of a musical work, the exclusive right to reproduce, publish, perform, and distribute the work to the public for commercial purposes. Therefore, the continuous presence of the Plaintiff’s songs on the Defendant’s iTunes platform after the expiration of the DRAA is an infringement of her copyright. The decision follows the trend in safeguarding copyrights by including within the scope of publication, not only recorded copies of musical works but also the making a work available through a digital system.
Advances in technology gives rise to new forms of infringement such as unauthorised uploading, downloading, dissemination of music. The decision in Onyeka Onwenu’s case is a welcome development to compensate artists and creatives for unauthorised activities that impugn on their creative abilities