Nigerian and International

Intellectual Property Environment:

What Producers Need to Know
by
Bankole Sodipo (Ph.D. London)
Partner, Chief G.O Sodipo & Co
© October 2008
b.sodipo@gosodipo.com

Communication for Change

Conference

October 2008

Outline of Presentation
„ Method adopted is to present a case study illustrating
how copyright laws are applied and enforced and why a
thorough knowledge of those laws is crucial for media
producers
„ The producer used is Auntie Noma who happens to be
my wife
„ Auntie Noma produces STORY TIME WITH AUNTIE
NOMA , a children’
children’s edutainment television programme
which is broadcast on a number of television stations in
Africa including Channels TV, AIT GTV, DITV and DSTV’
DSTV’s
African Magic
„ The case study is fiction - Auntie Noma’
Noma’s new television
series called VILLAGE SQUARE
„ IP laws are then applied to demonstrate how the IP
regimes work and why producers need a good working
knowledge of IP

1
 AUNTIE NOMA’S TV Series,
VILLAGE SQUARE
„ Auntie Noma,
Noma, a producer and CEO of gosodipo films instructed one
of her employees Bature to write the screen play for her new
television series, “Village Square”
Square”

„ There is no contract of employment or written contract between

producer Auntie Noma’
Noma’s gosodipo films and Bature,
Bature, the author of
the screen play

„ Auntie Noma commissioned Priye,

Priye, a Togolese song writer to
compose and completely re- re-arrange a song entitled Erelu,
Erelu, based on
a folk song for the television series

„ The contract between Auntie Noma and Priye,

Priye, the song writer was
copied from a book which merely stated that it is a contract for hire
in line with American law, there was no mention of the ownership of
copyright in the new song Erelu

„ Auntie Noma did not register the screen play or the song with the
Copyright Commission.

AUNTIE NOMA’S TV Series,

VILLAGE SQUARE
„ Auntie Noma,
Noma, hired Fati,
Fati, a leading actor to play the prominent role
of Iya Oja,
Oja, a character whose peculiar way of dressing, walking,
speaking and other mannerisms makes Iya- Iya-Oja an outstanding
character

„ A trendy logo of Village Square created by Auntie Noma became

very popular but this was not registered

„ The programme Market Square, the song Erelu,

Erelu, the character Iya-
Iya-
Oja become an instant success on the Nigerian Television Authority,
NTA, so much so that many companies started jostling to use them
for endorsements etc, to promote their products and services

„ A bank, Lehman Brothers hired and paid Fati acting as the character
Iya-
Iya-Oja,
Oja, to endorse its services for traders and do an advert for the
bank. Fati did not inform her producer Auntie Noma

2
 AUNTIE NOMA’S TV Series,
VILLAGE SQUARE
„ Vodacom the telephone giant hired Ade a performer to perform
and produce the completely re-
re-arranged song Erelu to promote its
services. Vodacom did not negotiate with the producer Auntie
Noma who commissioned Priye to write the song, neither did
Vodacom pay Priye,
Priye, the composer on the grounds that she is
Togolese and cannot claim copyright in Nigeria

„ Hollywood’
Hollywood’s Paramount Television approached the television
station NTA and paid NTA for the rights to the television series
Village Square which is exclusively shown on NTA without paying
Auntie Noma

„ Hunger Busters, a new eatery started using the logo Village Square
Square
to promote its products without recourse to Auntie Noma

„ Producer Auntie Noma is aggrieved and seeks your counsel on what

to do against Lehman Brothers Bank, Fati,
Fati, Vodacom,
Vodacom, Paramont TV
and Hunger Busters

INTELLECTUAL PROPERTY 101

„ In order to help producer Auntie Noma,
Noma, we must do a crash programme in
IP 101 to acquaint Producers to IP regimes

„ Several laws are relevant when considering issues or disputes in the media
and entertainment and sports world

„ They include contract law, employment law and intellectual property

property law

„ Intellectual Property law has its series of rules and regimes, a code that
governs contracts employment issues, ownership, transfer etc for media,
entertainment and sports world

„ Generally, Intellectual Property Law comprise of three main areas,

areas,
Copyright, Trade Marks, Designs and Patents

„ The most relevant for our consideration today are copyright and trade
marks

3
 ELIGIBILITY FOR COPYRIGHT
PROTECTION (Copyright Act, 1988)
„ Generally, a work or item is eligible and is protected if:
„ 1. The work or item falls into one of the categories eligible for
for
protection
„ 2. The work or item was made by a Nigerian or by a foreigner
based in Nigeria if the work is first published in Nigeria

„ There are 5 categories of works or items –

„ Literary works which include, software, books, film scenarios and

and
broadcasting scripts;
„ Artistic Works
„ Musical Works - music
„ Sound Records
„ Cinematographic Films like videos and productions for tv
„ Broadcasts

„ There is no formality for protection of copyright – no need to

register – but deposit at the NCC can be useful in evidence

NATURE OF COPYRIGHT
„ A Bundle of distinctively divisible rights that crystallise to clutch
and protect certain works or items eligible for protection
„ Imagine an orange that is divided into several parts with each part part
constituting a whole. The rights below constitute this orange
„ Copyright in a film script or screen play includes geographical or
territorial rights e.g. for the territory of Nigeria, West Africa,
Africa, etc
„ The adaptation right, e.g. the right to adapt the film script forfor
theatrical presentation
„ The right to translate the script into various languages called the
translation rights
„ The right to publish the script as a book or the publishing right
right
„ All these rights can be transferred to third parties irrespective
irrespective by
the owner of the right
„ The author of a work may not be the owner of copyright in the
work – there is a difference between the owner of a work and the
owner of copyright in the work
„ If I buy a painting, I own the painting but I do not own copyright
copyright in
the painting to permit me to reproduce the painting

4
Ownership of Copyright & Transfer
of Copyright
„ Generally, the author of a work is the first owner of
copyright in the work
„ Where the author is an employee and the work is made
in the course of employment, copyright vests in author
unless there is a written contract to the contrary
„ Where work is commissioned (somewhat similar to work
made for hire in US), copyright vests in author unless
the person who commissioned it has a specific clause in
written contract transferring copyright to him or a third
party
„ Copyright in existing work or work to be created in
future can be transferred from the author to anyone like
other property by written contract or by testamentary
disposition

Other IP Rights – Trade Marks and

Logos
„ Logos can be protected under the statutory law of trade marks or
the common law action for passing off
„ Logos are registrable as a trade mark under the Trade Marks Act,
1965
„ The registered owner f the logo can stop others from using the logo
logo
or a similar logo for the same class of goods for which the logo is
registered. If registered, owner does not need to prove that logo
logo
has goodwill or popular
„ Where the logo is not registered as a trade mark, the owner of the
the
logo can stop third parties from using the logo – (put in a simple
way) - where he establishes that he has developed
“reputation/goodwill”
reputation/goodwill” in the logo to the extent that anyone who
uses it will be regarded by the public as someone who has a
relationship with him – by suing for the common law action for
passing off

5
 Let us deal with the producer
Auntie Noma’s Village Square
First we must establish whether the following works or
items are entitled to intellectual property protection
„ a) screen play for Village Square
„ b) the TV series Village Square
„ c) the song Erelu
„ d) the character Iya-
Iya-Oja
„ e) the logo of Village Square
„ Second, we must establish who owns each work or item
„ The law is an ass! Law is not sentimental
„ Producer Auntie Noma can only seek redress for any
alleged wrong doing if a work or item is protected by law
and if such work or item by law belongs to her

Are Auntie Noma’s “works” eligible

for protection?
„ The screen play is eligible for protection as a
literary work
„ The television series Village Square is eligible as
a cinematographic film and eventually as a
broadcast
„ The song Erelu is eligible as a musical work
„ The character is arguably eligible under
copyright law and passing off
„ The logo can be protected under the common
law action for passing off

6
 Who owns the rights to Auntie
Noma’s works?
Having ideas, spending money or energy is insufficient – IP rules must
be examined and complied with
„ The screen play – Bature being the author is the first owner. If it is
written in the course of his employment, it is possible that copyright
copyright
can be transferred to Auntie Noma or gosodipo films. However, as
there is no contract of employment or written contract Bature owns
the copyright in the screen play

„ The song Erelu – Priye being a Togolese is immaterial if the song is

first published in Nigeria. If the song is not first published in
Nigeria, Nigeria protects international copyright through treaties
treaties –
(Berne & TRIPS) and extends protection of Nigerian copyright law law
to works of authors of those countries.
„ Being a complete re-
re-arrangement, new copyright can be claimed in
Erelu,
Erelu, aside from the folklore or traditional song which is “public
property”
property”. It is not safe to copy contracts unless there is some
measure of experience for producers – safer to consult a Nigerian
lawyer. The Nigerian Copyright Act does not recognise the concept
of work for hire per se as the US law does. There must be a specific
specific
clause transferring copyright from Priye to Auntie Noma

Who owns the rights to Auntie

Noma’s works? II
„ Registration of copyright – there is no need to register copyright. It
is good to deposit a copy of a work with the NCC as it can be used
used
in evidence to show when it was created (deposited) if there is
litigation/dispute

„ Village Square tv series - The producer of a cinematographic film is

the first owner of copyright in it. As such, Auntie Noma or her
production outfit is the owner of copyright unless she transfers this
to third parties
„ Iya-
Iya-Oja – the character was created not by the actor who brought it
to life but by the producer (or author) if production company did
did not
tidy up issues with employee/author Bature.
Bature. If character belongs to
actor, then if actor leaves, no one else can act that part.

„ Village Square Logo – It is better to register this as a trade mark,

however, Auntie Noma may rely on the common law action for
passing off if she can establish that the mark has acquired
“reputation/goodwill”
reputation/goodwill” such that the public have come to identify the
logo with her programme or her person

7
Auntie Noma vs Lehman Brothers, Vodacom
„ Possible to use copyright law and passing off to stop Fati from
acting as the character Iya-
Iya-Oja,
Oja, to endorse its services for traders
and do an advert for the bank Lehman Brothers without Auntie
Noma’
Noma’s permission. In Ken Saro Wiwa’
Wiwa’s BASI AND COMPANY, we
restrained a bank from using the actress acting MADAME DE
MADAME without Ken Saro Wiwa’Wiwa’s permission. Auntie Noma may
have to join the employee/author as a co-
co-plaintiff so that the issue
of ownership of screen play/tv
play/tv series does not arise
„
„ Erelu being a song protected by copyright, Vodacom can be sued
and restrained from continuing to use Ade’
Ade’s performance and
production of Erelu the completely re-
re-arranged song Erelu to
promote its services o the grounds of copyright infringement.

Auntie Noma vs
Paramount TV & Hunger Busters
„ Auntie Noma’
Noma’s tv series Village Square belongs to her
and not the NTA even though it was broadcast on that
station unless there is a contract to the contrary. She
can sue Hollywood’
Hollywood’s Paramount Television and the NTA
for breach of copyright and for causing another person
to infringe copyright

„ Auntie Noma is the owner of the logo of Village Square

and she may be able to stop the eatery Hunger Busters
from using the logo on the grounds of passing off even
though she did not register the logo

8
 Final Act
„ The future of film is that producers need
the assistance of other professionals if film
and tv is to move to the next level in
Nigeria

„ In order to wade through the maze of IP,

please, please use a lawyer

„ THANK YOU